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 bythe trademark application for the word mark «ZO SKIN HEALTH» («contested mark»)by ZO Skin Health, Inc., which was opposed by the Federation of MigrosCooperatives on the basis of its earlier word mark «ZOÉ» («opposing mark»).
Comparisonof 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», thecontested mark was applied for in relation to the goods «cosmetic products».
The Swiss Federal Institute of IntellectualProperty (IPI) found that «cosmetic products» and «cosmetics» are identical. Itfurther stated that the broad term «cosmetic products» of the opposing mark isidentical or at least highly similar to «body care products» and «skin careproducts» of the contested mark, as many body care products on the market havecosmetic effects and, in addition to cleansing and care, also serve to improvethe appearance of the skin. The IPI therefore qualified the goods as similar orhighly similar.
Comparison of the Trademarks
Regarding the trademark comparison, the IPI firstnoted that the term «SKIN HEALTH» in the contested sign is purely descriptiveand therefore not the distinctive main element of the mark. The comparison musttherefore focus primarily on the elements «ZOÉ» and «ZO».
The IPI further found that the word elementsshare the same first two letters. However, the elements consist of short words,which according to established practice are easier to perceive and rememberacoustically and visually than longer words, reducing the likelihood ofconfusion by mishearing or misreading. The IPI therefore acknowledgedsimilarities in the visual impression due to the first two letters of bothsigns. In terms of acoustic pattern, it found that «ZOÉ» and «ZO» have adifferent number of syllables but share the identical first syllable «zo»,creating similarities.
On a symbolic level, the two signs would havedifferent 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 andphonetic similarities.
Likelihood of Confusion
Regarding the likelihood of confusion, the IPI statedthat this must be assessed based on the specific target group. According tocase law, «mass‑market everyday goods» are purchased with lower attention andless ability to differentiate than specialty products. Cosmetics are classifiedas such everyday mass‑market goods. This led the IPI to assume a low level ofattention on the part of the relevant consumers.
The opposing party claimed increaseddistinctiveness and referred to decades of intensive use, a wide range ofproducts, high sales figures, nationwide presence and advertising, and thealleged high level of recognition of the opposing mark. However, the IPI statedthat although the trademark «ZOÉ» in its meaning as a female name in connectionwith the goods in question could not be interpreted as having a directlydescriptive meaning, the opposing mark only had an original, average degree ofdistinctiveness with a normal scope of protection. According to establishedcase law of the IPI, caution is required when assuming that an opposing mark isgenerally known and therefore enjoys an extended scope of protection. The IPIpointed out that only very well-known trademarks such as «Coca-Cola» forbeverages, the «Valser» trademark for mineral water, and «Facebook» for socialmedia services enjoy such a scope of protection, and recalled the highrequirements. According to the IPI, there is no evidence in the present case tosuggest that the opposing mark is well known. The IPI also rejected the claimthat the opposing mark is highly recognized, as this had not been substantiatedby the opposing party on the basis of the evidence submitted.
The IPI further stated that when assessing thedistinctiveness of the signs in light of the similarity of the goods, a strictstandard must be applied. Even small differences carry significant weight whencomparing short marks. According to the IPI, this is the case here: The letter «É»missing from the contested mark is neither inaudible nor visually overlookabledue to the brevity of the two signs and thus leads to clear distinguishabilityboth phonetically and visually. In addition, the signs differ in their meaning.Even considering the similarity or high degree of similarity of the goods, thelow consumer attention, and the average distinctiveness of the opposing mark,the contested mark complies with the required degree of distinction between thesigns.
The IPI therefore denied a likelihood ofconfusion and dismissed the opposition.
