February 2008
idea beats IKEA in trade mark clash
Recently we bought you news of The Dental Practice who won a case brought against them by Lacoste for use of a crocodile in their logo. In another recent trade marks case, furniture giant, IKEA has lost its appeal in the Court of First Instance of the European Communities (CFI) against Walter Waibel who obtained a Community Trade Mark for “IDEA” as a figurative mark for furniture and related services.
IKEA’s main argument was that there would be a likelihood of confusion on the part of the public between the contested mark, IDEA and the earlier figurative and word marks IKEA, especially as the goods and services the two marks covered were similar. It was also argued that the earlier IKEA word mark was entitled to protection as a well known mark under the Paris Convention for the Protection of Industrial Property.
The CFI found that, despite the goods and services being identical, there was no likelihood of confusion between the IKEA mark and Mr Waibel’s IDEA mark because the marks were visually and conceptually dissimilar with only a low degree of aural similarity. The earlier Board of Appeal decision pointed out that as furniture is rarely ordered orally, the similarity in how the two words sound was not decisive. In addition, the Court relied on earlier case law that aural similarities can be counteracted by conceptual differences between marks. For this counteraction, at least one of the marks must have a clear and specific meaning that the relevant part of the public can grasp immediately. In this case, the word IDEA was deemed to meet this threshold which was sufficient to counteract any similarity between the words “idea” and IKEA.
Briffa’s Comment
This case shows that a trade mark covering similar goods and services to well-known registered marks can still be registered or defended against allegations of trade mark infringement. However, if you intend to register a trade mark over a word that sounds like another registered mark or a logo that looks similar, we strongly recommend seeking legal advice first. For registration purposes, a trade mark should be distinctive and it is best if it is not descriptive in any way of the goods or services you sell or provide which the mark will be associated with. The more similarity between a mark and an earlier mark, either visually, conceptually or aurally, the more risk there is that the owners of earlier marks will bring an action for trade mark infringement.
Under the UK Trade Marks Act 1994, a trade mark which is identical to an earlier mark and is for identical goods and services will not be registered. A trade mark which is similar or for similar goods and services as existing marks won’t be registered if it creates a likelhood of confusion on the part of the public including a likelihood of association with the earlier mark. You also need to be careful if the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community). Your mark won’t be registered if the Intellectual Property Office decides that the use of your later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.