THOMSON LEARNING hit by opposition

In Thomson Finance SA v Thomson, a hearing officer at the Irish Trademarks Registry has upheld an opposition filed by Thomson Multimedia (Thomson) against an application to register the mark THOMSON LEARNING.

Thomson Learning Licensing Corporation, the predecessor in title to Thomson Finance SA (TF), applied to register the mark THOMSON LEARNING in Classes 9, 16 and 41 of the Nice Classification. On advertisement the mark was opposed by Thomson in reliance on its Community trademark THOMSON (stylized). At the opposition hearing, Thomson confined its grounds of opposition to those raised under Section 10 of the Trademarks Act 1996.

The hearing officer having rejected Thomson's arguments under Sections 10(3) and (4) of the act, the opposition therefore consisted of an objection under Section 10(2) (likelihood of confusion/likelihood of association).

The hearing officer first clarified that an earlier trademark is protected for all of the goods and services in respect of which it stands registered and not just those in respect of which it has been used. The goods and services that are common to both the application for registration and the earlier mark are in the nature of research, teaching and instructional materials and services, and the average consumer may be expected to exercise a fair degree of care and attention in his selection prior to purchase. These goods are not 'impulse buy' items that would be likely to be selected on the basis of a cursory glance at the brand name and a similarity between the two trademarks is therefore less likely to result in confusion than would be the case in relation to other categories of goods. However, the average consumer may still be expected to place reliance on a given trademark to assure him that the marked goods and services are of the quality and reliability that he has come to expect from a particular brand. Therefore, any confusion in the mind of the consumer as between the marks is likely to result in the diversion to TF of custom that would otherwise have gone to Thomson resulting in both direct and indirect negative consequences for the latter.

Whether such confusion is likely depends to a great degree on the essential message given to the consumer by the respective trademarks and the message is the same in respect of each (ie, that the goods and services bearing the mark are put on the market by an entity, which is identified by the name THOMSON).

When used in trademarks surnames are generally understood to refer to the name of the company whose goods or services are identified by the mark and the average consumer would take the trademark THOMSON LEARNING used in relation to the goods and services set out in the application as signifying that the products in question are educational in nature, and are put on the market by an entity known as THOMSON. To the extent that the average consumer is aware, as he must be assumed to be, of products bearing the mark THOMSON (stylized) (and therefore understood by him to emanate from an entity identified by the name THOMSON) the only assumption that he can draw from exposure to the same products bearing the trademark THOMSON LEARNING is that the products in question emanate from the same entity or, more particularly, that they are a specific line of products emanating from that entity. Such an assumption on the part of the average consumer would constitute direct confusion as between the respective goods and services of TF and Thomson. Therefore, the hearing officer decided that the opposition to registration under Section 10(2) of the act was well founded and that the application must be refused.

Patricia McGovern, P McGovern & Co Solicitors, Dublin