Mark containing generic term given narrow scope of protection
The Swiss Federal Administrative Court has upheld a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had rejected an opposition by the owner of the registered trademark PERNATON against the registration of the mark PERNADOL 400 (Case B-1136/2009, July 9 2010).
'Perna' is a species of mussels (perna canaliculus or green-lipped mussel). The earlier trademark PERNATON was registered for dietetic products in Classes 5 and 30 of the Nice Classification, while the trademark PERNADOL 400 covered goods in Classes 5 (certain kinds of food) and 29 (food preparations based on perna canaliculus). The IGE rejected the opposition and the owner of the PERNATON mark appealed to the Federal Administrative Court.
In the view of the court, the relevant public consisted of the average consumers, who have a normal degree of attention, rather than specialists, who have a higher degree of attention, since the products at issue are also purchased by the average consumers. The court further held that the goods covered by the marks were similar under trademark law, even if the channels through which they were distributed differed. Different distribution channels are only one of several indications that goods or services are not similar - it is also necessary to show that the buyers belong to different circles and/or that the methods of productions are different.
Turning to the comparison of the marks, the court determined that both signs:
- had the same length;
- shared the same sequence of vowels ('E', 'A' and 'O'); and
- differed only in the last two consonants ('T' and 'N' versus 'D' and 'L').
The court further held that the suffix '400' would be irrelevant in the eyes of consumers, since it had no particular meaning. According to the court, the meanings of the two marks were not clearly different since the suffix 'dol' is not generally understood as meaning 'against pain' (the products were not strictly limited to medicines).
Nevertheless, the court concluded that PERNATOL and PERNADOL 400 were not confusingly similar since the element 'perna' was clearly descriptive and, therefore, belonged to the public domain. In these circumstances, the court disregarded the element 'perna' in its assessment of the risk of confusion, and took into consideration only the suffixes 'ton' and 'dol 400'. The court found that these suffixes were essentially different from a phonetic and graphic point of view.
The decision does not appear to follow the mainstream of existing case law. In ALUCOL v ALUDROX (Case FCD 78 II 380) and KAMILLOSAN v KAMILLON (Case FCD 122 III 391), the trademarks, which shared a generic denomination, were found to be confusingly similar, even though the suffixes at issue were no more similar than 'ton' and 'dol 400'. In earlier decisions, an overall assessment of the mark - including the descriptive element - seemed to prevail. In particular, the Swiss Federal Court held in KAMILLOSAN v KAMILLON that elements belonging to the public domain may have an impact on the overall impression of the mark.
Peter Heinrich, Streichenberg Attorneys at Law, Zurich
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