On October 29, 2013 Division 2 of the Federal Court of Appeals in Civil and Commercial Matters confirmed the district court decision that had dismissed the complaint seeking to remove the opposition filed against the trademark application “M MIKAH XI” for all goods comprised in International Class 25, on the basis of the trademark “MICA”, also registered in Class 25 (“Crivelli, Luis Ernesto Paul v. Ini, Eduardo”, case No. 970/2007).
Before getting into the specifics of the case, the Court recalled the general likelihood of confusion factors: a) the similarities between the marks will prevail over their differences; b) it will be enough if confusion arises in one of the three classic areas of analysis –appearance, sound or meaning– to reject the application; c) in case of doubt, courts must always favor registered trademarks over pending applications; d) the spontaneous impression created by the marks involved is of great value to decide likelihood of confusion issues.
Then the Court went on to compare these two trademarks: http://www.marval.com.ar/archive/a_newsletters/ip_5_2014_en.jpg taking into account only the words “MICA” and “MIKAH”, as letters “M” and “XI” in the application were placed at the beginning of the logo and were phonetically irrelevant. The Court concluded that the marks were obviously confusingly similar because they clearly caused a similar impression, in view of the various elements in common.
In this regard, the Court recalled the old rule according to which when the marks at stake share many elements, either at the beginning or at the end, then the dissimilar element must be strong enough to pass on its distinctiveness to the whole, so that one mark will not be reminiscent of the other.
The Court found that the marks were confusingly similar and also pointed out that plaintiff/applicant had failed to prove that the word “mica” was of common use, as the Argentine Trademark Office had reported that there were only two registrations with said term.