Decision on the risk of confusion between the BIC and BIG-PEN trademarks for ballpoint pens

Facts

The Federal Tribunal has dismissed the appeal of Plastofin A.G. against the decision of the Commercial Court of Zurich which had convicted it for trademark infringement and unfair competition. The facts are as follows: - French Mr. Bich and the BIC companies in Paris and Lugano are the owners of the BIC trademark registered in 1951 for ballpoint pens. - Plastofin A.G. in Zurich registered the BIG-PEN trademark in 1954, which it also uses for ballpoint pens. - At the request of the three BIC companies, the Commercial Court of Zurich convicted Plastofin for trademark infringement and unfair competition.

Considerations

The Federal Tribunal dismissed Plastofin's appeal for the following reasons:

According to established case law, the comparison of trademarks must be done as a whole and not by examining their different elements separately. The decisive criterion is the overall impression left on the average consumer, taking into account the fact that these are mass-market products purchased without much attention. The memory left by the trademark in the consumer's mind is of particular importance.

Although the BIG-PEN trademark is composed of two words, the addition of "PEN" does not have sufficient distinctive power to prevent confusion with the BIC trademark. What remains in the consumer's mind is the word "BIG" which presents a very strong phonetic and visual similarity with "BIC". The consumer could thus…