02 April 2025

MÄC vs. MAAKA

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  • Data / Technology / IP

The IPI ruled in favor of Make-Up Art Cosmetics: "MAAKA" is likely to be confused with the well-known "MÄC" mark due to its high distinctiveness and similar goods.

  • Luca Hitz

    Legal Partner

Background

The opposition proceedings No. 103927 were based on a trademark application for the wordmark "MAAKA" ("contested mark") by Si Mari GmbH, which was opposed by Make-Up Art Cosmetics Inc. based on its earlier figurative trademark "MÄC" ("opposing mark").

The opposing mark is registered for goods in Class 3, covering "cosmetics and perfumes; skin and hair care products". The contested mark was applied for goods in Class 3, covering "non-medical cosmetics and body and beauty care products; non-medical toothpaste; perfumery, essential oils".

Comparison of the Goods

Both the opposing mark and the contested mark claim protection for goods in Class 3. The Swiss Federal Institute of Intellectual Property (IPI) determined that both marks cover "cosmetics," resulting in identical goods in this respect. Regarding the goods claimed by the contested mark that extend beyond or cannot be directly subordinated to those of the opposing mark, the IPI found that due to market proximity and similarities in expertise, intended use, and production sites, a high degree of similarity existed. The IPI thus considered the claimed goods to be either identical or highly similar.

Comparison of the Trademarks

Regarding the trademark comparison, the IPI noted that the graphic elements of the opposing mark (computer-style font and the unusual placement of the umlauts above or next to the "A") were too minor to be relevant for the present assessment. Therefore, the comparison primarily focused on the word element of the opposing mark.

In the first step, the IPI compared the two marks in terms of their visual and phonetic characteristics. It found the following: The two marks share the initial letter as well as the second letter (if the umlauts in the opposing mark are not perceived), but differ in the subsequent character sequence ("-C" vs. "-aka"). The distinction in uppercase and lowercase letters was deemed irrelevant. Since both marks consist of short word elements, they are generally easier to remember. Although the opposing mark and the contested mark differ in the number of syllables (one vs. two) and word length (three letters vs. five letters), they share a similarity in the pronunciation of "Ä" vs. "a" and the equally strong emphasis on "C" vs. "k."

Overall, the IPI determined that there was only a certain degree of similarity in the visual and phonetic aspects. Neither the opposing mark nor the contested mark had an immediately recognizable meaning that would distinguish them from each other – both would be perceived by the relevant public as fantasy terms.

Likelihood of Confusion

Regarding the likelihood of confusion, the IPI stated that this must be assessed based on the specific target group. According to case law, everyday consumer goods are purchased by the general public with lower attention and differentiation skills than in case of specialized products with a more limited market. The goods in Class 3, for which both the opposing mark and the contested mark are claimed, are considered mass-market everyday products. However, the IPI noted that consumers, particularly cosmetic professionals, show a medium to high level of attention when purchasing make-up products (Class 3). Despite the fact that the products are everyday goods, the IPI thus assumed an increased level of attention.

Furthermore, the IPI stated that a highly distinctive and well-known trademark increased the likelihood of mental associations and, consequently, the risk of consumer confusion when encountering similar third-party marks. Due to the long and intensive use of the opposing mark "MÄC" (demonstrated by strong industry and media presence as well as high sales figures), the IPI concluded that the opposing mark had a high degree of distinctiveness and an extended scope of protection.

The IPI also noted that short word elements, such as those found in both the opposing and contested marks, are generally easier for consumers to remember, which argues against a likelihood of confusion. However, both marks had the same initial letter "M," and the consonants "C" and "k" are pronounced similarly by the relevant public. The differences in the second letter, word length, and number of syllables or cadence were not sufficient to meet the increased requirements for trademark differentiation (due to the high degree of recognition of the "MÄC" mark) and to eliminate the likelihood of confusion.

Accordingly, the IPI confirmed the likelihood of confusion, which led to the cancellation of the registration of the contested mark "MAAKA".

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