Intellectual Property and IT Insights

12 March 2004

Foreign language marks and deceptive similarity

By Julian Gyngell.

Key Points:
There is a fundamental difference between the trade mark as a sign, and the associations which may be conjured up, usually indirectly, from it.

There are many words in various European languages which, because of a shared origin, might look or sound similar. The dispute in Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd [2003] FCA 1517 (19 December 2003) grappled with the problem of different marks in two different European languages and what they conveyed to an English speaker.

An application was made for registration of the mark “La Clinica” for classes 3 (soaps etc) and 42 (day spas etc). Clinique Laboratories opposed this application on the ground, amongst others, that it was deceptively similar to its well-known “Clinique” mark, registered in nine classes in respect of similar goods. The word “clinique” is, of course, a French noun meaning “clinic” or an adjective “clinical”, whereas “clinica” may be either a Spanish or an Italian noun meaning “clinic”.

Opposition to an application for registration of a trade mark on the ground that the mark applied for is deceptively similar to another in respect of similar goods or closely related services. This is a highly subjective ground and depends to a large extent upon impression.

The court held that there was no deceptive similarity between the two marks. The only visual similarity was between the first part of the words ‘Clinique’ and ‘Clinica’, and the Luxury Skin Care Brands mark the subject of the application included an additional visual and aural element ‘La’ as part of a composite phrase. The layout and other features of the marks were different. Neither were the sounds of the words held to be likely to cause confusion. ‘La Clinica’ would be perceived as an Italian or Spanish phrase and ‘Clinique’ as a French word.

As for the association of ideas between the words - that is, the English word ‘clinic’ - each word might be said to conjure up an association with a beauty or health clinic (considering the classes of products). Just because the marks may convey the same idea does not create a deceptive resemblance between them as such. Registration of a foreign version of an ordinary English word does not amount to registration of the ordinary English word or of all foreign equivalents of it. Nor does gaining a reputation in a foreign version of an ordinary English word amount to gaining a reputation in the ordinary English word or of all foreign equivalents of it.

Even if the devisor of the ‘La Clinica’ mark knew of the Clinique Laboratories mark and perceived some advantage from an association with it, as the court found was quite likely, the court held that any such advantage would not be the result of deceptive similarity between the marks but, rather, the association of ideas based upon the English word ‘clinic’.

There are important lessons arising from this decision, not only for applicants and opponents, but also for the Registrar of Trade Marks and his examiners, regarding the fundamental nature of a trade mark as a sign, which is to be distinguished from the associations which may be conjured up, usually indirectly, from it. Too often these days, the Registrar objects to an application based upon such associations, sometimes remote and improbable, rather than the physical presentation of the mark itself the subject of an application. The court’s decision is a call to order on this issue.

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