Mark for Class 35 services held to take unfair advantage of MICROSOFT

Lithuania
The Appeal Division of the Lithuanian State Patent Bureau has held that the trademark MACROSOFTAUTOS.COM, registered for services in Class 35 of the Nice Classification, was invalid (December 2 2010).
 
On April 26 2010 Microsoft Corporation filed an opposition (Opposition 2547) against the registration of the figurative mark MACROSOFTAUTOS.COM (Registration 61407) for "advertising; the bringing together, for the benefit of others, of a variety of goods (excluding the transportation thereof), enabling customers to conveniently view and purchase those goods" in Class 35.
 
The registration was in the name ofjoint stock company Causa Formalis.
 
Microsoft's action was filed on the following grounds under the Law on Trademarks of the Republic of Lithuania:
  • Article 7(1)(2): a trademark registration should be declared invalid if it is identical, or misleadingly similar to, an earlier mark which is registered or applied for in relation to identical or similar goods and/or services.
  • Article 7(1)(7): a trademark registration should be declared invalid if it is identical, or similar to, an earlier Community trademark (CTM) and is to be, or has been, registered for goods and/or services which are not similar to those for which the earlier CTM is registered, where the earlier CTM has a reputation in the European Community, and where the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier CTM.
The action was based on the earlier CTM MICROSOFT (Registration 000479956) for goods in Class 9 and on the figurative mark MICROSOFT ENHANCED (Registration 0037568797) for services in Class 35.
The Appeal Division of the Lithuanian State Patent Bureau upheld the action and declared that the trademark MACROSOFTAUTOS.COM was invalid under both Article 7(1)(2) and Article 7(1)(7).
 
First, the Appeal Division held that the overall impression of the marks was similar because the dominant elements of the marks - 'Microsoft' and 'Macrosoft' - differed only in one letter. Further, the other word elements of the later mark - 'Autos' and '.com' - were descriptive in relation to the services covered by the mark. The word 'Enhanced' in the earlier trademark only served to emphasise the dominant element 'Microsoft', and thus was also of a descriptive nature.
 
The Appeal Division also found that the visual similarity of the marks was enhanced by the use of the same colours (black and blue). The typeface of the word element in the MACROSOFTAUTOS.COM mark was not original and, therefore, did not have any influence on the overall impression of the mark.
 
Further, the Appeal Division held that the marks were similar phonetically because the dominant elements, 'Microsoft' and 'Macrosoft', were pronounced almost exactly in the same way, with the accent on the first syllable. The Appeal Division also stated that the marks were artificially created words with an identical structure (the words 'micro' and 'macro' plus the notional word 'soft'). The fact that 'micro' and 'macro' are antonyms only served to enhance the similarity of the marks.
 
Second, the Appeal Division pointed out that, when analysing the similarity of goods and/or services, it should take into account their type, purpose and channels of distribution. Based on these factors, the Appeal Division noted that the services covered by the marks in Class 35 were similar. The Appeal Division noted that the risk of confusion was even greater due to the high degree of distinctiveness of the MICROSOFT marks.
 
Third, the Appeal Division held that, when analysing whether the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier CTM, all the relevant facts had to be taken into consideration, including:
  • whether the marks are similar or identical;
  • whether the later mark is, or has been, registered for goods and/or services which are not similar to those for which the earlier CTM is registered;
  • whether the earlier mark enjoys a reputation in European Community; and
  • whether use of the later mark would take unfair advantage, or be detrimental to, the distinctive character or repute of the earlier CTM.
The Appeal Division noted that the trademark MACROSOFTAUTOS.COM was confusingly similar to the earlier MICROSOFT mark, which enjoys a reputation in the European Community.
 
Based on the practice of the European Court of Justice, in order to declare that a mark has a reputation on the European Community, it is necessary to ascertain whether the mark is known by a significant part of the public concerned in relation to the products and/or services covered by that mark. All the relevant facts of the case must be taken into consideration - in particular:
  • the market share held by the trademark;
  • the intensity, geographical extent and duration of its use; and
  • the size of the investment made by the trademark owner in promoting it.
The Appeal Division acknowledged that the evidence submitted to it demonstrated that MICROSOFT had a reputation in the European Community.
 
The Appeal Division also noted that, because Microsoft produces a wide range of goods (including software for automobiles), consumers could be led to believe that goods bearing the MACROSOFTAUTOS.COM mark were manufactured by Microsoft. Therefore, use of the mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier MICROSOFT mark.
 
Vilma Dauskurdiene, AAA Baltic Service Company - Law Firm, Vilnius

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