The Market Court: FUSION (Figure) Is Confusable with FRESH FUSION for Cigarettes and Tobaccos

The Market Court issued a trademark decision 429/16 on 7 July 2016. The court ruled that the applied national trademark FUSION (figure) is confusable with the earlier international trademark registration FRESH FUSION. Both marks are for cigarettes, tobaccos and other smokers' articles.

Background

Reemts­ma Ci­ga­ret­ten­fab­ri­ken GmbH (Reemtsma) applied to register a figure mark FUSION in class 36 for cigarettes, tobaccos and other smokers' articles on 29 December 2014.

Application no. T201452598.

The Patent and Registration Office (PRH) denied the registration (decision 25 August 2015) because the mark is liable to be confused with an earlier international trademark registration FRESH FUSION (no. 1155884), registered on 11 February 2013. The mark FRESH FUSION is registered in class 34 for cigarettes, tobacco, tobacco products, lighters, matches and smokers' articles. 

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

The Market Court issued its decision 429/16 on 7 July 2016.

The Market Court

According to section 14 paragraph 1 sub-paragraph 8 of the Finnish Trademarks Act (7/1964), a trademark shall not be registered if it is liable to be confused with a trademark protected by an international registration valid in Finland or the European Community that on the basis of this registration enjoys an earlier right in Finland or the European Community.

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 referred to the established case-law and stated the following: 

There is a likelihood of confusion where the public can be mistaken as to the origin of the goods or services in question.

Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case.

In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. The comparison of the goods or services should also focus on their distribution channels and their usual origin.

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 more similar the goods or services covered and the more distinctive the earlier mark, the greater will be the likelihood of confusion.

The applied mark FUSION (figure) covers the following goods in the class 34: tobacco, whether manufactured or unmanfactured; smokers' articles; tobacco substitutes (not for medical purposes); cigarettes; cigarillos; hand-operated implements for rolling cigarettes; mouthpieces for cigarette holders; cigarette filters; cigarette paper; electronic cigarettes; liquids for use in electronic cigarettes.

The earlier mark FRESH FUSION is registered in class 34 for cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles.

These goods are consequently considered identical.

The applied mark FUSION is a figure mark and it is written in capital letters. The mark has a rather usual font. The letters F and O are stylized. However, the figured elements are clearly secondary to the word "FUSION". 

The earlier mark consists of two words, "FRESH" and "FUSION". It is likely that the relevant Finnish public understands the meaning of the English word "fresh". According to the court, the word element "FRESH" describes the quality of the goods. Therefore, the word element "FUSION" is the most dominant and distinctive element of the mark.

The biggest visual and aural difference between the marks is the word "FRESH" in the earlier mark FRESH FUSION. However, as mentioned above, the word "FUSION" is the most dominant and distinctive element of that earlier mark. Therefore, the conflicting marks have a high degree of visual and aural similarity.

Both marks have the word "fusion". It is likely that the relevant Finnish public understands the meaning of the English word "fusion". The word "fusion" is the most dominant element of the mark FRESH FUSION. Therefore, there is a very high degree of conceptual similarity.

The conflicting marks have identical goods. Furthermore, the marks have a visual, aural and conceptual similarity. The court concluded that the applied mark FUSION (figure) is confusable with the earlier mark FRESH FUSION.  

The action was dismissed.