Likelihood of confusion despite low degree of distinctiveness

In this case,( 1) an operation to register the trademark TANDLÄKARGRUPPEN ODENPLAN was refused due to the before registered company name Tandläkarhuset Odenplan AB, notwithstanding the low degree of distinctness in the trademark rudiments of both marks(" tandläkar-" means" dentist" and" Odenplan" is the position of both businesses). 

 

 The Patent and Market Court( PMC) emphasised that it isn't possible to draw a general conclusion that descriptive rudiments of signs should be barred from an assessment of similarity. Since the signs at issue comported of incompletely identical words in an identical order, the PMC concluded that a liability of confusion was between the signs. 

This outgrowth differs from several recent Swedish court judgments in which the courts( videlicet, the PMC and the Patent and Market Court of Appeal( PMCA)) had concluded that no liability of confusion was due to the presence of descriptive rudiments.

Data 

 

 In July 2020, a company applied to register the word mark TANDLÄKARGRUPPEN ODENPLAN for colorful dental services in class 44. 

The company Tandläkarhuset Odenplan AB filed an opposition grounded on its earlier registered company name, also covering dental services. The Swedish Patent and Registration Office( PRV) set up that the company name Tandläkarhuset Odenplan AB enjoyed a normal degree of essential distinctness. In its assessment of the liability of confusion, the PRV set up that the services were identical and that the marks were conceptually analogous to a high degree. The PRV thus concluded that there was a liability of confusion between the signs at issue. 

 

 The decision was appealed to the PMC. 

 Decision 

 

 The PMC originally verified that the relative grounds for turndown of trademarks apply to company names as well – that is, a Swedish company name enrollment could help a analogous sign from being registered as a trademark and vice versa(cross-protection). 

The PMC also appertained to European Court of Justice case law, which states that a global appreciation of the visual, audial or abstract similarity of the signs in question must be grounded on the overall print given by the marks, bearing in mind their distinctive and dominant factors. Further, the average consumer typically perceives a mark as a whole and doesn't do to assay its colorful details. 

 

 The PMC also stated that whether the descriptive rudiments of a sign are to be barred from the assessment of similarity must be determined on a case- by- case base. 

 Moving on to the comparison of the signs, the PMC held that the earlier sign, Tandläkarhuset Odenplan AB, is a combination of the Swedish words" tandläkare"(" dentist") and" hus"(" house"). The word" Odenplan" is a geographical place in Stockholm. These words couldn't be neglected anyhow of whether they're descriptive. The term AB, short for" Aktiebolag"(" common stock company"), could, still, be neglected. 

 

 Contrary to the PRV's assessment, the PMC held that Tandläkarhuset Odenplan AB enjoyed lower than a normal degree of distinctness, taking into account the descriptive rudiments in the company name. 

The queried trademark, TANDLÄKARGRUPPEN ODENPLAN, also comported of the terms" tandläkare" and" Odenplan" and constituted a normal structure of words in Swedish. The words" tandläkar-" and" Odenplan" couldn't be neglected. 

 

 likewise, the PMC set up the similarity between the signs to be enhanced because 

they participated identical words; 

 the order in which the words were presented was the same; and 

 the construction of the signs was the same. 

 With regard to the comparison of services, the PMC held that the services were identical. 


 Taking all of the over into consideration, the PMC concluded that there was a liability of confusion between the company name and the trademark. 

 

 Comment 


 The decision basically confirms that a liability of confusion is at hand when the signs are identical and/ or largely analogous( eg, the words are in same order). Of course, the outgrowth depends on the specific circumstances of each case. 

 

 This decision may appear reasonable considering the parallels between the trademarks. The company name Tandläkarhuset Odenplan AB and the trademark TANDLÄKARGRUPPEN ODENPLAN participated two words and were presented in the same order. Taking into account the PMC's logic, the outgrowth presumably would have been different if the queried trademark had included, for illustration, a different geographical place( eg, TANDLÄKARGRUPPEN KARLAPLAN). 


 On the other hand, it may be questioned whether this type of largely descriptive sign should really be eligible for protection. 

 

 In a recent Swedish judgement,( 3) the PMCA reached a different conclusion than in the case at issue, chancing that there was no liability of confusion between CURA OF SWEDEN and CARE OF SWEDEN. In that case, the PMCA set up that" cura" and" care" were the most distinctive rudiments in each sign. Although only one letter was different between the trademarks, they weren't considered confusingly analogous. It should also be mentioned that the goods covered by the trademarks in that case were considered largely analogous, which differs from the case at issue, in which the services were identical. With the Cura case in mind, it can be concluded that there's a veritably fine line when determining the liability of confusion of trademarks that enjoy a low degree of distinctness.