Size of mark in register irrelevant when assessing likelihood of confusion

The Swiss Federal Administrative Court has considered the controversial issue of how, and to what extent, word and/or figurative components determine the overall impression of a trademark that contains both figurative and non-figurative elements. The court decided that the size in which the non-figurative part (ie, the word element) is presented in a trademark containing figurative and non-figurative components is not relevant when determining the likelihood of confusion with another trademark.

In March 2008 the defendant in the opposition proceedings registered the trademark ESTAVIS 1993 (and design) in the Swiss Trademark Register. The mark contained the word element 'Estavis 1993' and a yellow circle with a gate resembling Berlin's Brandenburg Gate in the middle of the circle. The text 'Estavis 1993' was written in very small letters at the top of the gate (it is illegible in the picture below):

The trademark covered goods and services in numerous classes, namely base metals, various machines and scientific and technological services.

In June 2008 the owner of the earlier trademark ETAVIS filed an opposition against the ESTAVIS 1993 mark. The earlier ETAVIS mark covered similar services. On January 27 2011 the Swiss Federal Institute of Intellectual Property ruled in favour of the owner of the ETAVIS mark and ordered the cancellation of ESTAVIS 1993 for all similar goods and services. This decision was upheld on appeal by the Swiss Federal Administrative Court (Decision 09747).

The court assessed the likelihood of confusion between the trademarks ETAVIS and ESTAVIS 1993 and, in doing so, focused on two issues:

1. whether the fact that the ESTAVIS 1993 mark combined figurative and non-figurative elements, as opposed to the word mark ETAVIS, made a difference when assessing the likelihood of confusion between the two trademarks; and
2. whether the fact that 'Estavis 1993' was written in relatively small, hardly readable letters at the centre of the trademark neutralised the likelihood of confusion with the ETAVIS mark, which consisted of a single word, written in larger and clearly legible letters.

According to Swiss doctrine and practice, a word mark can be similar to a trademark that consists of both figurative and non-figurative elements. However, it is controversial whether, and to what extent, the non-figurative and/or the figurative components influence the overall impression of a trademark. Therefore, the question of the relative size of the word elements 'Estavis 1993' and 'Estavis' was examined in further detail by the court.

According to the court, it is a basic feature of both figurative and non-figurative trademarks that they may be presented in different sizes. Swiss Trademark law does not contain rules specifying the size of trademarks. There is only a procedural rule that trademarks must be registered in a format of 8x8 cm at most. However, this does not mean that the likelihood of confusion can be examined only between trademarks of this size.

The court determined that the fact that the non-figurative part 'Estavis 1993' was written in small, nearly illegible letters could not be the deciding factor in assessing the likelihood of confusion. The court reasoned that words become readable when presented in a larger font. In addition, words generally play an important role in trademarks with both figurative and non-figurative elements, since words – unlike pictures – are used in conversations (eg, with customers). Therefore, even if the figurative part of the trademark ESTAVIS 1993 was clearly dominant in terms of overall space, the word element remained the main and distinctive component of the trademark. Since 'Estavis 1993' was similar to the word mark ETAVIS, the court concluded that there was a likelihood of confusion between the word mark ETAVIS and the combined mark ESTAVIS 1993.

Markus Frick and Daniela Kühne, Walder Wyss Ltd, Zurich