For those of you who speak Italian, you will undoubtedly know that LEGNOLAND means “land of wood”. Whilst LEGOLAND doesn’t necessarily mean “land of plastic”, it’s not far off. So, on that basis, I think I’ll stick to the woods.
However, the EU Intellectual Property Office (“EUIPO”) recently decided that the average consumer when seeing the mark LEGNOLAND wouldn’t think of campfires, tents and roasted marshmallows and would instead be ushering their kids into the car with expectations of meeting a lot of people dressed up as yellow Michelin Men. More specifically the EUIPO decided that the English and Danish speaking public wouldn’t be able to successfully translate LAGNOLAND and would instead confuse if with both LEGO, the toy, and LEGOLAND, the theme park.
When comparing marks and assessing confusion the EUIPO (and indeed the UKIPO) considers three overarching factors. Are they visually similar, are they aurally similar and are they conceptually similar?
Visually, the marks are clearly very similar, and it’s only the additional letter ‘N’ which differentiates the words. It follows then that aurally they’re also very similar. Finally, with regards to a conceptual comparison, although LEGNOLAND does have a specific meaning to Italian consumers, that’s not true of most of the EU, a large part of which speaks either English or Danish. On that basis there is no conceptual comparison because LEGNOLAND doesn’t have a conceptual meaning that would be readily understood.
This comparison of the marks coupled with the fact that LEGNOLAND sought to protection for toys (i.e. identical goods to those covered by LEGO and LEGOLAND) meant that there was a likelihood of confusion and the application was refused.
This is another example, if ever one were needed, that the average consumer is extremely relevant to a confusion test. It also reminds us that when applying for trade marks overseas, great care needs to be taken in understanding how they will be interpreted locally and whether this might give rise to a third party opposition.
Fortunately however Briffa is on hand to help with this. Our network of international associates allows us to register trade marks anywhere in the world. So, if you can’t see the wood for the tress, get in touch be emailing firstname.lastname@example.org.
Written by Will Miles, Partner