Owner of FREON mark fails to invalidate FREOR

The Appeals Division of the State Patent Bureau of Lithuania has dismissed EI DuPont de Nemours and Co's action for the invalidation of the trademark FREOR (January 22 2009).
DuPont owns a registration for the trademark FREON (Registration 10579) for goods in Class 1 of the Nice Classification (fluorine hydrocarbons). DuPont filed an action for the invalidation of the figurative trademark FREOR (Registrations 54755 and 55713), which is owned by Lithuanian company Freor. The FREOR mark covers refrigerators and other refrigerating equipment in Class 11.
The action was filed under Article 7(1)(2) of the Law on Trademarks, which provides that a trademark registration shall be declared invalid if it is identical or confusingly similar to an earlier registered mark for identical or similar goods and/or services.
First, the Appeals Division found that the marks were not confusingly similar. Despite the fact that they differed only by one letter, the Appeals Division concluded that the overall impression given by the marks was dissimilar. The Appeals Division pointed out that the FREOR mark was written in lower case in stylized blue letters on a grey background, while the FREON mark was written in capital letters. Although there was a certain level of similarity between the word elements of the marks, the graphic element of the FREOR mark created a completely different impression. Moreover, the Appeals Division found that the marks were dissimilar from a conceptual point of view, as the trademark FREON had a semantic meaning ('freon' being a chlorine hydrocarbon derivative), while the word 'freor' was an artificially created word.
Second, the Appeals Division held that the goods covered by the marks at issue were not similar. In particular, the Appeal Division stated as follows:
  • The types of goods covered by the marks were dissimilar: the FREON mark covers chemical products in the form of gas in Class 1, while the FREOR mark is used for refrigerating equipment in Class 11.
  • The purpose of the goods was different: the FREON mark covers fluorine hydrocarbons used as a refrigerating agent for engines and fire-fighting compounds, while the goods covered by the FREOR mark are used to keep food and other products cold.
  • The channels of trade differed: refrigerating equipment sold under the FREOR mark is distributed in stores, while the chemical products covered by the FREON mark are sold through specialized channels.
The Appeals Division thus concluded that the FREOR mark was valid and dismissed the action.
Evelina Serelyte, Law Firm AAA Baltic Service Company, Vilnius

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