Small differences between short marks may lead to different overall impressions

The Appeal Division of the Lithuanian State Patent Bureau has found that there was no likelihood of confusion between the figurative marks ZENO and ZERO.

On May 28 2012 zero Holding GmbH & Co KG (Germany) filed opposition No PNZ-109 with the Appeal Division, requesting a declaration that the figurative mark ZENO (national trademark registration No 65004), owned by APB Apranga (Lithuania), was invalid in the Republic of Lithuania. 

The opposed trademark is registered for “clothing, footwear, headgear” in Class 25 and “advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods” in Class 35 of the Nice Classification.

The opponent based the opposition on the earlier Community trademark (CTM) ZERO (CTM 000007484), registered for “outer clothing, including knitted and woven clothing; footwear, headgear, belts (except belts made of common and precious metals and imitations thereof), gloves, scarves, headscarves and neckerchiefs” in Class 25 and ZERO (CTM 005346259) registered for “retail services, including for mail order, by means of teleshopping channels and via the Internet, in relation to clothing, headgear and footwear, leatherware (including clothing), cosmetics, perfumery, eyewear, wrist watches and pocket watches, jewellery; presentation of goods in shops, trade fairs and on communications media, for retail purposes; professional business consultancy and marketing for others; franchising, namely providing of organisational know-how” in Class 35, among other goods and services.

The opposition was based on Article 7(1)(2) of the Lithuanian Trademark Law, which provides that a trademark registration should be declared invalid if it is identical, or misleadingly similar, to an earlier mark registered or applied for with regard to identical or similar goods and/or services.

The opponent claimed that the opposed mark ZENO was similar to its earlier trademarks ZERO, both visually and phonetically, due to the coincidence of three out of four letters. The opponent further alleged that the marks would be perceived as invented words by Lithuanian consumers. Finally, the opponent claimed that the goods and services covered by the marks were identical or similar, and that the similarity of the marks and the goods created a likelihood of confusion as to the origin of the goods. 

The Appeal Division rejected the opposition based on the following arguments:

1. When comparing the overall impression created by the marks, it was evident that the dominant elements were the words ‘zero’ and ‘zeno’. These words are short, and this had a great significance when evaluating the similarity of the marks. According to the Office for Harmonisation in the Internal Market’s Opposition Guidelines, the length of the marks may influence the impact of the differences between them. The shorter a trademark is, the more easily the public will be able to perceive every single element. Therefore, small differences between short words may lead to different overall impressions.
   
   Further, the marks differed not only in the letters ‘R’ and ‘N’, as the opponent stated, but also in the graphic element which was perceived as the letter ‘E’ in the applicant’s mark. Therefore, there was no sufficient ground to find that the marks were visually similar.



2. When comparing the marks phonetically, it was taken into account that the word ‘zeno’ would be pronounced by the consumers in the same way as it is written [z e n o], while the opponent’s marks would be pronounced in accordance with the pronunciation rules of the English language [z i ə r ə u].



3. With regard to the semantic analysis, it was noted that the perception of the marks should be evaluated from the point of view of the average consumer, who is reasonably well informed, circumspect and responsible. The opponent’s marks contained the English word ‘zero’, which would be understood by the average Lithuanian consumers, as 38% of Lithuanian residents can speak English according to European Commission data (“Special Eurobarometer, Europeans and their languages, February-March 2012”). Moreover, the word ‘zero’ is used in other languages.
   
   The notional element of the opposed mark, ‘Zeno’, referred to the male name ‘Zenon’ (‘Zenonas’ in Lithuanian). Even if consumers did not know the meaning of this word, they would perceive it as an invented word without semantic connotations. Consequently, the compared marks had a different meaning and their conceptual perception was different.



4. The similarity between two trademarks cannot be assessed by analysing their elements separately; instead, the impact of each criterion on the overall impression and the perception of the marks as a whole should be taken into account. As the marks at issue consisted of short words, their visual, phonetic and semantic differences were obvious and there was no ground to find that they were similar.

Based on the foregoing, the Appeal Division found that there was no legitimate basis for the application of Article 7(1)(2) of the Trademark Law. Consequently, it decided that the opposition should be rejected and that the ZENO mark should remain valid.

Ausra Pakeniene, AAA Baltic Service Company - Law Firm, Vilnius