Interesting Decision On Confusing Similarity

• Published date: 25 January 2024
• Subject Matter: Intellectual Property, Trademark
• Law Firm: aera
• Author: Ms Louise Mühlbach Breining and Troels Stokholm

In November 2023, the Board of Appeal of Patents and Trademarks (Anken'vnet for Patenter og Varem'rker) affirmed the decision of the Danish Patent and Trademark Office, validating the assertion that the READERS. COPENHAGEN trademark was confusingly similar to the trademark *THE READERS.

Consequently, the request for invalidation of the trademark READERS. COPENHAGEN was upheld.

The pivotal factor in the decision rested on the shared characteristic of both trademarks possessing a fairly low degree of distinctiveness, with the prominent use of the word "readers" equally highlighted in each trademark:

Background of the case

In June 2022 the Respondent, a Spanish eyeglass designer company, filed for invalidation of the national trademark READERS. COPENHAGEN ('the later mark') owned by the Complainant, a Danish wholesale company selling eyeglasses. The invalidation was based on the Respondent's earlier EU trademark *THE READERS ('the earlier mark'), in which the Respondent claimed that the later mark was confusingly similar to the earlier mark.

In February 2023, after an exchange of correspondence, the Danish Patent and Trademark Office upheld the Respondent's request for invalidation of the later trademark, based on risk of confusion pursuant to article 15(2) of the Danish Trademark Act.

In particular, the Danish Patent and Trademark Office emphasized that optical goods are a generic term for, among other things, glasses, spectacle frames and sunglasses, as an optician is a professionally trained person who is characterized by manufacturing and/or fitting glasses, including sunglasses.

The Danish Patent and Trademark Office, therefore, found that there was identity between the goods for which the Respondent and the Complainant's trademarks are registered in class 9.

For a likelihood of confusion to arise between two trademarks, it is essential that both trademarks incorporate one or more distinctive elements. Generic or descriptive elements of trademarks cannot be afforded protection.

Regarding the assessment of distinctiveness, the Danish Patent and Trademark Office determined, among other factors, that even weak elements of a trademark should be considered in the assessment when the overall impression of the trademarks is similar.

With reference to this and the fact that the trademarks relate to identical goods, the Danish Patent and Trademark Office, therefore, found that there was a likelihood of confusion between the earlier trademark and the later...