No less than six recent Euro/US cases focused on when a registered trade mark is infringed by a ‘similar’ brand. In the ring were T-Online/E! Online, Starbucks/Charbucks, Cerfix/Perfix, BEAM/BEMA, VOV and VO5 and MKX/MDX. Can you guess which ones were too close for comfort and spot the odd one out?
Who: Deutsche Telecom v E! Entertainment Television Inc/Starbucks v Wolfe's Borough Coffee Inc/Fernando Rodrigues Carvalhais v Ohim/Bayer A.G. v Makhteshim Agan/Alberto-Culver Company v Vov Cosmetics Co Limited/Ford v Honda
Where: England, New York, Alicante
When: January-February 2006
In six recent cases in Europe and North America, the same question has arisen for judgment. That question is whether a registered trademark is infringed by a "similar" brand used by a competitor.
T-online v E!Online
In Deutsche Telecom ("DT") v E! Entertainment Television Inc, DT appealed in Chancery against the rejection of its challenge to the registration of the trademark E!ONLINE by cable channel E! Entertainment Television.
DT had three earlier registrations of the trademark T-ONLINE. It argued that the goods and services in question were similar and that E!ONLINE and T-ONLINE were so similar as to create a likelihood of confusion or association. This is the test that must be applied when determining whether similar marks registered or to be registered in similar classes are infringingly similar.
The UK Trade Mark Registry officer had previously discounted the word "ONLINE" as a factor in determining similarity. He felt that these days "online" would have very little distinctive character and the average consumer would simply take it to be referring to the type and availability of goods and services, not to their source. As a result, he felt that punters would focus on the first elements of the marks, ("T" and "E!") which were not in his view confusingly similar. The Judge agreed and DT's opposition was dismissed.
Starbucks v Charbucks
In the US District Court for the Southern District of New York, the Starbucks coffee chain alleged trademark infringement against Wolfe's Borough Coffee, Inc over their sales of CHARBUCKS Coffee since 1997.
In its defence Wolfe's admitted that it chose the CHARBUCKS name to help its profile. Despite this, the court was not persuaded that there was an actionable likelihood of consumer confusion between STARBUCKS and CHARBUCKS. The respective brands' logos were quite different and although the two brands rhymed, the Charbucks brand was clearly a sub-brand sold under the "Black Bear" logo. The packaging too was altogether different in imagery, colour and format.
Perfix v Cerfix
In this case, the Community Trade Mark Court of First Instance in Alicante grappled with the question of whether the owners of the trademark CERFIX, registered as a CTM in classes 6 (metal objects), 17 (plastics) and 19 (non-metallic building materials) could stand in the way of an application by a competitor to register PERFIX.
Here the court did feel that there was a material likelihood of confusion. Having looked at the marketplace for the relevant products, it was satisfied that they were bought by oral request and as a result, the strong phonetic similarity between CERFIX and PERFIX was enough to create a risk of confusion which the visual differences between the marks did not dispel. Accordingly CERFIX successfully baulked PERFIX.
BEAM v BEMA
In the case of Bayer A.G. against Makhteshim Agan, Bayer A.G. owned the registered trademark BEAM and applied for a declaration of invalidity in relation to the trademark BEMA, registered in respect of identical goods.
The Trade Mark Registrar felt the two marks were too close for comfort. Visually the marks were clearly similar, both began with identical sounds (although ending differently) so orally they were closely similar. On balance, these similarities outweighed the differences and as identical goods were involved, there was held to be a likelihood of confusion, so the BEMA registration was declared invalid.
VO5 v VOV
Also before the UK Trade Mark Registrar, haircare product maker Alberto-Culver ("AC") opposed an application by competitor Vov Cosmetics to register the mark VOV for haircare products.
AC argued that VOV was confusingly similar to its UK and Community registered trade marks for VO5. AC also submitted in the alternative that use of the VOV brand would take unfair advantage of or be detrimental to the distinctive character or repute of the VO5 marks as well as amounting to an actionable passing off. This "detriment to distinctive character" line of attack can be used even if the mark under attack is to be registered for quite different goods or services. It is only available, however, to brands that have a "reputation".
The Registrar rejected all AC's objections and allowed the VOV application to proceed. Although VO5 and VOV started with the same letters, the difference in the final character was significant in the Registrar's view and made the marks quite different visually, orally and conceptually.
Also, the VOV brand as registered was also a composite consisting of the letters VOV on a black on white/white on black background. This also differentiated it from VO5.
So far as the argument on detriment to the character of VO5 was concerned, the Registrar said AC had to show that the average consumer would make an association between the marks and the association would be such that VOV would gain some advantage for its own mark or cause detriment to the distinctive character of VO5. On the evidence in front of him, there was no plausible basis for such a finding.
MDX v MKX
Our last case is the odd one out since no verdict has yet been reached. The action is taking place in America, where Honda Motor Co has filed suit for trademark infringement in the Federal Court of Los Angeles against Ford Motor Co.
The cause of the problem is Ford's new Lincoln MKX Sport-Utility Vehicle. Honda argues that the MKX mark is far too close to its registered trademark MDX, used in connection with its "sport ute," the Acura. Our sources tell us that a settlement is likely, but this appears to be the start of a new trend in the US motor industry, Nissan having previously sued Audi over Audi's use of the letter Q for its Q7 and Q5 "sport utes", following Nissan's own "Q" Infiniti sub-sub-brand.
Why this matters:
These cases underline the numerous issues that are taken into account when determining the critical question of similarity between brands. With scope for selection of a totally unique brand severely limited in the 21st century, such disputes are not going to become rarer and advice should always be taken before adopting a brand which is any way similar, whether in appearance or sound, whether at the beginning or at the end.