Nintendo filed a request with Sweden’s Patent and Registration Office (PRV) to force the WiiSmile dental clinic to ditch its registered trademark, claiming the current one could be confused with that of Nintendo’s Wii gaming system.
According to Nintendo, its Wii trademark was well established in Sweden before the clinic registered its own WiiSmile trademark with PRV in September 2007.
But WiiSmile countered that, while its logo contains the word “Wii”, the trademark in its entirety was sufficiently different from Nintendo’s to protect against any confusion on the part of consumers.
Specifically, the clinic argued that the inclusion of the word “Smile” in the trademark, as well as the fact that the ‘i’ and the ‘l’ in “Smile” were turned upside down, was sufficient to prevent the WiiSmile trademark from being mistaken for that of the similarly named gaming system.
“The visual impression of the trademark differs therefore completely from the impression given [Nintendo’s] distinguishing features,” argued WiiSmile, according to documents from PRV.
“The differences are easy for consumers to discern and that the three letters are common for the trademarks isn’t sufficient for consumers to associate them [with one another].”
The clinic also pointed out that it the two consecutive ‘i’s in WiiSmile are designed to resemble human figures, strengthening their contention that the three letters at the start of the clinic’s name are meant to be thought of more in terms of their phonetic expression “we” rather than as an attempt to hijack Nintendo’s trademark.
In the end, however, Sweden’s patent authority rejected WiiSmile’s arguments, instead ruling in favour of the Japanese gaming firm.
According to PRV WiiSmile failed to present any evidence which “rules out that the above mentioned common trademark [Nintento’s Wii] is well recognized by the target market in a substantial part of the country”.
The agency explained that its decision was based on an examination of the trademarks’ visual and phonetic similarities, finding that the word “Wii” was the “dominant element” in the dental clinic’s trademark and that, on its own, it has no accepted meaning.
Moreover, since WiiSmile’s trademark included Nintendo’s trademark “in its entirety”, it’s possible that consumers may assume the clinic’s dental services are being offered by the same company responsible for producing the Wii gaming system.
When contacted by The Local, a representative from WiiSmile claimed that the dental clinic had not yet reviewed the PRV decision and thus refused to comment further as to whether it had any plans to appeal the ruling.
Should WiiSmile choose to contest PRV’s ruling, it has two months to do so in writing. Otherwise, its rights to the WiiSmile trademark will be revoked.