Importance of conceptual similarity highlighted

Israel
In In the Opposition of Materna Laboratories Ltd against Abbott Laboratories Inc (June 17 2010), the Israel commissioner of patents, trademarks and designs has ruled that, where there is a shared concept between two marks, the marks will tend to be viewed as confusingly similar, even when there are some visual and phonetic differences between them.
 
Materna Laboratories Ltd, a recognized manufacturer of baby formula, is the owner of a registration for the trademark MATERNA IQ for baby food in Class 5 of the Nice Classification. On April 28 2005 Abbott Laboratories Inc filed applications for the registration of the word mark EYE Q and a figurative mark containing the word 'eye Q' for various infant formula ingredients in Class 5.
 
On March 22 2007 Materna filed a notice of opposition, alleging that Abott's marks were confusingly similar to Materna's MATERNA IQ mark. Materna claimed that the marks were highly similar, both visually and phonetically. In its defence, Abbott claimed that the marks were sufficiently different, since the most prominent component of Materna's mark is the word 'Materna'. Moreover, Abbott claimed that the letter combination 'IQ' was descriptive and, therefore, should be afforded limited protection. 
 
In deciding whether the EYE Q mark was confusingly similar to MATERNA IQ, the commissioner applied the well-established three-part test (ie, visual and phonetic similarity, similarity between the goods and their potential consumers, and the totality of the circumstances). The commissioner noted that the marks were similar, both visually and phonetically.

The commissioner further held that the fact that Abbott's mark uses the word 'eye', instead of the letter 'I', did not make any difference, since the average consumer would not distinguish between the two. As an example, the commissioner stated that, if a computer company tried to register the mark EYE-B-M, it would be clear that it was seeking to benefit unfairly from the reputation on the IBM mark. The commissioner further noted that consumer behaviour when buying baby food also supported the conclusion that there was risk of confusion: since such products are bought off the shelf, and parents do not tend to be very conscious about the source of the products, consumers would refer to the products as 'IQ', without considering whether the mark is IQ or EYE Q.
 
Moreover, the commissioner ruled that the two marks were identical conceptually, as they both referred to the IQ level of babies. When two marks are conceptually similar, the commissioner will tend to consider that they are confusingly similar, even if there are some differences between them. The reason for this is that consumers tend to associate products broadly with a concept, without paying much attention to the details. Therefore, if a consumer associates the term 'IQ' with baby food produced by Materna, there was a reasonable likelihood that he or she would also associate products bearing the EYE Q mark with Materna.
 
With regard to Abott's claim that the term 'IQ' is descriptive, the commissioner ruled that the fact that this term is descriptive did not, in itself, give Abbott the right to register a mark that is confusingly similar to Materna's mark. As a result, the commissioner upheld Materna's opposition and rejected the application to register Abbott's EYE Q mark.
 
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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