Confusing similarity lies at the heart of trade mark law. A trade mark application can be refused on the basis of, inter alia, a confusingly similar earlier trade mark application or registration. A trade mark registration can also be removed from the Register on the basis of a confusingly similar earlier trade mark application or registration.
The use of a trade mark can be stopped on the basis of a confusingly similar prior registered trade mark. So, let's discuss confusing similarities by considering two recent decisions, one in Japan and the other in the European Union.
JAPAN - ROGER KING
The application
Hirota Gold Incorporated applied to register the trade mark ROGER KING (stylised) in Japan in class 28 for golf clubs, golf club head covers, golf bags, golf equipment and sports equipment – the trade mark consists of the name in a slightly stylised form. The trade mark is seemingly used for golf-related goods. The application was granted (registered) on 14 April 2023 and published for post-grant opposition.
The opposition
The registration for ROGER KING (stylised) was opposed by Tenro AG, a Swiss company established by the most famous of Rogers... yes, Roger Federer. In the opposition proceedings, Federer's company relied on its international registrations for the trade marks THE ROGER and ROGER, both in class 25 covering clothing.
The opposition document claimed that consumers would associate the trade mark ROGER KING (stylised) with Roger Federer. In support of this claim, Tenro AG argued that the world's greatest tennis player (some may disagree) is often referred to as King Roger – if you are not convinced, Google the words 'Roger Federer King'. The argument was that there are similarities between the trade marks ROGER KING (stylised) and King Roger in terms of appearance, sound and meaning.
The Japan Patent Office (JPO)
The JPO dismissed the opposition. It had quite a bit to say, but in short, it held that:
- Notwithstanding any claims made by Tenro AG, Roger Federer may indeed be very well-known, but he is not known simply as Roger;
- There was no evidence or reason to believe that the cited trade marks THE ROGER and ROGER are widely recognised in Japan as a source indicator (in other words a trade mark);
- The trade marks ROGER and THE ROGER are clearly distinguishable, both visually and orally, from the trade mark ROGER KING (stylised); and
- There is unlikely to be any consumer confusion.
This must have hurt – it is rare for Roger to be blown off-court!
European Union (EU) - CHIQUITA QUEEN
The issue in this case was whether the trade marks RED QUEEN Label (depicted below) and CHIQUITA QUEEN, both for fresh fruit, are confusingly similar.
Board of Appeal (BOA) – confusingly similar
The BOA held that the trade marks RED QUEEN Label and CHIQUITA QUEEN would be confused. It considered the matter through the eyes of Spanish consumers and said that the dominant and most distinctive feature of the trade marks was the word Queen. The word 'Chiquita' means 'little girl' or plain 'little' in Spanish, whereas the word 'Red' will be understood by most Spaniards.
General Court – dissimilar
Reviewed by Gaelyn Scott, Head of ENS' IP Practice.
The General Court overruled the decision of the BOA, holding that the trade marks RED QUEEN Label and CHIQUITA QUEEN were dissimilar. It stressed that the trade mark CHIQUITA QUEEN has a reputation in the EU (and in Spain) and is therefore distinctive.
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