A trademark application No 2017709487 was filed by Young Living Essential Oils, a US company on March 16 2017 in respect of Class 3.
The designation consisted of the word "thieves" written in standard font. The patent office allowed registration in respect of part of the goods in Class 3. The patent office explained its decision stating that the claimed designation could not be registered in respect of the remaining part of the goods in Class 3 because it was confusingly similar to a combined trademark No 601313 with priority of February 9 2016 registered in the name "Azbuka" Ltd.
That trademark had also been registered for similar goods in Class 3. Comparative analysis showed that the claimed designation formed a part of the already-registered trademark, in which the basic original element was the word "thieves", while the element "candy" was a weak element. Furthermore, the goods under comparison were interrelated: they had the same functional purpose and channels of distribution.
The applicant appealed the decision of the patent office on December 17 2018. He argued that the claimed designation was refused registration in respect of the goods in Class 3, viz. cosmetics, liquid soap, shaving products. The compared designations were different in all three criteria. The claimed designation is pronounced as "theevz" (one syllable, four sounds) while the word elements of the cited trademark are pronounced as "can-dee theevz" (three syllables, nine sounds). The word "candy" is a semantic difference in combination with the word thieves while the claimed designation has a wider meaning. There are also visual differences. Both designations produce a different visual impression because the claimed designation is a simple word while the cited designation is combined and has a bright composition.
The owner of the cited designation presented a letter of consent in respect of the whole list of goods in Class 3.
Relying on the above arguments, the applicant asked the patent office to register the claimed designation in respect of all goods in Class 3. These arguments convinced the patent office. It cited a number of legal provisions in support of its decision and especially noted that registration of a trademark in respect of similar goods is allowed only if the owner of the earlier trademark agrees to it and if such registration will not mislead the consumer. If consent is given by the earlier trademark owner it cannot be retracted.
The patent office noted that the designations are not identical: there is the word "candy" in the cited trademark and the trademark includes a graphical composition consisting of a stylised picture of a candy.
It also follows from the documents on file that the fields of business of the applicant and of the owner of the cited trademark are different: one produces essential oils and mixtures of essential oils (see https://www.youngliving.com) while another produces electronic games, mobile game applications (see https://play.google.com/).
Thus, the documents on file confirm that the consumer will not be misled with regard to the producer of goods.
The fact that the owner of the cited trademark gave a letter of consent confirms that he himself does not foresee confusion on the part of the consumer. Considering that the goods are different and consent of was given, the board of examiners allowed registration of the claimed designation in Class 3.
It should be noted that a letter of consent introduced in the law several years ago proved to be a very useful instrument to overcome refusal of registration. Perhaps 50% or more refusals of registration are prevented by letters of consent granted by the owners of cited trademarks.
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