NETROO and METROO held to be confusingly similar
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The Estonian Board of Appeal has upheld an opposition against the application for the registration of the trademark NETROO on the grounds that there was a likelihood of confusion with the earlier registered trademark METROO (Decision 827, May 30 2008).
OÜ Netroo filed an application for the registration of the trademark NETROO for computer network wiring services in Class 37 of the Nice Classification. Norby Telecom AS, the owner of the earlier registered trademark METROO for wiring and montage services for data communication in Class 37 (among other things), opposed the application on the grounds that the trademarks at issue were so similar as to cause confusion.
Norby requested that the Board of Appeal recognize that the trademark METROO is well known in Estonia. In support of its request, it submitted, among other things, a survey conducted among IT specialists. The survey showed that 46% of interviewees knew the trademark METROO and 25% were aware of the company behind it. The board found that METROO was not a well-known trademark in Estonia, taking into account:
- the results of the survey; and
- the fact that Norby offers services under the trademark METROO only in Estonia’s capital, Tallinn.
Moreover, the board found that the trademarks at issue were visually and phonetically similar. From a conceptual point of view, the board stated that:
- ‘metroo’ refers to an underground train; and
- ‘netroo’ is an invented word combining the beginning of the word ‘network’ and the end of the word ‘metroo’.
However, the board disagreed with OÜ Netroo’s argument that the conceptual difference between the words ‘metroo’ and ‘netroo’ counterbalanced the phonetic and visual similarity between the marks and thus eliminated the likelihood of confusion. The board held that if two trademarks have almost identical pronunciation, consumers:
- are likely to mistake them for the same trademark; and
- might not realize that the words and their meanings are different.
Consequently, the board held that if two trademarks cannot be differentiated from a phonetic point of view, any conceptual differences are irrelevant.
Mikas Miniotas, AAA Legal Services, Tallinn
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