FRIDAY, 19 APRIL 2013
Greece: Not easy being 'izzy'
The Athens First Instance Administrative Court was recently called upon to rule on the ever-trendig issues of (a) the degree of influence of device elements in assessing confusing similarity of compound marks, where the word elements thereof present strong similarity, and (b) the additional variant of similarity of products/services of the conflicting marks.
Wind Hellas (Tellas at the time of the application), sought to register in Greece the mark below (which reads IZI by Tellas / VIDEO / PHONE / IMAGES FROM THE FUTURE) in connection with video telephone devices in Class 9 and video telephone services in Class 38.
Benroubi SA, owner of the earlier Greek TMs below, in connection with various goods in Classes 7,8,9,10,11 and telecommunication services in Class 38, filed an intervention action (a sort of ‘early bird’ opposition action, available under the previous Greek TM law regime).
However, neither the Trademarks Administrative Committee not the administrative court accepted its arguments.
It was held that the dominant feature of the mark applied for was its dark orange circular device(which you can see in a similar mark here), which created a different overall impression in comparison with the device elements of the earlier trademarks, comprising tangent circles. This blogger finds it hard to agree with this finding, but understands, and finds more important, the rest of the court’s reasoning which refers to the word elements of the marks. The court, as regards the similarity of the words 'izi' and 'izzy', held that (i) 'izi' was not the only word contained in the mark applied for, (ii) 'izi' did not have any particular meaning/ , was not established in the Greek vocabulary and was not widely known. The court also appreciated that the mark applied for includes the distinctive title of the (then) applicant (i.e. the words “by Tellas”). The court finally ruled that the consumers to whom the goods and services of the mark applied for were addressed were sufficiently specialized and reasonably well-informed, a fact that would avert risk of confusion.
The court also dealt with a civil infringement ‘twist’ of the dispute. Interestingly enough, Benroubis had secured a preliminary injunction against use of the ‘izi’ mark. The court held that the said judgment does not influence its ruling, as it was limited to a finding of confusing similarity between the relevant word marks (izi and izzy).
This blogger thinks you can probably argue for both sides of the dispute and certainly deconstruct the judgment with little effort, if you are in a bit of a vitriolic mood. A glance at the marks would probably leave the consumer with two key elements in ‘recollection’, circles and the word izi or izzy. The “by Tellas” indication is as much an argument against confusion (or better yet association) as it is in favour (i.e. it could point to a commercial link), whereas the video and phone indications are but descriptive and the ‘images from the future’ slogan is not really distincitve.
That being said one cannot forget that comparison of the marks requires a holistic approach and cannot be restricted to their dominant elements. Thus, a good number of accompanying elements may just exclude confusing similarity.
This blogger wonders what
courts in other jurisdictions might have thought of this.
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