Federal Patent Court, 06.07.2010, Ref.: 24 W (pat) 23/10
Pursuant to Section 3 (1) MarkenG, all signs, in particular words including personal names, images, letters, numbers, sounds, three-dimensional designs including the shape of a product or its packaging and other forms of presentation including colours and colour combinations, which are capable of distinguishing the goods or services of one undertaking from those of other undertakings may be protected as trade marks.
In Germany, the German Patent and Trade Mark Office ("DPMA") is responsible for the registration of trade marks as the central authority in the field of industrial property protection in Germany.
However, in order to be recognised as a word mark by the DPMA, the respective trade mark must have a certain degree of originality. It is therefore necessary to search whether trade marks are already registered with which the respective trade mark application could conflict.
The DPMA examines the trade mark application for absolute grounds for refusal (see Section 8 MarkenG). Absolute grounds for refusal are, for example, the lack of distinctive character of the trade mark, descriptive indications to be kept free for general use, a clear risk of being misleading, signs of public authority contained in the trade mark or an offence against public morality or public order.
The Federal Patent Court (BPatG) is responsible for deciding on appeals against decisions of the DPMA on the granting of patents, utility models, trade marks, etc. The BPatG specialises in the protection of industrial property rights and has nationwide jurisdiction. This is a court specialising in the protection of industrial property rights with the rank of a higher regional court with nationwide local jurisdiction.
In the above-mentioned decision, the Federal Patent Court now had to decide whether the opposition of the proprietor of the trade mark "EpiTect" against the trade mark "Epitest" was successful.
FactsThe opponent registered the word mark "Epitest" with the German Patent and Trade Mark Office in classes 01, 05 and 42. The opponent and proprietor of the word mark "EpiTect" (classes 01, 05, 09) filed an opposition against this.
The competent trade mark office of the DPMA denied a likelihood of confusion between the comparative marks within the meaning of Section 42 (2) No. 1 MarkenG in conjunction with Section 9 (1) No. 2 MarkenG and rejected the opposition by decision pursuant to Section 43 (2) sentence 2 MarkenG.
Federal Patent CourtThe BPatG followed the view of the opponent and ruled that there was a direct likelihood of confusion between the comparative marks, at least in terms of the typeface, within the meaning of Section 9 (1) No. 2 MarkenG, which must lead to the cancellation of the contested mark in accordance with the application pursuant to Sections 43 (2) sentence 1, 42 (2) No. 1 MarkenG.
The assessment of the likelihood of confusion within the meaning of Section 9 (1) No. 2 MarkenG must be carried out comprehensively, taking into account all circumstances of the individual case. An interaction between the assessment factors of the identity or similarity of the goods/services, the identity or similarity of the trade mark and the distinctiveness of the opposing trade mark must be assumed in such a way that a lower degree of similarity of the goods/services can be offset by a higher degree of similarity of the trade marks or the distinctiveness of the earlier trade mark and vice versa.
There is a partial identity of goods and a high degree of similarity between the goods in Class 1 and Class 5 covered by the opposing trade mark and the contested goods in the same classes of goods.
Furthermore, contrary to the view of the proprietor of the contested trade mark, there is also a high degree of similarity between the opposing goods in Classes 1 and 5 and the services in Class 42 claimed with the contested trade mark. In principle, a similarity between goods and services can also exist (see BGH GRUR 1999, 731, 733 "Canon II"; GRUR 2004, 241, 243 "GeDIOS"), although the fundamental differences between the provision of a non-physical service and the manufacture or distribution of a physical product must be taken into account in this respect. The decisive factor in this context is also whether the relevant public can get the impression that the goods and services are under the control of the same company, whether the service company is independently involved in the manufacture or distribution of the goods, or whether the manufacturer or distributor of the goods is also independently commercially active in the corresponding service sector. These requirements are to be affirmed here.
Source: Federal Patent Court
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