ZEN decision appears self-contradictory
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In Hp Health Clubs Iberia SA v Shiseido Company Limited (Opposition B 1 222 837, January 22 2010), the Opposition Division of the Office for Harmonization in the Internal Market has held that there was no likelihood of confusion between the marks ZEN and ZENSATIONS.
On March 22 2007 Spanish company Hp Health Clubs Iberia SA filed an application for the registration of the word and device mark ZENSATIONS as a Community trademark in Classes 35 ("commercial retailing of soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices") and 44 ("health services, balneotherapy, aromatherapy and massages; beauty and hairdressing salons") of the Nice Classification. The mark consisted of a circle containing different shades of red, followed by the verbal element 'zensations'. The word 'zen' in the verbal element was emphasized due to its slightly stylized bold font and dark red colour.
Japanese company Shisheido Company Limited lodged an opposition on the basis of its earlier Community trademark ZEN for goods and services in Classes 3, 21 and 44 (including "soaps; perfumery, eau de cologne, toilet water" and "beauty salons").
The Opposition Division first found that the products and services covered by the marks were partly identical and partly similar. However, it held that the marks were dissimilar.
Visually, the Opposition Division considered that the marks differed in length, colour and layout. Aurally, it found that the marks coincided in the sound 'zen', but had a different overall rhythm and intonation. However, in light of the fact that the sounds of the earlier mark were entirely reproduced in the verbal element of the mark applied for, the Opposition Division found that the marks were similar to a low degree.
Conceptually, the Opposition Division held that the marks were similar because they shared the concept of 'zen'. In particular, it pointed out that the word 'zen' was internationally known, used and understood as the philosophy of “a Japanese school, of 12th-century Chinese origin, teaching that contemplation of one’s essential nature to the exclusion of all else is the only way of achieving pure enlightenment”.The Opposition Division further stated that the word 'zen' would be expected to be grasped by the relevant public in the mark applied for due to its outstanding appearance.
Turning to the global assessment of the marks, the Opposition Division pointed out that the meaning of the word 'zen' had no direct relation to the goods and services at hand, so that the distinctiveness of Shisheido's mark had to be considered as normal. However, the aural and conceptual similarities between the marks lay in the element 'zen', which comprised only three out of ten letters of the mark applied for. Therefore, those similarities were insufficient to counteract the strong visual and aural differences produced by the ending 'sations' of the mark applied for. The Opposition Division thus concluded that there was no likelihood of confusion on the part of the public.
The decision appears to be self-contradictory. The Opposition Division correctly found that the marks were aurally similar to a low degree and conceptually similar. Therefore, one may wonder why it concluded that the marks were dissimilar, especially as some of the products and services at issue were identical or highly similar. Moreover, the word 'zen' in the mark applied for is striking from a visual and conceptual point of view. Therefore, ZENSATIONS could have been regarded as a declension of the earlier mark.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris
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