Sweet victory on appeal for PASCAL SØTT & SALT

In Pascal AS v Søtt + Salt AS (Case LB-2007-10400, January 28 2008), the Court of Appeal has held that there was no likelihood of confusion between the trademarks PASCAL SØTT & SALT (Norwegian for 'Pascal sweet & salt') and SØTT + SALT (Norwegian for 'sweet + salt').

Pascal AS was established in Oslo in 1995 and has five restaurants and cafés in this city. PASCAL was registered as a trademark in 2004. The company, its name and trademark have received positive publicity in the media, thus establishing goodwill in the market. As Pascal originally made only confectionery, it wished to promote the fact that the company also carried out restaurant and catering activities. Pascal thus applied for the registration of the trademark PASCAL SØTT & SALT for various goods and services in Classes 29, 30, 32, 41 and 43 of the Nice Classification.

Søtt + Salt AS, a food company situated in Bergen, is engaged in various activities (restaurant and catering operations, cooking classes and sale of kitchenware). Søtt + Salt is the owner of the registered trademark SØTT + SALT for services in Classes 35, 41 and 43, among others. Søtt + Salt opposed the registration of PASCAL SØTT & SALT on the grounds that there was a likelihood of confusion with its SØTT + SALT mark under Section 14(6) of the Trademark Act. The Norwegian Industrial Property Office rejected the opposition and the trademark PASCAL SØTT & SALT was registered in June 2006. Søtt + Salt filed suit, claiming that the two trademarks were liable to be confused in violation of both Section 4 and Section 14(6) of the act.

The Oslo District Court found in favour of Søtt + Salt. It enjoined Pascal from using the trademark PASCAL SØTT & SALT under Section 4 of the act and held that the trademark was invalid under Section 14(6).

Pascal appealed to the Court of Appeal, arguing that the words 'søtt' and 'salt' were descriptive and should thus remain free for use by competitors. Pascal also alleged that the mark PASCAL SØTT & SALT was distinctive because of the presence of the word 'Pascal'. Furthermore, it argued that the use of '&' instead of '+' helped to differentiate the two marks from a visual point of view.

Søtt + Salt claimed that the two trademarks created the same overall impression. It argued that the difference between '&' and '+' was insufficient to avoid confusion, as both symbols would be perceived as meaning 'og' (Norwegian for 'and'). Therefore, Søtt + Salt stated that its own trademark was included in its entirety in PASCAL SØTT & SALT.

Both parties agreed that the average consumer would not be misled into believing that goods bearing the two trademarks originated from the same company, but Søtt + Salt was of the opinion that a substantial number of consumers would believe that there was a commercial connection between Pascal and Søtt + Salt. This is sufficient to establish a likelihood of confusion under the act.

According to the Court of Appeal, the likelihood of confusion was increased because:

• the trademarks were registered for identical and similar goods and services; and
  
  
• both marks were likely to be pronounced 'søtt og salt'.

The minority of the court considered that the combination of the words 'søtt' and 'salt' would be perceived as a trademark. Furthermore, the minority found that the addition of 'Pascal' was insufficient to distinguish the two marks. Considering the high degree of similarity between the goods and services covered by the marks, the minority concluded that there was a likelihood of confusion between the two trademarks.

However, the majority of the court found that the word 'Pascal' was the dominant element of the trademark. The fact that Pascal had established goodwill in the market also reduced the possibility for confusion. Furthermore, the majority of the court emphasized that Søtt + Salt's trademark SØTT + SALT was not very distinctive, except for the use of the symbol '+'. The court thus found that, due to the use of this symbol, SØTT + SALT was not included in its entirety in the trademark PASCAL SØTT & SALT.

Consequently, the court found that there was no likelihood of confusion between the marks despite the fact that they covered identical and similar goods and services, and that they were likely to be pronounced in the same way.

Søtt + Salt has appealed to the Supreme Court. It remains to be seen whether the Supreme Court will allow the appeal.

Kaia Bugge Fougner and Felix Reimers, Advokatfirmaet Grette DA, Oslo