We would like to ensure that you are still receiving content that you find useful – please confirm that you would like to continue to receive ILO newsletters.
27 October 2008
We Rock AB sells clothes and sports equipment under a number of trademarks. We Rock initiated an action against a person (CH), claiming that a trademark that CH had registered for clothes was confusingly similar to a trademark held by We Rock. We Rock claimed that the CH trademark should be revoked.
The WE ROCK trademark was a figurative mark comprised of two identical, parallel vertical bars that each curved outwards at the bottom. The edges of the bars were slightly rounded at the top but cut straight at the bottom.
The CH trademark was practically identical to the WE ROCK trademark, with an identical graphical design and typeface. The only difference was that the CH trademark was turned upside-down and had a dot placed over the bars.
We Rock claimed that the CH trademark was confusingly similar due to the similarity in shape as well as the similarity in goods (clothes). We Rock further claimed that the WE ROCK trademark was well known for clothes in Sweden and that CH, through using its trademark, benefited from the similarity of the trademarks in question, and/or that the use of the CH trademark was detrimental to the distinctiveness of the WE ROCK trademark. We Rock further claimed that that the CH trademark had been registered in bad faith and was misleading as to commercial origin, and further that the CH trademark infringed its copyright in the WE ROCK trademark. The Trademark Registry found that the CH trademark was not confusingly similar and ruled in favour of CH.
Given that We Rock had presented no supporting documents regarding use of the WE ROCK trademark or the knowledge that the public might have of the trademark, the court determined that We Rock had not demonstrated that the WE ROCK trademark was well known for clothes at the time of registration of the CH trademark. Thus, the WE ROCK trademark was not granted the wider protection given to well-known trademarks.
Consequently, the court had to decide whether the CH trademark was confusingly similar to the WE ROCK trademark based on a regular assessment - that is, based on similarity in appearance and goods. The court first established that the figurative parts of the WE ROCK trademark and the CH trademark were virtually identical. However, thanks mainly to the dot in the CH trademark and the fact that the CH trademark was upside-down, the court found that the overall impression created by the CH trademark was different from that created by the WE ROCK trademark and hence that the marks were not confusingly similar.
As the trademarks in questions were found not to be confusingly similar, the court ruled that the allegations of CH's bad-faith registration were irrelevant. The court further established that the WE ROCK trademark was not protected by copyright (due to lack of originality) and thus the CH trademark could not infringe the WE ROCK trademark.
The decision demonstrates that small elements - in this case a dot and the positioning of the mark - can change the overall impression created by the mark and are crucial to any assessment of similarity with another mark. The ruling also demonstrates the importance of providing the court with supporting documentation and evidence in relation to the degree of recognition the trademark in question enjoys. The effect that recognition of a trademark has on the actual assessment of similarity should not be underestimated. Had We Rock provided the court with supporting documentation demonstrating how well known its mark really is, the outcome may well have been different.
For further information on this topic please contact Per Eric Alvsing or Tina Hård at Advokatfirman Vinge KB by telephone (+46 8 614 30 00) or by fax (+46 8 614 31 90) or by email (email@example.com or firstname.lastname@example.org).
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
ILO is a premium online legal update service for major companies and law firms worldwide. In-house corporate counsel and other users of legal services, as well as law firm partners, qualify for a free subscription.
Per Eric Alvsing