In a decision that became final on August 11, 2017, the Court of Appeal of Jamaica overturned the May 30, 2014, Supreme Court ruling of Mr. Justice Sykes who previously held that the 3M mark owned by 3M Company and a stylized 3M and device (M3M) mark owned by Manufacturera 3M. S.A. de C.V (both illustrated below) were not similar and that there was no likelihood of confusion between them.
The Court of Appeal found that Justice Sykes had erred in several respects and ruled that the marks 3M and M3M were aurally identical and visually and conceptually highly similar, and thus there was indeed a likelihood of confusion.
In December 2012, the Registrar of Industrial Property denied 3M Company's opposition to registration of the M3M mark. 3M Company appealed the decision to the Supreme Court (3M Co. v Manufacturera 3M. S.A. de C.V. & Registrar of Industrial Property, Claim No. 2013 HCV 00372) and suffered a defeat when Justice Sykes upheld the decision of the Registrar, making way for the registration of M3M despite an earlier 3M mark on the Jamaican Trade Marks Register covering the same classes of goods. 3M Company then appealed against Justice Sykes' decision to the Court of Appeal, which by a unanimous decision found in favor of 3M. 3M Co. v Manufacturera 3M. S.A. de C.V., Civil Appeal No 64/2014  JMCA Civ 21.
Court of Appeal Judge Ms. Justice Phillips, who wrote the judgment on behalf of the Court, found that the "3M" feature and not the grasshopper element of "M3M" was the significant component of that mark. On the matter of determining whether goods are identical or similar, she reasoned that one cannot fail to examine the specification or the classification of the goods applied for and found that the goods were identical or at least similar. While Justice Sykes had focused on the goods which were in use under the M3M mark, both M3M's application and 3M's earlier registrations covered goods in International Classes 7, 11, and 12.
Moreover, Justice Phillips indicated that the 3M mark was distinctive and the lesser degree of similarity in the goods would be offset by the distinctive character of the 3M mark. Further, had Justice Sykes not focused on the "specialized customer" of M3M as opposed to the "average consumer" who is well informed and aware and who would presume a link between the economic undertakings of 3M and M3M, he would have found a likelihood of confusion.
The Court of Appeal also found that M3M's use was not honest and the mark was filed for in bad faith, as the evidence showed that M3M was aware of the earlier 3M marks: namely, because it had failed in its attempt to register its mark elsewhere on account of successful oppositions by 3M prior to its application for filing in Jamaica. The Court further concluded that based on the evidently well-known reputation of the 3M mark there was a potential dilution and tarnishing of the reputation of the 3M mark by M3M.
Accordingly, the Supreme Court judgment was set aside and judgment was found in favor of 3M, refusing the registration of the M3M mark in International Classes 7, 11, and 12.
Originally published by www.inta.org, March 15 2018.
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