Registration of foreign word gives no rights in English equivalent

Australia

In Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd, the Federal Court of Australia has dismissed an opposition action filed by the owner of the well-known CLINIQUE mark against the registration of LA CLINICA.

Luxury Skin Care Brands (LSCB) applied to register the mark LA CLINICA for goods in Classes 3 and 42 of the Nice Classification. Clinique Laboratories opposed this application on the grounds that it was deceptively similar to its CLINIQUE mark registered for similar goods. The word 'clinique' is French for 'clinic' or the adjective 'clinical', whereas 'clinica' means 'clinic' in both Spanish and Italian.

The Federal Court dismissed the opposition. It held that there was no deceptive similarity between the two marks. The only visual similarity was between the first part of the words 'clinique' and 'clinica'. The court noted that LSCB's mark included the additional visual and aural element 'la' as part of a composite phrase. The layout and other features of the marks were also different. The court found that the sounds of the words were unlikely to cause confusion. LA CLINICA would be perceived as an Italian or Spanish phrase and CLINIQUE as a French word.

As for the association of ideas between the words - that is, the English word 'clinic' - each word might be said to conjure up an association with a beauty or health clinic (considering the classes of products). However, the court stated that just because the marks may convey the same idea, this does not necessarily create a deceptive resemblance between them. Registering or gaining a reputation in a foreign version of an ordinary English word does not amount to registration of, or reputation in, that English word or all foreign equivalents of it.

The court concluded that even if the creator of the LA CLINICA trademark knew of the CLINIQUE mark and perceived some advantage from an association with it, any such advantage would not be the result of deceptive similarity between the marks but, rather, the association of ideas based upon the English word 'clinic'.

There are important lessons arising from this decision, not only for applicants and opponents, but also for the registrar of trademarks and his examiners, regarding the fundamental nature of a trademark as a sign, which is to be distinguished from the associations which may be conjured up, usually indirectly, from it. Too often, these days, the registrar seems to object to an application based upon such associations, sometimes remote and improbable, rather than the physical presentation of the mark itself. The court's decision appears to be a call to order in respect of this issue.

Julian Gyngell, Clayton Utz, Sydney

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