The Swedish Patent and Market Court (the “PMD”) has, on appeal from the Swedish Patent- and Registration Office, invalidated the registration of a trademark containing, among others, the words “Taxi” and “Stockholm” because of the earlier mark “Taxi Stockholm”.
By way of background it must be noted that the taxi services in Sweden is not regulated. This means that it is full competition on the market and,e.g., no maximum price regulation or geographic limitations. The taxis are free to go and charge what they choose. As such, it has become important for the large established services to protect their trademarks in order to avoid confusion with smaller independent taxi services and drivers.
In the current case the applicant had applied for the figurative trademark below:
Taxi trafikförening u.p.a, one of the largest taxi associations opposed the above trademark. The opposition was based on the trade name TAXI STOCKHOLM 15 00 00, the unregistered trademark TAXI STOCKHOLM and the Swedish figurative trademark TAXI STOCKHOLM 15 00 00 (shown above) all protected for taxi services. It should, however, be noted that the figurative mark included a disclaimer for the words “TAXI STOCKHOLM” and the number combination “15 00 00”.
In its decision, the Court referred to a previous ruling of 13 May 2015 by the Svea Court of Appeal (Case nr. T 696-12), which considered the mark “Taxi Stockholm” (in word and in figure) to have acquired distinctiveness and being established on the market (i.e. protected as an unregistered trademark). The Svea Court of Appeal deemed the mark to be established within a part of the country, namely Stockholm county because of, amongst others, widespread use of the mark by Taxi Stockholm, consumer survey indicating widespread recognition by consumers, comprehensive advertisement by Taxi Stockholm and a considerable market share of the taxi market in Stockholm county. As such, the opponent had acquired the exclusive right to the word mark TAXI STOCKHOLM in Stockholm county.
Having established distinctiveness of the TAXI STOCKHOLM by reference to the decision from Svea Court of Appeal, the PMD continued assessing whether likelihood of confusion existed between the two marks. The PMD noted that both figurative marks were dominated by the words TAXI and STOCKHOLM as well as yellow circle shape between the A and the X. The PMD therefore concluded that there was a high degree of visual similarity between the marks. As such, a high similarity was concluded between all earlier rights and the contested mark. The PMD further made reference to the earlier ruling and stated that the court had concluded that the earlier signs had acquired distinctiveness in a substantial part of Sweden and that the scope of protection of the earlier signs was not limited, even considering the inherent descriptiveness of the words TAXI and STOCKHOLM. A likelihood of confusion was thus concluded and the contested mark was invalidated.
The case is interesting for many reasons. First, it shows the possibility to acquire distinctiveness and thus protection for generic elements. In essence, the PMD:s decision states that the opponent has the exclusive right to use the word combination of TAXI and STOCKHOLM as dominant elements of a trademark. In addition, it is further interesting as the PMD did not take any account of the fact that the earlier figurative mark included a disclaimer for the word elements. As it was shown that the word elements had acquired distinctiveness, the disclaimer was simply ignored. One must therefore wonder if any consideration hence can be given in relation to any disclaimers present in the Swedish trademark register.