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Figurative mark RIMI GOODLIFE found to be similar to word mark GOODLIFE

  • Goodlife Foods Limited opposed the registration of ICA AB’s mark RIMI GOODLIFE in Classes 29, 30 and 32 based on its earlier word mark GOODLIFE
  • ICA AB argued that its mark contained an additional verbal element referring to the name of its well-known retail chain, as well as other graphical differences
  • The Appeals Division upheld the opposition, as the fact that both marks contained the identical element ‘goodlife’ outweighed the differences

Background

On 5 December 2017 the applicant, ICA AB, applied to register the figurative national trademark RIMI GOODLIFE (No 78445), pictured below, for the total alphabetic list of goods in Classes 29, 30, 31 and 32 and for some services in Class 35.

On 20 August 2018 Goodlife Foods Limited filed an opposition with the Appeals Division requesting invalidation of the later trademark RIMI GOODLIFE for all goods in Classes 29, 30 and 32 in Lithuania based on its earlier word mark GOODLIFE (No 015678402), registered for goods and services in Classes 29, 30, 32 and 39. Goodlife Foods Limited stated that the RIMI GOODLIFE mark had been registered in breach of Article 7(1) (2) of the Law on Trademarks, since it is confusingly similar to the earlier trademark because of the identical verbal element ‘goodlife’, which it considered to be the dominant element in the compared marks. It maintained that the fact that this element was written in a different style was insignificant. The earlier word mark is fully repeated in the figurative mark, is placed in a central position and has an independent distinctive function in the overall composition of the opposed mark. However, although the figurative mark has the additional verbal element ‘RIMI’, consumers would perceive that word as the name of the supermarket. Accordingly, Goodlife Foods Limited argued that the marks were similar visually, phonetically and semantically. ICA AB disagreed, stating that its mark consisted of a combination of verbal and figurative elements. The verbal element ‘RIMI’ is the first element and the name of the supermarket, which is well known in Lithuania. The word ‘RIMI’, together with the second word ‘goodlife’, means ‘RIMI good life’. Besides, the word ‘goodlife’, written in a different typeface, is the second element and can be found in the trademarks of other applicants. Although the word ‘goodlife’ was bigger than the word ‘RIMI’, the overall impression of the mark should be evaluated as a whole. In addition, the applicant noted that, although some goods in Classes in 29, 30 and 32 were identical and similar, a conclusion of similarity with regard to goods in these classes was incorrect.

Appeals Division decision

On 8 April 2019 the Appeals Division satisfied the opposition and refused to register RIMI GOODLIFE for all requested goods in Classes 29, 30 and 32 based on the following arguments:

  • The applicant was incorrect when it distinguished the dominant element in the figurative mark: the verbal element ‘goodlife’ takes the most prominent position and the first verbal element ‘RIMI’ is written in considerably smaller typeface and takes a secondary position. ‘RIMI’ is the name of the Lithuanian retail chain. This element, due to its typeface and position, could not be considered as the dominant element. At the same time, the verbal element ‘goodlife’, due to its size and central position, retained an independent position and was significant in the overall visual impression. The figurative form used in the opposed mark was usual, banal and had no importance in the visual evaluation of the compared marks. Marks are considered similar when a word is easily recognisable and readable, and the marks have no particular typeface. In this case, the important factor was that the prior mark GOODLIFE was fully incorporated into the opposed mark RIMI GOODLIFE, and ‘goodlife’ was the distinctive and dominant element of the marks.
  • The argument that ‘goodlife’ is often found in the trademarks of the other applicants and thus cannot fulfil its function as dominant element was rejected as unfounded. The Appeals Division noted that the registration of the mark per se does not prove its weakness because it does not reflect a real position in the market. The applicant should submit evidence proving the real use of such marks and that consumers are used to seeing them.
  • The marks were phonetically similar. The entire opposed mark is pronounced similarly because of the coincident verbal element ‘goodlife’.
  • The word ‘RIMI’ does not change the meaning of the opposed mark. The semantic content is related to the dominant element ‘goodlife’, which is identical to the meaning of the prior trademark.
  • The goods of the compared marks are identical and similar. The applicant did not submit significant and reasonable arguments to deny the homogeneity of the compared goods.

The Appeals Division concluded that a likelihood of confusion existed since the compared marks are similar and covered identical and similar goods. The term to appeal the decision of the Appeals Division will expire on 8 October 2019. If no appeal is filed,  this decision will become final.

This article first appeared on WTR Daily, part of World Trademark Review, in (September/2019). For further information, please go to www.worldtrademarkreview.com

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