In Decision 3639 (13th February 2009) the Supreme Court found that the mark VENUS, registered for cosmetics, and the mark VENUS IV, registered for herbal laxative beverages, were confusingly similar, notwithstanding the differences in the goods and the fact that they were registered in different classes of the Nice Classification. The decision was reached following an examination of:
- the intrinsic nature of the goods;
- the respective final consumers; and
- the final destination of such goods.
The court confirmed that the fact that the goods were classified in different classes (Class 3 for cosmetics and Class 5 for laxative beverages) was irrelevant. Instead, the key factor to be considered was the degree of confusing similarity between the trademarks, which should be evaluated globally by taking into account the similarity between the respective trademarks and the goods. In the case at hand, the goods were considered to be goods of the same denomination. Herbal laxative beverages are designed to aid fitness and wellbeing, which is also the aim of cosmetic products. The court held that in this instance it was quite probable that in view of the similarity between the trademarks, the public might believe that they originated from the same company. In the course of the litigation, the owner of the later trademark (VENUS IV) argued that its registration had become indisputable due to extensive use. The court rejected this argument after seeing that no evidence had been submitted that the mark had been used over a period of at least five years, which is the minimum requirement for a trademark registration to become indisputable.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com