No likelihood of confusion between ROCKLETS and LOCKETS
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The Intellectual Property and International Trade (IP & IT) Court has reversed a decision of the Board of Trademarks in which the latter had found that the trademark ROCKLETS was confusingly similar to Mars Inc's registered trademark LOCKETS (May 26 2008).
In 2004 Arcor SAIC (Argentina), one of the world’s leading candy manufacturers, applied for the registration of the mark ROCKLETS (including a design and the phrase “The colours of chocolate”) for goods in Class 30 of the Nice Classification (chocolate confectionery) with the Department of Intellectual Property of Thailand.
The registrar of trademarks rejected the application on the grounds that the trademark ROCKLETS was similar to the registered trademark LOCKETS for goods in the same class. In particular, the registrar was of the opinion that the pronunciation of both trademarks was similar. Therefore, because the trademarks cover similar goods, the registrar concluded that there was a likelihood of confusion among the public.
Arcor appealed to the Board of Trademarks. The board affirmed the registrar’s order based on the same grounds. Arcor subsequently filed a complaint against the Department of Intellectual Property before the IP & IT Court.
Before the court, Arcor argued that the trademark ROCKLETS was not similar to the registered trademark LOCKETS based on the following grounds:
- The meaning of the word 'lockets' can be easily understood, whereas 'rocklets' is an invented word with no meaning.
- As Arcor disclaimed the exclusive right to use the phrase “The colours of chocolate” and all candy shapes, the wording and the design were the dominant elements of the mark. The word 'rocklets' is written in stylized letters with white and blue parallel lines on a blue background. In contrast, the word 'lockets' is written in plain letters with no background.
- The trademarks are registered and coexist in several countries.
Arcor also submitted evidence demonstrating the actual use of both trademarks in the market. In addition, Arcor argued that in assessing the likelihood of confusion, account should be taken of the overall impression conveyed by the word and figurative elements of the marks. Therefore, the marks should be considered as a whole, focusing on whether their dominant elements are confusingly similar.
After carefully weighing the evidence and arguments presented before it, the IP & IT Court found that the trademarks ROCKLETS and LOCKETS were not similar. Therefore, there was no likelihood that consumers would be confused as to the origin of the goods. The court thus overturned the decisions of the registrar and the Board of Trademarks and ordered that the Department of Intellectual Property proceed with the registration of the trademark ROCKLETS.
Nuttaphol Arammuang and Kawin Kanchanapairoj, Tilleke & Gibbins International Ltd, Bangkok
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