On 17 April 2025, the UK Intellectual Property Office issued its decision in the opposition proceedings brought by Inensa SA against GDS Prestige (FZC)’s application to register the mark Scentologia. The opposition was based on Section 5(2)(b) of the Trade Marks Act 1994, relying on Inensa SA’s earlier registered mark Scentology. This article outlines the decision’s reasoning, focusing on the similarity of the marks and goods, and the assessment of the likelihood of confusion.

Background of the Case

GDS Prestige applied to register the figurative mark Scentologia in Class 3, covering a broad range of cosmetic and fragranced products. Inensa SA opposed the application based on its earlier UK registration for Scentology, which also covered similar goods in Class 3 and Class 4. The opposition was primarily based on Section 5(2)(b), alleging that the marks were confusingly similar.

While the applicant acknowledged the overlap in the goods, it contested the likelihood of confusion between the marks. However, the UKIPO sided with the opponent, rejecting the application for Scentologia.

Assessing the Similarity of Goods

Under Section 5(2)(b), the UKIPO first considers whether the marks are similar and, secondly, whether the goods are identical or similar. The Canon criteria, developed through EU case law, were applied to assess the degree of similarity between the goods. In this case, the goods were found to be either identical or at least similar. Even goods such as cleaning products and polishing agents were considered similar to the opponent’s soap, due to overlapping purposes, trade channels, and consumer perception.

While there were differences between the goods listed in the respective specifications, the significant overlap in their intended use and market led the Hearing Officer to find a strong connection.

Comparing the Marks: Visual, Aural, and Conceptual Similarity

Visual Comparison: Both marks share the root word “Scent”, followed by distinct suffixes: “-ology” for the opponent and “-ologia” for the applicant. While the differences in the final letters, “y” versus “ia” and the font styles were noted, the overall visual impression of the marks was still found to be highly similar due to the shared prefix.

Aural Comparison: Both marks would be pronounced similarly, with only the final syllables differing. The applicant’s mark, Scentologia, would be pronounced “Scent-ol-oh-gee-ah”, while the opponent’s Scentology would be pronounced “Scent-ol-oh-gee”. The first four syllables were identical in both marks, showing the potential for confusion.

Conceptual Comparison: Both marks evoke the idea of “the study or science of scent.” While the applicant’s mark is an invented term, its prefix “Scent” makes it clearly reminiscent of the opponent’s Scentology, which refers to the study of scent. Despite the suffix differences, the marks share a common conceptual reference, contributing to a likelihood of confusion.

Decision and Outcome

The UKIPO upheld the opposition, finding that the marks were sufficiently similar to create confusion. The application for Scentologia was refused for all goods in Class 3, except for ‘dentifrices’, which had been withdrawn from the opposition.

This decision demonstrates that even small differences, such as a suffix change, may not prevent confusion if the marks are visually, aurally, and conceptually close. The opponent’s mark, though not highly distinctive, was still deemed strong enough to create a risk of confusion.

Conclusion

This case highlights the importance of considering both the conceptual and phonetic aspects of trademarks in opposition proceedings. Even when a mark is invented, its conceptual connection to a known word or idea (such as “scent” in this case) can lead to confusion if the marks are visually and aurally similar.

For brand owners, particularly those in sectors like fragrance and cosmetics, this decision reinforces the importance of thoroughly assessing the similarity of marks, even with minor alterations in construction.

---

Source: