No likelihood of confusion between FEMINA and LA FEMME, says board

The Estonian Board of Appeals has dismissed an opposition against the application to extend protection to Estonia of the international registration for the figurative trademark FEMINA (June 30 2009).
Akstionerno Droujestvo Bulgartabac Holding applied to extend protection to Estonia of the international registration for a figurative trademark consisting of the word 'femina' and the side-view image of a woman wearing a hat (International Registration 865661). The application covered goods in Class 34 of the Nice Classification (cigarettes).
Gallaher Limited opposed the application based on its earlier registered Community trademark LA FEMME SLIMS (and design representing the side-view image of a woman wearing a hat) (Registration 004193736) for cigarettes.
After hearing the arguments of the parties, the Board of Appeals concluded that there was no argument that:
  • Gallaher had prior rights in the mark LA FEMME SLIMS; and
  • both trademarks covered identical goods.  
The board went on to analyze the visual, phonetic and conceptual similarities between the signs. From a visual point of view, the board found that the double 'M' in the word 'la femme' created a different visual impression. Furthermore, the board pointed out that the endings of the words 'la femme' and 'femina' were different. 
The board then compared FEMINA and LA FEMME SLIMS from a phonetic point of view and concluded that the rhythm of pronunciation of the marks was different. Finally, from a conceptual point of view, the board found that consumers who are not familiar with the French and Latin languages would not understand the meaning of the marks ('la femme' and 'femina' meaning 'woman' in French and Latin, respectively).
After analyzing the overall impression conveyed by the marks, the board concluded that despite the identity of the goods, there was no likelihood of confusion between the marks. The board found that the dominant elements of the marks - the words 'la femme' and 'femina' - were different both visually and phonetically.
Arguably, more weight should have been given to the conceptual similarity of the marks and the identity of the goods. Furthermore, the descriptive character of the word 'slims' for Class 34 goods was not discussed.
Interestingly, the board held that brand loyalty is very strong in the market for cigarettes and, therefore, consumers are familiar with the shape, label and colour of the various brands. Consequently, the board found that even the smallest difference between two marks for cigarettes is sufficient to rule out a likelihood of confusion among consumers. 
Mikas Miniotas, AAA Legal Services, Tallinn

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