When does a swan look too much like a swan? Opposition concerning the STABILO figurative mark

The name Schwan-Stabilo may not immediately ring a bell for everyone.

However, many people recognize the brand right away once they see its products, such as the well-known STABILO pens with their distinctive grip. The company has long been a well-established player in the world of writing instruments and office supplies, and is known for its clear and recognizable figurative marks. In a recent opposition, the dispute was not about words but about an image that can immediately suggest a particular commercial origin: a black swan.

The applicant sought to register a European figurative mark for goods in Class 16 (including paper goods and writing instruments). Schwan-Stabilo filed an opposition based on two earlier figurative marks, also depicting a black swan. The difference? One swan faces left and appears within a circle, while the other faces right and appears without a circle.

Stabilo’s oudere merk

Het aangevraagde merk

Is there a likelihood of confusion?

The figurative mark was applied for in relation to, among other things, office supplies, paper and stationery such as notebooks, copying paper, pens and cases. The Opposition Division of the European Union Intellectual Property Office (EUIPO) held that these goods occupy the same market space as those of Schwan-Stabilo. Paper towels, however, were considered different, as they serve a different purpose.

As for the signs themselves, the Opposition Division found that the overall impressions are sufficiently close: the posture of the swan, with its curved neck and raised wings, is a memorable element. Moreover, in practice consumers do not take the time to calmly compare trademarks side by side. Conceptually, both signs also refer to a black swan. Because the STABILO swan has a normal degree of distinctiveness, the Opposition Division concluded that there is a genuine likelihood of confusion for the identical goods.

What Schwan-Stabilo did cleverly was to register the logo separately as a trademark (that is, also independently from the logo containing the word STABILO). In this way, the trademark protection does not cover the combination of word and figurative elements, but only the figurative element itself. Thanks to this separate registration, the company was able to take action against this other swan.

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.