No likelihood of confusion between LANZOGASTRO and OGASTO
The Lisbon Court of Appeal has held that there was no likelihood of confusion between the trademarks OGASTO and LANZOGASTRO (February 13 2009, only recently released).
The marks OGASTO and LANZOGASTRO were registered by the Portuguese Institute of Industrial Property (on February 3 1993 and July 17 2002, respectively) for pharmaceuticals in Class 5 of the Nice Classification. The owner of the OGASTO mark subsequently sought the cancellation of the LANZOGASTRO mark. The court of first instance decided to cancel the registration of the mark on the grounds that:
- the goods were identical; and
- the trademarks OGASTO and LANZOGASTRO were similar.
The owner of the LANZOGASTRO mark appealed. The Lisbon Court of Appeal allowed the appeal and annulled the decision of the lower court.
First, the Court of Appeal pointed out that the trademarks OGASTO and LANZOGASTRO are both composed exclusively of word elements. However, the OGASTO mark consists of a single term, while the LANZOGASTRO mark consists of two elements, 'lanzo' and 'gastro'.
The court also stressed that in assessing the likelihood of confusion, the marks should be considered as a whole. Nevertheless, elements that are devoid of distinctive character or are purely descriptive in nature will not be taken into account if they are present in both marks. Therefore, the court will consider only those elements that are not common to the marks.
The Court of Appeal further held that the lower court had erred in excluding the word element 'lanzo' from its assessment on the grounds that it was devoid of distinctive character. The Court of Appeal found that although the word elements 'lanzo' and 'gastro' had a weak distinctive character and could provide information as to the characteristics of the goods, they did not actually describe these characteristics. Therefore, the word element 'lanzo' should have been taken into account in assessing the likelihood of confusion.
The court compared the marks as follows:
- (LANZO)GASTRO v (O)GASTO - it is unlikely that consumers would drop the first syllable of the OGASTO mark. The sound 'O' will be pronounced, thus reducing the similarities between the marks.
- (LANZO)GASTRO v OGASTO - even if the word 'lanzo' is excluded from the analysis, GASTRO and OGASTO are dissimilar.
- (LANZ)OGASTRO v OGASTO - the exclusion of the element 'lanz' from the LANZOGASTRO mark - so as to compare 'ogastro' and 'ogasto' - would be artificial.
Based on these considerations, the court held that there were clear differences between the trademarks OGASTO and LANZOGASTRO. Therefore, there was no risk of confusion among the public.
Manuel Lopes Rocha and Tiago Assunção, AM Pereira Sáragga Leal Oliveira Martins Júdice E Associados - Sociedade De Advogados - RL, Lisbon
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