The IPI sides with comparis.ch: The "Comparea" trademark poses a risk of confusion due to strong similarity and identical financial services.
Luca Hitz
Legal Partner
Luca Schärer
Junior Legal Associate
Background
The starting point of the consolidated opposition proceedings nos. 104014 to 104017 was a trademark application for the word mark "Comparea" ("contested mark") by EMG SA, which was opposed by comparis.ch AG based on its earlier word and figurative trademarks "COMPARIS," "COMPARIS.CH," and "comparis.ch" (fig.) ("opposing marks").
The opposing party’s word marks are registered for services in Class 36, covering "insurance, financial affairs" or "insurance; financial affairs; monetary affairs; real estate affairs" The figurative mark is registered for services in Class 36, covering "insurance; financial affairs; monetary affairs; real estate affairs; all of the aforementioned services of Swiss origin". The contested mark was applied for services in Class 36, covering "Services financiers, monétaires et bancaires; services d'assurance; services de biens immobiliers".
Comparison of the Services Claimed
Both the opposing marks and the contested mark claim protection for services in Class 36. The Swiss Federal Institute of Intellectual Property (IPI) determined that there was an identity between the claimed services "financial affairs" and "services financiers" as well as between "insurance" and "services d’assurances" Furthermore, the IPI stated that a clear distinction could not be drawn between the claimed services "financial affairs" and "monetary affairs" and "services bancaires" meaning that at least a strong similarity of the claimed services had to be assumed.
Comparison of the Trademarks
Regarding the trademark comparison, the IPI first noted that the checkmark symbol within the letter "o" in the "comparis.ch" figurative mark was of low distinctiveness as it conveys information about the quality of the service. The computer-style font of the figurative mark was also considered a secondary design element. Therefore, these visual elements could be disregarded, and the focus should be placed on the word element "comparis.ch."
As a first step, the IPI compared the two marks in terms of their visually and phonetically. It found the following: The opposing mark "COMPARIS" and the opposing marks "COMPARIS.CH / comparis.ch" and the contested mark "Comparea" share the first six letters. This results in a particularly striking identical word stem at the beginning of the marks, leading to a high degree of visual and phonetic similarity. Due to the different endings ("-is," "-is.ch," and "-ea"), there is a variation in the number of syllables or cadence, but this does not lead to significant in phonetic differences given the dominant word stem. The use of uppercase and lowercase letters is not relevant in terms of distinctiveness. Since the defining word stems are identical, they also convey the same possible meaning ("comparer" in French or "compare" in English; in German, "vergleichen").
In this context, the IPI considered the strong visual and phonetic similarities sufficient and affirmed the similarity of the marks.
Likelihood of Confusion
Regarding the likelihood of confusion, the IPI stated that this must be assessed based on the specific target group. It explained that the average consumers of Class 36 services typically carefully review various criteria before concluding a contract. This led the IPI to assume an increased level of attention on the part of the relevant consumers. Consequently, the assumption of a likelihood of confusion should be made with greater caution.
The IPI further noted that the marks in question consist of longer word elements, which are generally easier to remember, arguing against the risk of misattribution. However, given the dominant identical word stem and the identical or strongly similar services, the likelihood of confusion remained. The differences in the word endings, the low distinctive visual elements (especially the checkmark symbol), and the increased level of attention of the relevant consumers did not change this assessment.
Accordingly, the IPI confirmed the likelihood of confusion, which led to the cancellation of the registration of the contested mark "Comparea".
