Difference in the goods made the difference

SEIKO watches vs Seiko canned fish ends up in court over same brand name for very different products

 

By Ramona Livera and Aylin Zeybek

The Cyprus Registrar of Intellectual Property (Registrar) delivered a reasoned decision on February 15 concerning an opposition filed in April 2013 by Seiko Holdings Kabushiki Kaisha of Japan, the registered owner of earlier ‘SEIKO’ trademarks against an application for the registration of the ‘Seiko’ trademark filed in April 2011 by Sophoco Ltd of Cyprus.

The opposition is based on earlier marks of the Respondents namely: (1) SEIKO No.09492182 covering goods and services in classes 1, 4, 7, 8, 9, 14, 15, 16, 18, 28, 35, 37, 42; (2) Community trade mark No.000521732 in classes 7 and 14; (3) SEIKO No.8865 in class 14; (4)SEIKO No 13021 in Class 9; (5) SEIKO No14423 in Class 9; (6) SEIKO No19849 in Class 14; and (7) SEIKO No 43751 in Class 9.

 

Identity/similarity of marks

Primarily, in its reasoned decision, the Registrar examined the overall impression created by the compared marks in terms of visual, aural and conceptual similarity. As regards the visual similarity, the Registrar ascertained that overall this is moderate. In relation to aural similarity the Registrar determined that both marks are phonetically the same and, in relation to conceptual similarity, the Registrar found that the overall impression is that they are very similar.

 

Identity/similarity of services/products

The Registrar proceeded to examine similarity in the goods, drawing guidance from the Judgment of the Court of Justice case number C-39/97 Canon, paragraph 23, which sets out the factors taken into account in such cases. These include the nature of the goods, their intended purpose, their use and their competitive or complementary nature.

Regarding this, the Registrar pointed out that the goods of the mark applied for all fall under Class 29, being meat, fish, poultry and game, frozen dried and cooked fruits and vegetables, jelly, jam, compote, eggs, milk and dairy products, oils and fats for food. In contrast, none of the earlier marks of the Respondents are registered under Class 29.

 

Overall impression of the risk of confusion

The Registrar considered the likelihood of confusion on the part of the public, bearing in mind the following caselaw (Case C 39/97 Canon (1998) ECR 1-0000, paragraph 29, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999]ECR 1-0000 paragraph 17), and held that likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case and in particular the distinctive and dominant components of the marks at issue.

Additionally, the Registrar took into account the fact that the average consumer’s level of attention may vary according to the category of goods or services concerned. As such, it concluded that while the visual, aural and conceptual similarity of the marks is very similar to the earlier marks, the goods are not at all similar.

Reputation

The Registrar was of the view that the Opponents failed to prove that their mark has a reputation and a physical presence in the Cypriot market. A mark is considered to have a reputation when it is known to a significant part of the public to whom the goods or services covered by the mark relate. Consequently, the Registrar concluded that there was no question of damage to any reputation of the Respondent’s mark.

 

Damage

The Registrar determined that the opposition file did not reveal evidence that the Applicant’s mark would enable them to derive an unfair advantage from the distinctive character or reputation of the earlier marks. The earlier marks are for expensive watches that the average consumer is not aware of. The watches are aimed at a specialised section of the public, whereas, the mark applied for concerns canned fish which can be found in supermarkets. Due to the very different nature of the goods, it would be almost impossible to find the corresponding goods in the same shops.

Moreover, the Registrar ascertained that there was no evidence from the Respondents to show that there is a risk of damage to the Respondent’s mark as a result of allowing the use of the Applicant’s mark. The use of the Applicant’s registered trademark does not show that there is a likelihood of detriment to the distinctive character of the Respondent’s trade mark. Neither is there a likelihood of association between the two marks, or a likelihood of confusion on the part of the public.

In addition, the Registrar determined that the Respondents did not adduce evidence to show that use of the Applicant’s mark would be likely to prove detrimental to the reputation of the Respondents’ mark. It has not been shown that there is any competition between the goods or services covered by the marks involved, and hence that there is a likelihood of harm to the reputation of the Respondent’s mark.

Finally, the Registrar ascertained that with regard to the Respondent’s claim concerning the reputation and/or distinctive character in Cyprus of the trademarks, the Applicant’s state that this does not extend to foodstuffs but to very different products, namely watches.

After taking into account the arguments of both Parties and exercising the legal principles relevant to this case as well as applying the relevant legislation and case law, the Registrar dismissed the opposition and granted the trademark application number 79214 for the registration of the ‘Seiko’ mark under class 29.

 

Ramona Livera and Aylin Zeybek are lawyers at Elias Neocleous & Co LLC