Office must specify for which goods and services there is a likelihood of confusion

The Swedish Court of Patent Appeals has rejected Demp BV’s appeal against a partial refusal to register the international designation BAUHAUS in Sweden. This was the second time that the case had come before the court, and the matter has now reached its conclusion.

Two years ago the Swedish Patent and Registration Office (PRV) concluded that BAUHAUS was confusingly similar to the earlier Community trademark (CTM) BAUHAUS DESSAU, due to:

• the fact that 'Bauhaus' was the dominant element in both marks; and
• the similarities between the goods and services covered by the marks.

Demp appealed to the Court of Patent Appeals. The court agreed with the PRV that the trademarks were similar, since the BAUHAUS mark is identical to the dominant element of the earlier trademark BAUHAUS DESSAU. At the time of the decision, the new Trademark Act (2010:1877) came into force, which opened the possibility of refusing an application in part. The PRV's decision did not specify for which goods and services there was a likelihood of confusion. Therefore, the matter was remanded to the PRV so that the latter could assess whether the application should to be refused partially or in its entirety.

The PRV then partially refused to register the international designation. The refusal applied to eight of the classes covered by Demp's application.

Demp appealed a second time to the Court of Patent Appeals, claiming that there was no likelihood of confusion between its BAUHAUS mark and the earlier CTM BAUHAUS DESSAU. With regard to the similarities between the trademarks, the court referred to its earlier decision (No 10-125) and explained that there was no reason to reach a different conclusion. The court thus found that the two trademarks were similar. 

The Court of Patent Appeals also held that the goods and services covered by the BAUHAUS mark were similar and, in some cases, identical to those covered by the earlier mark. It agreed with the conclusion of the PRV that the designation should be rejected with regard to eight classes. The court thus rejected Demp’s appeal.

This case shows that, as a consequence of the coming into force of the new Trademark Act in 2010, the court must assess whether a registration should be refused partially or entirely. In order for the court to make such a decision, the lower instance must specify for which goods and services there is an obstacle for registration. This finding cannot be made at the second instance. 

Tom Kronhöffer and Isabelle Hellström, von lode advokat ab, Stockholm