FLORASUN and FLORIDA SUN held to be confusingly similar

In International Flora Technologies Ltd v Malibu Health Products Limited (Case B 839 318, August 25 2009), the Opposition Division of the Office for Harmonization in the Internal Market has held that there was a likelihood of confusion between the marks FLORASUN and FLORIDA SUN for certain goods.

 

Malibu Health Products Limited (incorporated in the United Kingdom) applied to register FLORIDA SUN as a Community trademark (CTM) for goods in Class 3 of the Nice Classification (including "soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices"). International Flora Technologies Ltd (incorporated in the United States) opposed the application on the basis of its earlier CTM FLORASUN for goods in Classes 1 (including "chemicals for use in the manufacture of cosmetics, personal cleaning products and pharmaceuticals") and 3 ("essential oils, oils for cosmetic purposes and oils for toilet purposes").

 

First, the Opposition Division found that most of the goods covered by the marks were identical or similar. Only certain goods covered by the mark applied for (including "eyebrow pencils, false eyelashes and false nails") were considered to be dissimilar to the goods covered by the earlier CTM.

 

Turning to the comparison of the marks, the Opposition Division found that they had a high degree of visual similarity. The Opposition Division pointed out that:

From a phonetic point of view, the Opposition Division found that the marks had a high level of similarity as they coincided in the pronunciation of the syllables 'flo' and 'sun', as well as in the additional sounds 'R' and 'A'.

 

From a conceptual point of view, the Opposition Division acknowledged that the majority of the relevant public would understand the word 'sun' as meaning “a star that is the centre of the solar system”.It also pointed out that the word 'Florida' would be understood as “a state of the southeast United States bordering on the Atlantic Ocean and the Gulf of Mexico” in all the official languages of the European Union (even though 'florida' also means “flourished, with flowers” in Spanish and Portuguese). Further, the Opposition Division held that the word 'flora' would be understood as meaning “all the plant life of a given place or time”.It concluded that the marks were conceptually similar because they shared the concept of 'sun'.  

 

With regard to the overall assessment of the marks, the Opposition Division held that neither the word 'flora' nor the word 'sun' in the earlier mark had any meaning in relation to the goods at issue. Therefore, the distinctiveness of the FLORASUN mark was held to be "normal". The Opposition Division concluded that given the lack of an "additional element [...] dissimilar enough to counteract the similarities" between the mark, the public was likely to believe that the goods that had been found to be identical or similar came from the same undertaking or from economically linked undertakings.

 

Arguably, the decision of the Opposition Division is open to debate for three reasons.

 

First, consumers are likely to focus on the initial words of the marks - 'Florida' and 'flora'. However, although the Opposition Division acknowledged the respective definitions of these words, it did not conclude that they had a different meaning.

 

Second, the word 'flora' is unlikely to have a normal level of distinctiveness when it is applied to beauty products deriving from flowers or plants. Furthermore, one may argue that the Opposition Division erred in concluding that 'sun' had no meaning in relation to the goods at issue, considering the fact that the mark applied for covered “sun block preparations; sun tanning preparations, lotions, creams and oils; sun screen productions; after-sun preparations, lotions and creams” in Class 3. 

 

Third, the Opposition Division should have given more weight to the conceptual similarity between the marks. In certain EU decisions, the conceptual comparison was held to prevail over the visual and aural comparison. For example, the trademarks SUPERMAN and MAN on the one hand, and LEVENOX and LOTEROX on the other, have been found to be dissimilar due to conceptual differences.