Risk of confusion assessment clarified

In Beiersdorf AG v BRK Cosmetics LLC (Case BAC-3691/06, July 18 2006), the Presidium of the Supreme Arbitrazh Court of Russia has formulated criteria for establishing the risk of confusion for cases involving similar trademarks. Furthermore, the court has declared that, for establishing similarity between trademarks, it is not necessary to show actual confusion to consumers; it is sufficient to prove that a risk of confusion may exist.

Beiersdorf AG is the manufacturer behind the well-known cosmetics mark NIVEA, sold in many countries throughout the world including Russia. Beiersdorf holds a Russian registration for the word mark NIVEA and several international registrations for device marks, which are registered in Russia (Registrations 702653, 724509, 767468, 720172) specifically for goods in Class 3 of the Nice Classification (cosmetics).

The trademark LIVIA (and device) was registered by BRK Cosmetics LLC in Russia with a later priority date for similar goods in Class 3. Furthermore, BRK Cosmetics started to distribute a wide range of cosmetics under this brand in the Russian market.

At the end of 2003 Beiersdorf filed an action with the Patent Dispute Chamber seeking to have the LIVIA (and device) registration cancelled on the grounds of its (i) similarity with the NIVEA trademarks; and (ii) potential to mislead consumers. The chamber refused to cancel the registration, arguing that the word elements of the marks were not confusingly similar. Beiersdorf brought an action in the Arbitrazh Court of Moscow to have the decision reversed, and lost the case in the first and appeal instances of the court. The third instance of the court returned the case to the first instance. However, again, the first, second and third instances of the court refused to cancel the LIVIA device mark registration and accepted the Patent Dispute Chamber's argument that the trademarks were not confusingly similar.

The Presidium of the Supreme Arbitrazh Court of Russia had the final word in this protracted dispute, confirming the similarity of these trademarks. In its decision, the court set out a number of principles, which may have an impact on the consideration of such disputes by the courts and the Patent Dispute Chamber in the future.

The court declared that in cases involving two similar (but not identical) trademarks, the risk of confusion to consumers by these marks should be established by a court. Furthermore, it said that a risk of confusion depends on the following three factors:

• distinctiveness of the prior trademark (that is, reputation/notoriety of the mark);
  
  
• similarity between the marks; and
  
  
• similarity of the goods covered by these trademarks.

This is a very important decision because according to the previous practice of assessing similarity of trademarks, the reputation of the prior mark was not a mandatory criteria to be taken into consideration by courts and/or the Patent Dispute Chamber.

The court concluded that similarity should be based on the similarity of trademarks as a whole (general impression), and not a comparison of the separate elements of the marks. Furthermore, the court said that for establishing similarity between trademarks it is not necessary to show actual confusion to consumers. It is enough to provide evidence that a risk of confusion exists.

The risk of confusion was evidenced by survey results, presented by both parties to the court. According to the survey conducted on behalf of Beiersdorf, 30% of respondents answered that the conflicting trademarks belonged to the same manufacturer and 29% of respondents were unable to answer the question. The results of BRK Cosmetics' survey showed that 6% of respondents answered that the marks belonged to the same manufacturer and 12% were unable to answer. Tallying up the number of respondents who were confused or who were unable to answer in both surveys, the court noted that18% of respondents to BRK Cosmetics' survey and 59% of respondents to Beiersdorf's survey were unable to differentiate unambiguously between the marks at issue. It stated that these figures were sufficient to confirm the risk of confusion to consumers.

Tatiana Petrova, Clifford Chance CIS Limited, Moscow