Legal | Tax | Compliance
Legal | Tax | Compliance
Despite strong similarities and partially identical medical products and services, the word/figurative mark «CannaMed Switzerland» does not give rise to any likelihood of con-fusion with «Swiss CannaMed».
The opposition proceedings were initiated by a trademark application for the word/figurative mark «CannaMed Schweiz» (fig.) («contested mark»), which was op-posed by Swiss CannaMed SA and CF&F Finance Suisse SA on the basis of their earlier word/figurative mark «Swiss CannaMed» (fig.) («opposing mark»).
While the opposing mark claims goods and services in classes 3, 5, and 31, the contested mark was registered for goods and services in classes 5 and 44.
The Swiss Federal Institute of Intellectual Property (IPI) affirmed the similarity of goods between the contested mark and the opposing mark for many goods in class 5, including «pharmaceutical products» and «veterinary products». However, with regard to the services in class 44 (including providing information on health issues by telephone; providing information on health care via telephone and the Internet; medical advice in the health care sector; health and beauty care), the similarity between the goods in class 5 of the opposing mark (including pharmaceutical products, medical and veterinary preparations; hygiene articles for medical purposes) was denied. The IPI held, in line with the case law of the Swiss Federal Administrative Court, that a certain degree of restraint was appropriate when assuming similarity between goods and services. Similarity should be affirmed if the goods and services constituted a meaningful service package. This was not the case here. In previous rulings, the Federal Administrative Court had already stated with regard to goods in class 5 and medical services in class 44 that, although there were certain thematic points of contact, there was no known market practice whereby doctors regularly diversified into the goods sector of class 5 and marketed these products independently. There are no apparent reasons here why this practice, established in 2012, should be deviated from. Thus, similarity between the goods in class 5 and the medical services must be denied.
In contrast, the IPI affirmed the similarity between the non-medicinal cosmetic products and toilet preparations of the opposing mark and the contested beauty care service (class 44). Since beauty care services are functionally related to cosmetics and their use is considered necessary for the provision of services, the Federal Administrative Court has already ruled in B-7502/2006 – CHANEL / HAUTE COIFFURE CHANEL that customers expect to find hair care products in a hairdressing salon (E. 4.2). Accordingly, they assume that both competing products would be offered under the same brand. The Federal Administrative Court has therefore repeatedly confirmed the similarity between goods in class 3 and beauty care services, and the IPI has followed this case law.
When examining the trademark comparison, the IPI classified the Swiss cross and the underscore beneath the term «Switzerland» in the contested sign as banal, meaning that attention had to be focused primarily on the word elements of the contested sign.
Opposing Mark |
Contested Mark |
When comparing the two signs in terms of their visually and phonetically appearance, the IPI found that they were identical in the expression «Cannamed», which is written as one word. Despite the additional elements «Swiss» and «Schweiz», this led to visual and phonetic similarities. According to the IPI, the fact that the word element «med» is written in lower case in the earlier sign and begins with a capital letter in the later sign is irrelevant to the distinctive character, as differences in upper and lower case do not generally influence the overall impression. However, as both signs begin with a capital letter, this is likely to be an oversight on the part of the IPI. Ultimately, however, this has no effect, as the IPI correctly states that differences in capitalization are not decisive for the overall impression. Accordingly, identical spelling cannot influence the overall impression either. With regard to the meaning of the word marks, the IPI noted that «Canna» is predominantly understood by the relevant public as a reference to cannabis, especially in combination with the sign element «med». In the present case, the understanding of «cannabis» applies in connection with all relevant goods and services in classes 3, 5, and 44. Furthermore, the additions «Med» and «Swiss» are perceived as common terms for «medicine» and «Swiss» respectively. While the opposing mark is understood to mean «Swiss medical cannabis», the contested mark is understood to mean «medical cannabis Switzerland». The IPI therefore concluded that the two marks have largely identical meanings.
Overall, the IPI affirmed the similarity of the signs based on their visual and phonetic similarities and their largely identical meaning.
The focus then shifted to the question of whether there was a likelihood of confusion between the two trademarks. In this regard, the IPI noted that the word elements «Swiss CannaMed» in the meaning of Swiss medical cannabis had a directly descriptive meaning in connection with the disputed goods and services. The protectability of the opposing mark was based on the combination with the graphic element located above the term «med» in the upper right corner. However, the crosses had little impact on the trademark, which is why the opposing mark as a whole had only a greatly reduced distinctive character.
The IPI further stated that the identical elements «CannaMed» and «Schweiz» or «Swiss» are considered directly descriptive indications. A likelihood of confusion due to such generic elements would only be considered in the case of particular market recognition in Switzerland, which had neither been substantiated nor proven by the opposing party. Although there was a marked similarity between the trademarks, this was limited to elements in the public domain. Furthermore, the distinctive arrangement of the four red squares of the earlier sign was not contained in the contested sign, and the elements «Swiss» and «Schweiz» as well as the crosses were arranged differently in the two signs.
Accordingly, the IPI denied the likelihood of confusion, even taking into account the fact that the goods are partly identical or highly similar, and consequently rejected the opposition.
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