In a case involving two almost identical figurative trademarks, a Swedish court has held that the overall impression created by an individual's trademark was different from that created by We Rock AB's trademark (August 14 2008).
We Rock sells clothes and sports equipment under a number of trademarks. The WE ROCK trademark was a figurative mark comprising two identical, parallel vertical bars that each curved outwards at the bottom. The edges of the bars were slightly rounded at the top but cut straight at the bottom.
We Rock initiated an action against a person (hereafter referred to as CH), claiming that a trademark that CH had registered for clothes was confusingly similar to a trademark held by We Rock. CH's trademark was practically identical to the WE ROCK trademark, with an identical graphical design and typeface. The only difference was that CH's trademark was turned upside-down and had a dot placed over the bars. We Rock sought the revocation of CH's trademark.
We Rock claimed that CH's trademark was confusingly similar to its own trademark on the grounds that:
- the marks were visually similar; and
- the goods covered by the marks were similar.
We Rock further claimed that:
- the WE ROCK trademark was well known for clothes in Sweden;
- CH, through using its trademark, benefited from the similarity of the trademarks in question; and/or
- use of CH's trademark was detrimental to the distinctiveness of the WE ROCK trademark.
In addition, We Rock claimed that CH's trademark:
- had been registered in bad faith and was misleading as to the commercial origin of the goods; and
- infringed its copyright in the WE ROCK trademark.
The Trademark Registry found that CH's trademark was not confusingly similar to We Rock's mark and ruled in favour of CH. We Rock appealed.
Given that We Rock had presented no supporting documents regarding use of the WE ROCK mark or the knowledge that the public might have of the trademark, the court determined that We Rock had not demonstrated that the WE ROCK trademark was well known for clothes at the time of registration of CH's trademark. Thus, the WE ROCK mark was not granted the wider protection afforded to well-known trademarks.
Consequently, the court had to decide whether CH's trademark was confusingly similar to the WE ROCK mark based on a regular assessment of similarity. The court first established that the figurative parts of the WE ROCK mark and CH's trademark were virtually identical. However, thanks mainly to the dot in CH's trademark and the fact that CH's trademark was upside-down, the court found that the overall impression created by CH's trademark was different from that created by the WE ROCK mark. Hence, the marks were not confusingly similar.
As the trademarks in question were found not to be confusingly similar, the court ruled that the allegations of bad-faith registration were irrelevant. The court further established that the WE ROCK mark was not protected by copyright (due to lack of originality) and, consequently, CH's trademark could not infringe the WE ROCK mark.
The decision demonstrates that small elements - in this case a dot and the positioning of the mark - can change the overall impression created by a mark and are crucial to any assessment of similarity with another mark. The ruling also demonstrates the importance of providing the court with supporting documentation and evidence in relation to the degree of recognition that the trademark in question enjoys. The effect that recognition of a trademark has on the actual assessment of similarity should not be underestimated. Had We Rock provided the court with supporting documentation demonstrating how well known its mark really is, the outcome may well have been different.
Per Eric Alvsing and Tina Hård, Advokatfirman Vinge KB, Stockholm