The Market Court: CJ (figure) Is Confusable with CJ (figure) for Goods In Class 5

The Market Court issued a trademark decision 431/16 on 8 July 2016. The court ruled that the applied national trademark CJ (figure) is confusable with the earlier European Union trademark CJ (figure). Both marks are registered for goods in class 5.

Background

CJ Cor­po­ra­tion (CJC) applied to register a national trademark CJ (figure) in class 5 for the following goods:

pharmaceutical preparations; antihypertensives; medical preparations; pharmaceutical preparations for treating sensory organ disorders; nervines; chemical preparations for medical purposes; ferments for pharmaceutical purposes; pharmaceutical preparations for diagnosis; food supplements; pain relief preparations; microorganisms (cultures of -) for medical; filled first-aid kits; cotton for medical use; baby foods; lacteal flour for babies; lactose for pharmaceutical purposes; medicated diapers; insecticides; moth proof paper; veterinary preparations; protein supplements for animals; nutritional supplements for animal foodstuffs.

Application no. T201452181.

The Patent and Registration Office (PRH) denied the registration (decision 13 August 2015) because the mark is liable to be confused with an earlier European Union trademark (EUTM) registration CJ (figure, no. 5400494), registered on 29 November 2007. The EUTM CJ (figure) is registered in class 5 for pharmaceutical, veterinary and sanitary preparations; sanitary preparations for medical purposes, dietetic substances for medical purposes, foodstuffs for babies, plasters, materials for dressing, material for stopping teeth and dental wax, disinfectants, preparations for destroying vermin, fungicides and herbicides. The mark covers also various goods in class 10.

EUTM no. 5400494.

CJC filed an appeal to the Market Court against the PRH's decision.

The Market Court issued its decision 431/16 on 8 July 2016.

The Market Court

According to section 14 paragraph 1 sub-paragraph 9 of the Finnish Trademarks Act (7/1964), a trademark shall not be registered if it is liable to be confused with a European Union trademark within the meaning of section 57 that has been registered on the basis of an earlier application.

According to section 6 paragraph 1 of the Act, trade symbols shall be regarded under this Act as liable to cause confusion only if they apply to goods of identical or similar type.

The court assessed first the goods of the conflicting marks and stated that the goods are identical or at least highly similar.

The court assessed then the relevant public. The court referred to the case-law of the Court of Justice (CJ). CJ has ruled that:

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question. [See C-342/97 Lloyd, para 26.]

The appellant argued that the goods of the applied mark are mainly prescription drugs and therefore the relevant public does not have an influence on choosing the products and is not able to compare different products and confuse them. 

The court referred to the case-law of the General Court (GC):

As regards the relevant public, it is established case-law that, when the goods in question are medicines, the relevant public is composed of medical professionals, on the one hand, and patients, as the end consumers, on the other.

According to the case-law, medical professionals have a high degree of attentiveness when prescribing medicines. Moreover, with regard to end consumers, it is apparent from the case-law that, in cases where pharmaceutical products are sold without prescription, it must be assumed that those goods will be of concern to consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect where those goods affect their state of health, and that these consumers are less likely to confuse different versions of such goods. Furthermore, even assuming that a medical prescription is mandatory, consumers are likely to have a high degree of attentiveness upon prescription of the goods at issue, in the light of the fact that those goods are pharmaceutical products. Thus medicines, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect. [See T-331/09 Novartis, paras 21 and 26.]

The court stated that the relevant public has a high degree of attentiveness for these goods (prescription drugs).

However, some of the goods, regarding both marks, are daily consumer goods and the relevant public of these goods is composed of all consumers. The court stated that these goods cannot be regarded as receiving a high degree of attentiveness.

The court referred again to the case-law of GC. GC has ruled that if the goods at issue are targeted at both the general public and professionals (e.g. doctors), the relevant public consists of the general public because it is the one displaying the lower degree of attentiveness (See  T-220/09 ERGO, para. 21). [Compare with T-126/03 ALADIN, para. 81.]

Therefore, the relevant public in this case is composed of reasonably well-informed and reasonably observant and circumspect average consumers. This kind of average consumer does not have a heightened degree of attentiveness regarding the goods in question. 

It was now time to compare the two marks. The court referred again to the case-law of CJ. CJ has ruled that

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. The global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. [See C-251/95 SABEL, paras 22-23.]

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole. Although the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. [See C-20/14 BGW, paras 36-37.]

It must be stated that where a sign consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element which must always be considered to be dominant. [See T-3/04 KINJI by SPA, para 45 and T-112/06 In­ter-Ikea, para 45.]

Where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark. [T-61/15 1&1 In­ter­net, para 61.]

The court stated that the applied mark CJ slightly resembles a four-leaf clover where the word element CJ is one leaf and the blue, orange and red figurative elements are the remaining leafs. Since the word element CJ is lacking any straightforward meaning or connection to the designated goods, it can be considered as having a normal degree of distinctiveness. According to the court, the word element is the most dominant and distinctive element of the mark. However, the figurative elements are not completely insignificant.

The court stated that the earlier EUTM CJ consists of blue letter C and grey letter J and two curves. The court stated that the word element CJ can be considered as having a normal degree of distinctiveness and it is also the most dominant and distinctive element of the mark. The court emphasized again that the figurative elements are not completely insignificant.

The letter combination CJ is included in both marks. The letters also have a similar font even though the letters have different colors. According to the court, there is a rather high degree of visual similarity because the letter element is the most dominant element in both marks, despite the figurative elements in the marks.

The court stated then that the marks are aurally identical.

The court continued and stated that the conceptual similarity cannot be compared because neither the letter combination CJ nor the figurative elements have any clear conceptual meaning.

The court stated that the conflicting marks have a high degree of similarity based on the assessment above. The court concluded that the relevant public finds the marks confusingly similar.

The action was dismissed.