04 July 2025

No Likelihood of Confusion Due to Limited Scope of Protection for the Sign “One”

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  • Data / Technology / IP

No likelihood of confusion between “one” and “ONe”? The Swiss Federal Administrative Court clarifies how to assess similarity of signs, descriptive word elements, and graphic differences in word/figurative marks – and why the trademark register alone is decisive.

  • Stephanie Ast

    Junior Legal Associate

  • Luca Hitz

    Legal Partner

  • Philipp Stadler

    Senior Legal Associate

In its decision of April 17, 2025 (B-6194/2024), the Swiss Federal Administrative Court (BVGer) ruled in appeal proceedings (following the IPI’s opposition decision) between CyOne Security AG and VERMOP Salmon GmbH that there is no likelihood of confusion between the contested word / figurative marks “one (fig.)” and “ONe (fig.)”.

The judgment provides a thorough analysis of the similarity of signs and the similarity of goods and services in the context of combined word/device marks, offering valuable clarification for practitioners.

The Court emphasized that, in opposition proceedings, the assessment of similarity is based solely on the goods and services listed in the trademark registers. Arguments by CyOne that the actual market use differs – cybersecurity on one side, cleaning technology on the other – were dismissed. According to the Court, opposition proceedings are register-based, and practical market distinctions are irrelevant.

The Court found that there is a similarity between a large number of the goods and services claimed. However, it emphasized that there is no general similarity between hardware and software; rather, an actual connection between the hardware and software must exist. For example, the court (rightly) denied the similarity between cash registers on the one hand and “navigation software; software and computer hardware for tracking; electronic databases” on the other.

Regarding the similarity of the signs, the court stated that both trademarks consist of the word element "one" or "ONe", with the stylized “o” standing out in the overall impression. Due to the design of the “O” as a power button and the resulting associations with the word “ON”, the opposing mark, unlike the contested mark, conveys an additional, easily recognizable meaning. Nevertheless, due to the similar typeface, the use of the word element "one", and the identical phonetic impression of both marks, the court found there to be a similarity between the signs.

When assessing the likelihood of confusion, the BVGer noted that due to the banality of the word element “one” (the term belongs to the most basic English vocabulary), the opposing mark only acquires (limited) distinctiveness through its graphic design. Furthermore, the court emphasized the different design of the initial letter “o” in each case, particularly that the “O” in the opposing mark, designed as a power button, clearly differs from that of the contested mark. In addition, the opposing mark features a distinctive design of the middle letter “N”, which emphasizes the element “ON”. This represents a significant difference from the contested mark, which only highlights the stylized “o”. Thus, there are sufficient differences, such that (taking into account the slightly increased attentiveness of the relevant consumers and the weak distinctiveness of the opposing mark) there is no likelihood of confusion.

This decision reaffirms key principles of Swiss trademark law: Upfront: the register entry is decisive. Moreover, even terms with descriptive and trivial tendencies such as “one” may be protectable if they have acquired distinctiveness, and that visual stylization in word/device marks will only prevent confusion where it is sufficiently prominent in the consumer’s memory. It also underscores the importance of carefully drafting the scope of goods and services in a trademark application.

 

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