KAZAA DEEMED CONFUSINGLY SIMILAR TO CASA

The Register reports that Sharman License Holdings, the company behind the controversial P2P utility and search engine Kazaa, has been unable to obtain the registration of its trade mark under the Community trade mark system. Kazaa may even have to change its name in Germany. FastTrack, the company that developed Kazaa and then sold its rights to Australian company Sharman, had previously lost a Community trade mark opposition against German company SpeedWare Software GmbH, which claims that in the German language the name Kazaa is phonetically similar to Casa, the trade mark it uses for (database) search software.

FastTrack applied to register KAZAA back in 2000 with OHIM, the Office for Harmonisation in the Internal Market, which registers Community trade marks and Community designs. SpeedWare Software GmbH (which now operates under the name of Nemetschek CREM Solutions) vigorously opposed the Kazaa application, claiming that a likelihood of confusion existed as the marks were phonetically the same and the goods/services for which Kazaa was sought to be registered were identical or similar". Sharman disagreed, arguing that the second syllable of CASA started with the letter 's', while the mark applied for KAZAA contained the quite unusual letter 'z', Sharman argued. Moreover, the double letter 'a' was atypical in the German language. From a phonetic point of view, CASA is pronounced as the Spanish word 'casa', with the emphasis on the first syllable 'ca' and a soft and short sound for the second syllable. OHIM, however, concluded that the trade marks were indeed phonetically similar in the German language. Now that FastTrack/Sharman’s CTM application has failed, the company may now have to apply its brand name individually in each member state. More importantly, it can expect opposition from Nemetschek CREM Solutions in Germany.

The IPKat understands how frustrated FastTrack/Sharman must be, given the fact that the KAZAA brand name is hugely known around the world, while the prior-registered CASA mark is not. He wonders whether FastTrack/Sharman will appeal on the basis that it is too famous a mark to be likely to be confused with the earlier mark.

Confusion here, here and here
ConFusion here and here; Confucius here and here