• IN THE UK OFFICE

    Tower of Babel

    Adolfo Dominguez SA applied under the 1938 Trade Marks Act to register Agua Fresca label for goods in Class 3. The label consisted of the words Agua Fresca, the name ADOLFO DOMINGUEZ and a small arboretum of ornamental trees. The application was accepted for "perfumery and cosmetics, but not including toilet water" and published for opposition. In the Trade Marks Journal advertisement it was indicated that "agua fresca" was the Spanish equivalent of "cool water".

    The application was opposed by Zino Davidoff SA on the basis of their earlier UK trade mark registration for a stylised form of Davidoff Cool Water, covering a wide range of Class 3 goods (Section 12) as well as common law rights which they claimed had been acquired in both Davidoff Cool Water and Cool Water through use of these marks in the UK in relation to aftershave and related products since 1988 (Section 11). In the opponent’s earlier trade mark registration, the exclusive use separately of the words Cool and Water was disclaimed.

    The Hearing Officer (Mr Reynolds) dismissed the opposition. Dealing first with the Section 12 aspect, Mr Reynolds decided that this ground turned on the opponent’s contention that the words agua fresca translate as cool water and would therefore give rise to confusion with Zino Davidoff’s registered trade mark. The Hearing Officer commented as follows on this point,

    Even though the Trade Marks Journal advertisement stated that "agua fresca" translated as "cool water", the evidence filed by the parties in the opposition did not establish a single undisputed meaning of this Spanish phrase. Those with only a passing familiarity with Spanish or another Romance language might discern a connection between "fresca" and the English word "fresh". In the absence of any direct evidence from the UK public on the meaning of "agua fresca", it was not possible to accept unreservedly that the phrase’s only possible meaning was "cool water".

    In the UK Trade Marks Office’s Manual on the 1994 Trade Marks Act, it is stated that Spanish is likely to be known to a reasonable and increasing number of UK residents. The opponents had therefore argued that confusion would arise amongst that increasingly significant part of the UK population. The Hearing Officer found this passage from the 1994 Act Manual of dubious relevance since it dealt with the distinctiveness of foreign words under the 1994 Act rather than the conflict between marks under the 1938 Act. He believed that of greater relevance was the guidance given in the 1938 Act Manual in relation to the comparison of words. In that Manual, the following commentary is found,

    "English and Foreign Equivalents: The Golden Fan case (13 RPC 295) gives judicial support to the view that foreign words and their English equivalents may be confusingly similar. Current practice is not to apply this too rigidly and the following examples illustrate current practice and show that the foreign equivalent must be reasonably close either visually and/or phonetically to be in conflict.

    The following words would be in conflict (under Section 12)

    Enkle (German) = Ankle

    Promesse (French) = Promise

    Rastlos (German) = Restless

    Fregate (French) = Frigate

    The following words would not be in conflict (under Section 12)

    Dom (German) = Cathedral

    Chien (French) = Dog

    Tienda (Spanish) = Shop

    Conejo (Spanish) = Rabbit

    There may be occasional instances where the meaning of the foreign equivalent is thought to be so well known that, despite lack of visual and/or phonetic similarity, it would be in conflict. Oui (French) and Yes is an example of this".

    Although the Office Manual only offered general guidance on their approach, it seemed clear that, so far as non Spanish speakers or those with only a rudimentary knowledge of the language are concerned, there was no visual or phonetic similarity between agua fresca and cool water and therefore no conceivable likelihood of confusion.

    As far as those who spoke Spanish more fluently were concerned, the following considerations applied:

    • The target audience for the products was not those of Spanish origin or those who spoke Spanish,

    • The phrase agua fresca could be translated more than one way,

    • There was no evidence that customers would necessarily pause to analyse the Agua Fresca element of the mark and look for linguistic associations,

    • Even if a small number of people did make the connection, this is not evidence of confusion,

    • The words Agua Fresca are only part of a composite mark which contains other distinguishing features and is, as a totality, wholly different to the earlier (Davidoff Cool Water) mark.

     

    On the basis of this comprehensive analysis, the Hearing Officer decided that it was highly unlikely that the coexistence of the two marks would lead to deception or confusion of a substantial number of persons in the UK. The Section 12 opposition therefore failed.

    Turning to the Section 11 ground of opposition, the Hearing Officer was not persuaded that there was any aspect of the opponent’s use of their mark that should lead him to reach a different conclusion to that reached under Section 12. In particular, he was not convinced that the evidence provided by the opponent established use of the mark Cool Water separately from the house mark Davidoff. On this basis therefore the Section 11 opposition also failed.

     

    Comment

    This is an interesting and, in the author’s view, a sensible decision. Even though it was decided under the 1938 Act, there is no reason to believe that it would have been decided differently under the 1994 Act. The decision is also in line with an earlier decision, reported in the Autumn 99 edition of Make Your Mark, when the proprietor of the trade mark Always failed to prevent the registration of the trade marks Sempre and Siempre for the same products. Sempre and siempre are respectively the Italian and Spanish equivalents of always.

    The UK Office’s practice on the comparison of English and foreign language marks in relation to potential confusion should be contrasted with their practice on the distinctiveness of foreign language marks. In a recently reported decision of the Appointed Person (2000 RPC 291), the Spanish phrase El Canal de las Estrellas was rejected as non-distinctive for tv and radio broadcasting services. The phrase could be translated as either The Channel of the Stars or as The Pathway of Stellar Bodies. Despite this, the Appointed Person found that, since Spanish was a modern language widely understood and spoken in the UK, since Spain was a trading partner of the UK and a fellow member of the EU and since the services claimed were supplied both nationally and internationally, El Canal de las Estrallas would be easily recognised as a Spanish phrase which, when used in respect of the services claimed, would be understood as laudatory and not a reference to stellar bodies.

    There is therefore quite a contrast between the UK Office’s practice on absolute and relative grounds in the area of foreign words and phrases. The position does appear to be logical, however. The consideration of the distinctiveness of a French, German, Italian or Spanish mark should assume that a significant proportion of the UK population will understand its meaning and its relevance (or lack of relevance) to the goods or services claimed. By contrast, when an English word or phrase and a French, German, Italian or Spanish equivalent are compared for confusion, the comparison must be visual and phonetic as well as conceptual. Often the visual and phonetic differences will overwhelm any conceptual similarities.