Slight differences between acronyms sufficient to avoid confusion

Switzerland

The Swiss Federal Administrative Court has rejected an opposition by the owner of the earlier registered trademark ETI against the registration of the mark E.B.I. (Case B-3030/2010, November 2 2010).

Both marks were acronyms. The owner of the earlier ETI mark was an automobile association that offered car insurance services, while the applicant sought to register the E.B.I. mark for insurance and financial services in Classes 36 of the Nice Classification.

The Swiss Federal Institute of Intellectual Property (IGE) upheld the opposition, and the applicant appealed. The Swiss Federal Administrative Court reversed the decision of the IGE and upheld the appeal, finding that the marks were not confusingly similar.

First, the court sought to define the consumers for whom the services in question were intended. Both parties agreed that the two trademarks targeted the average consumer. Therefore, the court found that the relevant public would not pay a particularly high degree of attention when buying the services at issue.

The court further held that the term 'ETI' had no particular meaning in relation to the services for which the mark was registered. The owner of the ETI mark was of the opinion that its mark should have a greater scope of protection due to the fact that:

  • the mark had been in use for a long time;
  • a large number of insurance policies had been sold under the mark; and
  • the mark had been given extensive publicity.

However, the documents on which the opposition was based were insufficient to establish that the ETI mark had acquired a high degree of distinctiveness. Therefore, the court held that ETI had only an average degree of distinctiveness.

The court then examined whether the marks were similar according to the usual test - namely:

  • phonetic (acoustic) similarity;
  • graphic (visual) similarity; and
  • semantic (conceptual) similarity.

Phonetically, the court found that ETI was shorter than E.B.I. Further, the consonant 'B' was considerably softer than the letter 'T'. In short words, such differences must be considered to be important. Turning to the graphic similarity, the court found that E.B.I., having six characters (three letters and three dots), appeared more 'aerated' than ETI, which had only three characters. The three dots in E.B.I. clearly indicated that the mark is an acronym. Morever, the letter 'B' in E.B.I. had 'rounded lines', while the letter 'T' in ETI was more 'angular'. Since the two marks had no particular meaning, the court disregarded the conceptual similarity.

The court concluded that the two trademarks differed phonetically and graphically. Therefore, there was no danger of confusion among the public.

Peter Heinrich, Streichenberg Attorneys at Law, Zurich

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