Patent Office and Board of Appeal take different approaches to assessing likelihood of confusion

The Patent Office and the Board of Appeal have taken partially different approaches to assessing the likelihood of confusion between two marks and reached a different conclusion in an opposition case.

In O2 Holdings Limited UK v Stefansson (Case 3/2012, March 26 2013), the Board of Appeal considered whether the opposed word mark OZ (Registration No 469/2011), which covered the class headings in Classes 9, 35, 36 and 38 of the Nice Classification, was similar to the trademarks of opponent O2 Holdings Limited UK:

• O2 (Registration No 944/1998) for goods in Class 9; and
• O₂ (International Registration No 1033629) for goods and services in Classes 9 and 38.

The Patent Office had rejected the opposition against the registration of the trademark OZ with regard to all goods/services. The Patent Office had concluded that the visual similarity was reduced by the fact that the opposed mark included “two letters”, while the opponents' marks included “one letter and one number”. There was thus a limited visual similarity and no aural similarity between the marks. The office also pointed out the conceptual difference between the marks based on a reference to a dictionary.

The Board of Appeal, however, ignored any conceptual issues and held that, since the opponent's marks were both two-character words, as was the mark OZ, and since the parties' marks all shared the same initial letter, 'O', it was not possible to conclude that the visual similarities between the marks O2 and OZ were minimal, even if the second character of the marks was the number 2 on the one hand, and the letter 'Z' on the other. The Board of Appeal held that the number 2 and the letter 'Z' have a similar shape, even if the number 2 is usually written with a curved midline and the letter 'Z' with a straight midline. Additionally, it could not accept that the visual similarity between O₂ (where the number 2 is subscripted) and OZ was reduced. The Board of Appeal considered that there was no aural similarity between the marks, since both of the opponent’s marks are pronounced 'O-TVEIR' in Icelandic, while the mark OZ is pronounced as it is written.

The Board of Appeal then referred to the importance of the visual similarity in the overall comparison of the marks, as well as the importance of the similarities between the goods and services in Classes 9 and 38. On this basis, it concluded that there was a danger of confusion under Article 14, Paragraph 1, Item 6 of the Trademarks Act between the mark OZ on the one hand, and the marks O2 and O₂ on the other, in relation to goods and services in Classes 9 and 38.

The Board of Appeal then overturned the decision of the Patent Office and upheld the opposition with regard to goods and services in Classes 9 and 38. The opposition was however rejected with regard to services in Classes 35 and 36 in accordance with the Patent Office's decision.

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík