The trade mark Pascal was registered in 2004. In 2005 the owner applied for the trade mark Pascal Søtt & Salt (Pascal Sweet & Salty) for restaurant services in class 43.
An opposition was filed against Pascal's application, based on the prior trade mark Søtt + Salt, but the opposition was rejected.
In the subsequent lawsuit the District Court ruled in favour of the opponent, and the applicant appealed. The Court of Appeal held that Pascal was the dominant element of the subject mark, and that Pascal's reputation further reduced the likelihood of confusion. The opponent then appealed to the Supreme Court.
The Supreme Court's findings
The Court agreed that the Pascal element was the dominant one of the younger mark and that the Søtt & Salt element was "visually subdominant".
The Court then quoted the judgment of the ECJ in case C-120/04 Thomson Life, which states that the finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark. That would deprive the earlier mark of the exclusive rights conferred by Article 5(1) of the directive. This holds true where the earlier mark has an independent distinctive role in the composite mark.
The majority (four out of five judges) then stated that the expression "sweet and salty" was distinctive for the services in question. It concluded that the element "Søtt & Salt" played an independent role in the younger mark, and that it could not be excluded that many of the relevant consumers therefore would believe that the two companies were economically linked.
The minority (one judge) held that since the registration of the mark Søtt + Salt was valid, the sum of the parts must be distinctive. However, in his opinion "sweet" and "salty" were both devoid of distinctive character for the services, and it was only the use of the mathematical sign "+" that ensured that the mark was distinctive overall. The degree of inherent distinctive character was therefore low, and the mark should consequently be afforded only a very narrow scope of protection.
After this decision, even marks of very low distinctive character are protected against marks with completely different dominant elements but also including the exact or virtually exact prior mark.
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| Steinar Lie |
Bryn Aarflot AS
Kongens gate 15
PO Box 449 Sentrum
NO-0104 Oslo, Norway
Tel: +47 46 90 30 00
Fax: +47 22 00 31 31
mailto@baa.no
www.brynaarflot.com