Owner of ELLE mark successfully opposes ELLA mark for Class 25 goods
The Patent Office and the Board of Appeal have taken different approaches in assessing the likelihood of confusion between two marks covering goods in Class 25 of the Nice Classification and have reached different conclusions in an opposition case.
In Hachette Filipacchi Presse France v Elínrós Líndal Ragnarsdóttir Iceland (Case 7/2012, December 12 2013), the Board of Appeal considered whether the opposed mark ELLA (No 39/2011, depicted below) for clothing, footwear and headgear in Class 25 was similar to the opponent's trademark ELLE (Registration No 269/1998, depicted below) for goods in Classes 18 and 25 (the opposed mark also covered goods in Classes 14, 18 and 20, but the opposition was directed only against the goods in Class 25).
The Patent Office had rejected the opposition on the basis that there was some aural similarity between the marks, but that visual similarity was limited. It had found that, in Icelandic, the final letter 'E' in the word 'elle' would be silent, while the mark applied would be pronounced “as it is written” (ie, with the final 'A'). The Patent Office had also considered that there was a conceptual difference between the mark, since 'elle' is a feminine pronoun in French ('she' in English), while in Icelandic, 'ella' can stand for 'otherwise' or the first name Ella. The Patent Office had considered it “more likely” that Icelandic consumers would understand the opposed mark as a nickname, and had thus concluded that the marks were not similar. On this basis, and as it had not been shown that the trademark ELLE was well known in Iceland, the opposition was rejected. The opponent appealed.
The Board of Appeal first noted that it is a fundamental condition for the registration of a trademark that it is suitable to distinguish the goods/services of one party from the goods/services of others (see Article 2 of the Trademarks Act). Trademarks are confusingly similar under Article 14, Paragraph 1, Item 6 if consumers can confuse the goods/services of different parties or consider that the goods/services of different parties have the same business origin due to the similarity of the marks.
The board underlined that, when evaluating whether marks are confusingly similar, two basic points should be considered: the similarity of the goods and the similarity of the marks. However, the similarity of the goods and the similarity of the marks should always be considered in context. When deciding whether marks can be confused, the deciding factor should be the overall impression that the marks leave in the mind of consumers.
In the present case, since the opposition was directed only against the Class 25 goods and the goods covered by the marks were identical, the board considered only whether the marks were similar. The board noted that the marks ELLE and ELLA both consist of four-letter, two-syllable words that have different meanings. The mark ELLE referred to the personal pronoun 'elle' in French, while the mark ELLA was the nickname of the owner of the opposed mark, Elínrós. Further, the mark ELLE was written in black with a space between each letter (E L L E) in a Times Roman font, while the opposed mark consisted of the term 'ella' written in white letters in an Art Deco font at the centre of a black rectangle. The first three letters were the same, but the last letter was different both in pronunciation and visually.
However, the board held that this difference could not exclude the risk that consumers of the goods at issue would confuse the marks or their business origin. The board noted that, in Icelandic pronunciation, the emphasis is generally on the first syllable of a word. In this respect, the board referred to a 2001 decision of the Supreme Court of Iceland regarding the trademarks SEROXAT/PAROXAT, and to a 2004 decision of the same court regarding the trademarks PHARMANOR/PHARMA NORD. According to these decisions, the first syllable usually has more weight in the assessment of the overall effect of the marks in the mind of consumers. The board held that, in the present case, the stylisation of the marks could not be a deciding factor since it was “insubstantial”.
The Board of Appeal concluded that the visual and aural similarity of the marks would be increased by the fact that the first three letters were identical, since this diminished the effect of the last letter. Further, the board held that the identical part of the marks should not be considered as their weak element. The “difference is that the word 'ella' is pronounced the same way as it is written, with an emphasis on the first syllable, while in French, the letter 'E' at the end of the word 'elle' is silent”. The board noted that it could not be excluded that some Icelandic consumers would not perceive the word mark ELLE as the personal pronoun 'she', but would pronounce it as it is written. However, the board considered that these differences in pronunciation and meaning were insufficient to prevent a danger of confusion.
The Board of Appeal and the Patent Office thus clearly differed in their evaluation of the similarity between the marks.
The applicant had also referred to Article 6, Paragraph 1, Item 1 of the Trademarks Act, which stipulates that, provided that use of a mark is in accordance with honest business practices, the proprietor of a registered trademark may not prohibit another from using, in trade or business, its own name, the name of real property or the name of its commercial operations. The opponent had argued that an argument based on this provision could be decided only by the courts and should not be part of the basis of a decision by the Patent Office.
The Board of Appeal concluded that Article 6, Paragraph 1, Item 1 of the act does not stipulate which marks can be registered and therefore, did not grant the applicant an “independent right” to a registration of the trademark ELLA. The board, however, stated that the trademark right included in the registration of the trademark ELLE would be subject to Article 6, Paragraph 1, Item 1, but any decision or evaluation in that respect should not be part of the opposition proceedings.
The Board of Appeal thus overturned the decision of the Patent Office and upheld the opposition with regard to goods in Class 25.
Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík
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