PLANET and PLANETFOOTWEAR held to be confusingly similar

In Shoe City Limited v Planet Fashions Limited (June 22 2009), the acting controller has upheld an opposition against the registration of the mark PLANETFOOTWEAR.
Shoe City Limited applied to register the trademark PLANETFOOTWEAR (and design) for clothing, footwear and headgear in Class 25 of the Nice Classification (Application 2006/00254 (233591)). On advertisement, the application was opposed by Planet Fashions Limited.
At hearing, the acting controller decided to uphold the opposition and refuse registration of the mark. A number of grounds of opposition were not particularized in the notice of opposition or substantiated in the evidence subsequently filed. Accordingly, the opposition was considered on the grounds of Section 10 of the Trademarks Act 1996 based on Planet’s registration and claimed use of the trademark PLANET in respect of articles of clothing in Class 25 (footwear and headgear).
The acting controller held that:

  • the trademarks were not identical, but clearly similar; and
  • the goods for which Shoe City sought registration were identical to those covered by Planet’s earlier trademark.
The degree of similarity between the marks was very high on the basis that the overall impression given by Shoe City’s mark was greatly influenced by the word 'planet'. The acting controller considered that 'planet' was the distinctive component of the composite term 'planetfootwear', since the element 'footwear' describes the goods or field of activity of Shoe City and could not, therefore, be regarded as a distinctive component of the mark. The overall impression given by the mark was predominantly formed by the word 'planet', which gave the brand its identity.
The acting controller also held that the concepts expressed by the respective marks were the most significant factor in determining the overall impression given by them and that those concepts were highly similar. The acting controller considered that the trademark PLANET displayed more than the minimum level of distinctiveness required for registration. As regards confusion, he was of the view that confusion could be:

  • direct - in the sense that consumers might believe that the goods covered by the marks emanated from the same commercial source; or
  • indirect - in the sense that consumers might assume a connection between Shoe City and Planet.
The acting controller concluded that in the circumstances of the case, direct confusion was more likely than not because the message of Planet’s mark, which forms its identity, was repeated in Shoe City’s mark and was central to the overall impression given by that mark. The acting controller did not believe that the differences in the marks - namely, the figurative elements and the word 'footwear' in Shoe City’s mark - were sufficient to obviate the likelihood of confusion, particularly having regard to the fact that the likelihood of confusion must be assessed not by reference to a side-by-side comparison of the marks, but on the basis of the imperfect recollection of the average consumer.
The acting controller was of the view that the average person who knew of the shoes marketed under the PLANET mark and who encountered shoes branded with the PLANETFOOTWEAR mark would undoubtedly make a connection between the two and would, in all probability, think that they were one and the same brand. Moreover, use of Shoe City’s mark in relation to those goods would be likely to lead to indirect confusion, having regard to a notional prior use of Planet’s trademark. The average consumer would perceive Shoe City’s mark as connected with the PLANET mark - perhaps denoting a special line of goods (footwear) from the makers of PLANET-branded clothing.
Patricia McGovern, DFMG Solicitors, Dublin

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