No conceptual similarity between 'smile' and 'smiley' marks

The Maritime and Commercial Court has rendered its judgment in an interesting dispute between Kraft Foods AS and the Board of Appeal for Patents and Trademarks (Case V-72-11, December 3 2012).

At issue in this case was whether the word and device mark SMIL, belonging to Kraft Foods, should be considered as an obstacle to the registration of the later word mark SMILEY, applied for by The Smiley Company SPRL. The Danish word 'smil' means 'smile' in English.

In 2007 the Danish Patent and Trademark Office refused to register the mark SMILEY for confectionery and chocolate, considering that the mark was confusingly similar to the earlier mark SMIL, which was registered for "small pieces of chocolate with a caramel centre".

The matter was brought before the Board of Appeal for Patents and Trademarks, which reversed the decision of the Patent and Trademark Office. Subsequently, the trademark SMILEY was published, and Kraft Foods filed an opposition. The Patent and Trademark Office dismissed Kraft Foods’ opposition based on the finding that the marks were dissimilar. Kraft Foods appealed to the Board of Appeal for Patents and Trademarks, which confirmed the decision.

Kraft Foods then brought the matter before the Maritime and Commercial Court, claiming that:

• there was a likelihood of confusion between the two trademarks;
• the mark SMILEY begins with the letters 'SMIL';
• the mark SMIL is contained entirely in the 'SMILEY' mark;
• SMIL was well known in Denmark before the filing date of the SMILEY mark; and
• SMIL has a high degree of distinctiveness.

The Maritime and Commercial Court held that Kraft Foods had not proven that the SMIL mark was well known and, accordingly, the mark was not eligible for extended protection.

With regard to the question of confusing similarity, the court held that the different pronunciation of the marks was important. Even though the marks were considered similar from a visual point of view, the aural and conceptual differences between them led to the conclusion that there was no likelihood of confusion.

The judgment is an example of the sometimes delicate balance between the various aspects of the overall assessment of the likelihood of confusion based on the degree of visual and aural similarity and the possible conceptual similarity between the marks. In this case, one might argue that, even though the associations created by the marks were dissimilar - a 'smile' on the one hand and a 'smiley' on the other – these associations still had something in common.

Lisbet Andersen, Bech-Bruun, Copenhagen