PASCAL SØTT & SALT comes to a bitter end
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In Pascal AS v Søtt + Salt AS (Case HR-2008-01686, October 2 2008), the Supreme Court has held that the trademark PASCAL SØTT & SALT (Norwegian for ‘Pascal sweet & salt’) was invalid.
Pascal AS, now Pascal Drift AS, was established in Oslo in 1995 by Pascal Dupuy. It has five restaurants and cafés in this city. PASCAL was registered as a trademark in 2004. The company has established goodwill in the name and mark over the years. As Pascal originally made only confectionery, it wished to promote the fact that the company also carried out restaurant and catering activities. Pascal thus applied for the registration of the trademark PASCAL SØTT & SALT for various goods and services in Classes 29, 30, 32, 41 and 43 of the Nice Classification.
Søtt + Salt AS, a food company situated in Bergen, is engaged in various activities (restaurant and catering operations, cooking classes and sale of kitchenware). Søtt + Saltis the owner of the registered trademark SØTT + SALT for services in Classes 35, 41 and 43, among others. Søtt + Saltopposed the registration of PASCAL SØTT & SALT on the grounds that there was a likelihood of confusion with its SØTT + SALT mark under Section 14(6) of the Trademark Act.
The Norwegian Industrial Property Office rejected the opposition and the trademark PASCAL SØTT & SALT was registered in June 2006. Søtt + Saltfiled suit, claiming that the two trademarks were liable to be confused in violation of both Section 4 and Section 14(6) of the act.
The Oslo District Court found in favour of Søtt + Salt. It enjoined Pascal from using the trademark PASCAL SØTT & SALT under Section 4 of the act and held that the trademark was invalid under Section 14(6). Pascal appealed.
The Court of Appeal found in favour of Pascal, holding that:
- the word ‘Pascal’ was the dominant element of the trademark; and
- the fact that Pascal had established goodwill in the market reduced the possibility for confusion.
Furthermore, the court emphasized that Søtt + Salt’strademark SØTT + SALT was not very distinctive, except for the use of the symbol ‘+’. Although the trademarks were registered for identical and similar goods and services and were likely to be pronounced in the same way, the Court of Appeal found that there was no likelihood of confusion between the marks (for further details please see “Sweet victory on appeal for PASCAL SØTT & SALT”).
Søtt + Salt appealed to the Supreme Court, arguing that:
- a substantial number of consumers would believe that there was a commercial connection between Pascal and Søtt + Salt;
- the likelihood of confusion was increased by the fact that the trademarks were registered for identical and similar goods and services; and
- the difference between ‘&’ and ‘+’ was insufficient to avoid confusion, as both symbols would be perceived as meaning, as pronounced as, ‘og’ (Norwegian for ‘and’).
In addition, Søtt + Salt denied that SØTT + SALT was descriptive of the relevant goods and services. On the contrary, Søtt + Salt was of the opinion that the expression ‘søtt og salt’ was original. Therefore, use of a similar mark (with insignificant differences) would give the impression that there was a commercial connection between the two companies.
Pascal argued that the marks were clearly different from a visual point of view because the word ‘Pascal’ was the dominant element of its mark. ‘Pascal’ referred to a person, Pascal Dupuy, who had established a significant reputation in the market, especially for confectionery. Moreover, Pascal argued that the PASCAL mark had established goodwill in the market and, consequently, the expression ‘søtt & salt’ appeared as a subordinate element in the mark. Furthermore, Pascal alleged that ‘søtt’ and ‘salt’ were descriptive words which reduced the distinctiveness of the mark. As the relevant public consisted of well-informed individuals, Pascal was of the opinion that the average consumer would be able to distinguish the goods and services of the two companies.
The Supreme Court agreed with Pascal that the word ‘Pascal’ was the dominant element of the trademark PASCAL SØTT & SALT. The court also emphasized that PASCAL was a well-established trademark in the market. In addition, the minority of the court agreed with Pascal that the trademark SØTT + SALT would be perceived as a weak mark, as it had not established sufficient goodwill in the market to become distinctive.
However, the majority of the court held that the fact that ‘Pascal’ was the dominant element of the mark was insufficient to prove that there was no likelihood of confusion between the marks. Therefore, the majority of the court concluded that there was a likelihood of confusion between the marks on the following grounds:
- The goods and services covered by both marks were identical.
- The small differences between the marks (use of ‘+’ or ‘&’ and use of a different font) was insufficient to avoid a likelihood of confusion. In particular, the marks were highly similar from a phonetic point of view.
- Referring to the decision of the European Court of Justice in Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (Case C-120/04), the Supreme Court stated that although the dominant element of the mark PASCAL SØTT & SALT reduced the risk of confusion, there was a likelihood of confusion on the grounds that the other part of the mark, due to its distinctive character, conveyed the impression that there was a commercial connection between the parties. The court was of the opinion that the average consumer would not perceive ‘søtt & salt’ as being descriptive of the relevant goods and services.
The Supreme Court concluded that the registration of PASCAL SØTT & SALT infringed Section 14(6) of the act because there was a likelihood of confusion with the trademark SØTT + SALT. Therefore, the court declared that PASCAL SØTT & SALT was invalid.
Kaia Bugge Fougner and Felix Reimers, Advokatfirmaet Grette DA, Oslo
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