Traditionally, regular trademark protection, which is based on likelihood of confusion, and the broader, extended protection of well-known trademarks, have been perceived as two separate dimensions of trademark law. The emergence of the principle of characterizing force, which entails that a strong trademark is also afforded a wider scope of protection under the basic protection against likelihood of confusion has however to some extent blurred the lines between these two dimensions. On 7 March 2019, the Swedish Patent and Market Court delivered a judgment where this blurred line between the principle of characterizing force and the extended protection for wellknown trademarks became evident.
The Court stated that the applicant, which was the proprietor of the trademark ‘Timberland’, had not presented sufficient evidence, i.e. marketing surveys or market share evidence, to support the assertion that its trademark was protected as a well-known trademark. The fact that Timberland had presented extensive financial information such as sales figures was not accepted as sufficient evidence to satisfy the well-known criteria. According to the Court, the evidence presented supported however that the trademark through long and extensive use had acquired a certain strengthened protection within the framework of the concept of the likelihood of confusion. The Court held that, taking into account the strength of the trademark Timberland, there was a likelihood of confusion.
According to the Swedish Trade Marks Act, which is based on the Trade Marks Directive, a trademark may not be registered where there is an identical or similar trademark which is known within Sweden by a significant part of the relevant public, where the use involves unfair advantage of, or without due cause is detrimental to, the distinctive character or reputation of the trademark. According to CJEU, in order for a trademark to be covered by the broader well-known protection, it is required that the earlier mark is known by a significant part of the public concerned by the products or services covered by that trademark. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (see 14 September 1999, C-375/97, General Motors, ECLI:EU:C:1999:408 .).
Whether a trademark is well known by a significant part of the relevant public can be clarified through use of market surveys. Such surveys are frequently used as evidence in trademark cases. However, the evidential value thereof depends on the quality of the survey.
A trademark may not be registered when it is identical or similar to an earlier trademark registered for goods or services of the same or a similar type, where there is a risk of confusion, including the risk that usage of the symbol will lead to the belief that there is a connection between the party using the symbol and the proprietor of the mark. The assessment of the risk of confusion shall be based on the overall impression of the mark, where all relevant circumstances shall be considered, e.g. the trademarks similarity and the similarities between the goods and the services covered by the trademarks and the distinctiveness of the earlier trademark.
Facts of the case
TBL Licensing (“TBL”), the proprietor of both the word mark ‘TIMBERLAND’ and the figurative mark ‘Timberland’, used and registered in, e.g. class 25 (clothing and footwear) opposed the registration of the figurative mark ‘Timberz’ in class 25 (clothing) at the Swedish Patent and Registration Office (SPRO). However, the opposition was refused. TBL appealed the decision and claimed that the Swedish Patent and Market Court should revoke the registration of the figurative trademark Timberz.
In its opposition, TBL argued that there was a likelihood of confusion between Timberland and Timberz. TBL further contended that the trademark Timberz would take unfair advantage of and without due cause damage the distinctive character and reputation held by the trademark Timberland.
During 2017-2018, TBL had spent a large amount of money on marketing through magazines, data media and social media through collaborations with Swedish music artists and influencers. In 2018, Timberland spend in total USD 237,000 on marketing targeted towards Swedish consumers. TBL also stressed that their global marketing was, to some extent, directed to the EU and the Swedish market. This marketing had, inter alia, been in co-operation with the American basketball league (NBA) and artists such as Drake and Pharrell. Against this background, TBL primarily argued that the trademark Timberland is known among a significant part of the public concerned in Sweden. Secondly, TBL claimed that the trademark was known among a significant part of the public concerned within the EU and that a non-negligible part of the public concerned in Sweden was aware of the trademark.
Judgment by the Patent and Market Court
According to the Court, TBL had provided a relatively comprehensive investigation to support that their trademarks were known by a significant part of the relevant public. The investigation showed that TBL had made substantial investments to market their trademarks in Sweden and sold goods bearing the trademarks for high amounts. However, TBL had not presented any direct evidence of market recognition in the form of consumer-based market surveys. In addition, there was no evidence of market shares. The Court concluded that TBL had not presented sufficient evidence to demonstrate that the trademarks were well-known.
The Court went on to assess the likelihood of confusion, where it held that there was a visual and aural similarity between Timberland and Timberz, even though Timberz was shorter and had one less syllable. Furthermore, the first part of the respective trademarks, “timber”, dominated the impression and overall perception of the trademarks. In respect of the figurative trademarks, the Court concluded that the circle with a tree (Timberland) respectively the circle with the letters T and Z (Timberz) contributed to the marks’ visual similarity. The component “timber” also implied a conceptual similarity. The similarities indicated that there was a likelihood of confusion. TBL’s trademarks were also considered to have a relatively high inherent distinctiveness. The Court further stated that the investigation supported that the trademarks through long and extensive use had acquired a “strengthened protection” through the increased distinctiveness by way of the marketing efforts by Timberland. The decision by SPRO to approve registration of the figurative mark Timberz was thus set aside by the Court.
One judge disagreed with the decision by the majority and stated that both marks contain the word “timber” but that the last part of the marks substantially differed both visually and aurally. The typography of the words in the figurative marks also differed as TBL’s mark was more compressed and not formed in the more spacious way as Timberz. The pronunciation of the marks also differed due to the sounding of “Z” in Timberz. The figurative element in the trademarks were also different and placed differently relative to the words. According to the dissenting judge, these differences were such that no real risk of confusion existed and concluded that there was no obstacle to registration of the mark Timberz.
In this case, the Court underlined the importance of a market survey and evidence of market shares. Moreover, the Court applied the principle of characterizing force by giving the trademark Timberland a wide scope of protection within the concept of likelihood of confusion. This strengthened protection is on the boundary between the extended protection for well-known trademarks and the normal protection against likelihood of confusion