Case Overview: Rejected Trademark Application – TANDLÄKARGRUPPEN ODENPLAN
An application to register the trademark TANDLÄKARGRUPPEN ODENPLAN was rejected due to a pre-existing company name, Tandläkarhuset Odenplan AB. Despite both entities sharing elements like “tandläkar-” (meaning “dentist”) and “Odenplan” (the location of both businesses), the Patent and Market Court (PMC) noted a lack of distinctiveness in the trademarks’ fundamentals.
The PMC emphasized the inability to generalize that descriptive elements of signs should be excluded from similarity assessments. Identifying partially identical words in the same sequence between the marks, the PMC concluded a likelihood of confusion.
This ruling contrasts previous Swedish court judgments where courts (including the PMC and the Patent and Market Court of Appeal) found no confusion due to descriptive elements.
In July 2020, an entity sought to register TANDLÄKARGRUPPEN ODENPLAN for dental services (class 44). Opposition came from Tandläkarhuset Odenplan AB, citing its earlier registered company name encompassing dental services. The Swedish Patent and Registration Office (PRV) found similarities in services and conceptual likeness between the marks, resulting in perceived confusion.
PMC’s Decision and Analysis
The PMC verified that grounds for trademark refusal apply to company names, acknowledging cross-protection. Referring to European Court of Justice case law, it stressed assessing overall similarity rather than dissecting colorful details. Determining whether descriptive elements impact similarity was considered on a case-by-case basis.
Examining the signs, the PMC considered “Tandläkarhuset Odenplan AB” as a combination of descriptive terms with “AB” being the only dismissible element. Contrary to PRV’s assessment, the PMC found lower distinctiveness due to descriptive elements.
Similarly, “TANDLÄKARGRUPPEN ODENPLAN” comprised descriptive terms, and the PMC emphasized enhanced similarity due to identical words, order, and structure. Services were deemed identical, leading to the conclusion of confusion between the company name and trademark.
Conclusion and Commentary
This decision reaffirms confusion likelihood when signs are identical or significantly similar (e.g., in word order). Context remains pivotal in each case. While the ruling aligns with similarities between the trademarks, it raises questions on the eligibility of such descriptive signs, particularly in the realm of Trademark Registration in Pakistan, for protection.
In a recent judgment, the PMCA diverged, finding no confusion between “CURA OF SWEDEN” and “CARE OF SWEDEN.” Despite slight differences, distinctiveness played a crucial role. This emphasizes the fine line in determining confusion for trademarks with low distinctiveness.