The Federation of Migros Cooperatives was unable to prevail before the IPI with its trademark «ZOÉ».
Luca Hitz
Legal Partner
Laura Verrone
Junior Legal Associate
The opposition proceedings were initiated by the trademark application for the word mark «ZO SKIN HEALTH» («contested mark») by ZO Skin Health, Inc., which was opposed by the Federation of Migros Cooperatives on the basis of its earlier word mark «ZOÉ» («opposing mark»).
Comparison of the Goods Claimed
Both the opposing and the contested mark covergoods in Class 3. While the opposing mark is registered for the goods «bodycare products; cosmetics; skin care products, not for medical purposes», the contested mark was applied for in relation to the goods «cosmetic products».
The Swiss Federal Institute of Intellectual Property (IPI) found that «cosmetic products» and «cosmetics» are identical. It further stated that the broad term «cosmetic products» of the opposing mark is identical or at least highly similar to «body care products» and «skin care products» of the contested mark, as many body care products on the market have cosmetic effects and, in addition to cleansing and care, also serve to improve the appearance of the skin. The IPI therefore qualified the goods as similar or highly similar.
Comparison of the Trademarks
Regarding the trademark comparison, the IPI first noted that the term «SKIN HEALTH» in the contested sign is purely descriptive and therefore not the distinctive main element of the mark. The comparison must therefore focus primarily on the elements «ZOÉ» and «ZO».
The IPI further found that the word elements share the same first two letters. However, the elements consist of short words, which according to established practice are easier to perceive and remember acoustically and visually than longer words, reducing the likelihood of confusion by mishearing or misreading. The IPI therefore acknowledged similarities in the visual impression due to the first two letters of both signs. In terms of acoustic pattern, it found that «ZOÉ» and «ZO» have a different number of syllables but share the identical first syllable «zo», creating similarities.
On a symbolic level, the two signs would have different meanings, since «ZOÉ» is a common female first name in Switzerland, while «ZO» is perceived as a fantasy name by the relevant consumers. This meansthat the contested mark has a different meaning than the opposing mark.
Overall, however, the IPI affirmed visual and phonetic similarities.
Likelihood of Confusion
Regarding the likelihood of confusion, the IPI statedt hat this must be assessed based on the specific target group. According to case law, «mass‑market everyday goods» are purchased with lower attention and less ability to differentiate than specialty products. Cosmetics are classifiedas such everyday mass‑market goods. This led the IPI to assume a low level of attention on the part of the relevant consumers.
The opposing party claimed increased distinctiveness and referred to decades of intensive use, a wide range of products, high sales figures, nationwide presence and advertising, and the alleged high level of recognition of the opposing mark. However, the IPI stated that although the trademark «ZOÉ» in its meaning as a female name in connection with the goods in question could not be interpreted as having a directly descriptive meaning, the opposing mark only had an original, average degree of distinctiveness with a normal scope of protection. According to established case law of the IPI, caution is required when assuming that an opposing mark isgenerally known and therefore enjoys an extended scope of protection. The IPI pointed out that only very well-known trademarks such as «Coca-Cola» for beverages, the «Valser» trademark for mineral water, and «Facebook» for social media services enjoy such a scope of protection, and recalled the high requirements. According to the IPI, there is no evidence in the present case to suggest that the opposing mark is well known. The IPI also rejected the claim that the opposing mark is highly recognized, as this had not been substantiated by the opposing party on the basis of the evidence submitted.
The IPI further stated that when assessing the distinctiveness of the signs in light of the similarity of the goods, a strict standard must be applied. Even small differences carry significant weight when comparing short marks. According to the IPI, this is the case here: The letter «É» missing from the contested mark is neither inaudible nor visually overlookable due to the brevity of the two signs and thus leads to clear distinguishability both phonetically and visually. In addition, the signs differ in their meaning. Even considering the similarity or high degree of similarity of the goods, the low consumer attention, and the average distinctiveness of the opposing mark, the contested mark complies with the required degree of distinction between the signs.
The IPI therefore denied a likelihood of confusion and dismissed the opposition.
