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November 1, 2014 Vol. 69 No. 20 Back to Bulletin Main Page

JAMAICA: Supreme Court Rules No Likelihood of Confusion for 3M Marks

In May 2014, the Supreme Court of Judicature of Jamaica, Civil Division, issued its ruling in 3M Company’s appeal against the decision of the Registrar of Industrial Property allowing the registration of the mark 3M & Design, applied for by Manufacturera 3M. S.A. de C.V. (3M Co. v. Manufacturera 3M. S.A. de C.V. & Registrar of Industrial Property, Claim No. 2013 HCV 00372, [2014] JMSC Civ 90 (Sup. Ct. May 30, 2014) (Sykes, J.).)

3M Company (3M) holds several Jamaican registrations for the word mark 3M and various stylized marks incorporating 3M—in particular, the stylized mark shown below. In 2008, 3M opposed the application by Manufacturera 3M. (M3M) for its own stylized mark 3M & Design, a color version of which is illustrated below (the actual application was filed for black and white only).

On December 21, 2012, the Registrar issued a decision allowing registration of M3M’s mark. 3M appealed against the decision.

The Supreme Court found that there was no likelihood of confusion between the marks because the marks were not similar and the respective goods were not similar, clearing the path to registration of M3M’s mark.

The Court began by exploring the relevant provisions of the Trade Marks Act, 1999 (TMA) within the context of the EC Trade Marks Directive, which, Mr. Justice Sykes said, provided a template for the Jamaican laws. The Court also addressed persuasive precedents on the concept of likelihood of confusion from the Court of Justice of the European Union (CJEU).

In its assessment of the similarity of the marks, the Court deemed the marks “not identical” owing to their conceptual and visual differences. Despite the fact that both marks featured the elements “3” and “M” and notwithstanding their aural similarity, the Court found that the grasshopper design included in M3M’s mark was a “significant feature,” and overall it did not accept that the marks were even similar within the meaning of the TMA.

The Court likewise determined that the goods were not similar, despite the fact that the goods of each proprietor—which, generally speaking, covered machinery and spare parts for use in the sugar cane industry—belonged to the same international classes (7, 11 and 12). The Court found that the relevant average consumers of M3M’s products were not “ordinary consumers” but were instead specialized consumers with specialized knowledge of their industry (sugar and rum manufacturing). Thus, it was unlikely such consumers would be misled. Furthermore, the average consumer of 3M’s goods was not likely to come into contact with M3M’s goods. The goods of the two proprietors were not found to be in competition. This analysis led the Court to rule that there was no likelihood of confusion on the part of consumers with respect to the two marks.

Despite 3M’s mark’s being arguably well known and in the face of substantial evidence supporting that conclusion, the fact still remained that there was no likelihood of confusion and, thus, there were not sufficient grounds to deny registration of M3M’s mark.

Notably, the Court emphasized its prudence in showing “full respect for the Registrar’s decision[s]” on trademark matters, as the “Registrar’s reasoning…may reveal nuances in application, which would be missed by the untrained eye and mind.”

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. 

© 2014 International Trademark Association