Opposition Procedure German Trademark
Order of examination
The request to oppose a trademark is examined in a specific order
Likelihood of Confusion
(Verwechslungsgefahr)
In accordance with generally accepted principles likelihood of confusion would arise when the risk exists that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings [1]. The existence of a likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case [2] [3] [4] [5].
Relevant factors could be for example the fact, that the earlier mark is a common surname, so that the distinctive character of the earlier mark may be weakened or the fact, that the later mark is the full name of a famous person, so that the relevant public would pay more attention to the famous name than usual, thus lessening the likelyhood of confusion.
In Case C‑51/09 P "Barbara Becker" the earlier mark “BECKER” opposed the registration of the later mark “Barbara Becker”. On Appeal level the General Court, referring to Case T-185/03 Fusco v OHIM – Fusco International (ENZO FUSCO) [2005] ECR II‑715, paragraph 54, stated since in a part of the European Union the component ‘Becker’ in the mark Barbara Becker is a surname, the relevant public was likely to have attributed to it a stronger distinctive character than the component ‘Barbara’, which is simply a first name. As the conflicting trade marks are conceptually similar the General Court denied an effect on the similarity of the conflicting marks by the fact that Ms Becker is famous in Germany as the former wife of Boris Becker, without giving any reason why this would have no effect As a second reason the General Court referred to that the relevant public keeps an imperfect picture of the marks at issue in its mind, but again the General Court did not discuss why in the present case this rule could be applied. Does the full name of a famous person really has the same effect, e.g. no or almost no effect, as the full name of a person unknown to the world?
The ECJ observed that the General Court did not discuss the fact that the surname ‘Becker’ is common and therefore does not have an as distinctive character as an unusual surname. The General Court also did not reflect on the influence of the name of a famous person on the perception of the public. Thus the General Court missed to take into account all relevant factors of the case. The ECJ therefore referred the case back to the General Court as the General Court erred in law in basing its assessment of the conceptual similarity of the marks on general considerations taken from the case-law without analysing all the relevant factors specific to the case
For the assessment of the likelihood of confusion the decisive factors to be considered are:
- the distinctiveness of the earlier mark,
- the degree of similarity of the conflicting signs and
- the similarity of the goods and/or services covered by the conflicting signs.
The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood [6] [7]. The starting point is the targeted public in Germany covering all relevant sectors where the trademark in question by virtue of the claimed products could be used or may have an impact [8]. The relevant consumer is not a hasty one but a reasonably well-informed and reasonably observant and circumspect consumer [9] [10] [11].
It has to be kept in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question. The customer’s attentiveness will be increased for services relating to high-quality items, such as offering and sale of high priced real estate, or for items which require highly specific scientific and technological knowledge [12].
Principle of interdependance
It is understood that under the principle of the interdependence of relevant factors, in particular the similarity between the trade marks and between the goods or services covered, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa [13] [14] [15] [16] [17] [18] [19] [20] [21].
Furthermore, according to the case-law of the ECJ, the more distinctive the earlier mark, the greater the risk of confusion [22]. Since protection of a trade mark depends on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character [23].
Similarity of Goods and Services
(Ähnlichkeit der Waren und Dienstleistungen)
In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary [30] [31] [32] [33].
Distinctivenes of the mark on which the opposition is based
(Kennzeichnungskraft der Widerspruchsmarke)
The distinctive character of a trade mark determines the scope of protection enjoyed by it and therefore constitutes the basis for assessing the likelihood of confusion.
Distinctiveness is the ability of the sign to enable the relevant public to memorise the sign due to its characteristics, i.e. to perceive the sing as an indication of origin, to remember it, and to recognize it [40] [41]. The more distinctive the earlier mark, the greater will be the likelihood of confusion, the larger the scope of its protection, the greater will be the likelihood of confusion [42] [43] [44] [45]. Marks with a highlydistinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character [46].
In case distinctiveness of a mark has not been acquired through use but the mark is distinctive per se, i.e. the trademark possesses normal distinctiveness and has the capacity to identify the commercial origin of the relevant goods or services then the distinctive character of the mark is average [47] [48] [49].
Reinforcement of the distinctive character
(Steigerung der Kennzeichnungskraft)
The distinctive character of the earlier trade mark may be reinforced by its widespread use as a trade mark. The trade mark proprietor of the earlier trade mark has to submit arguments and provide credible evidence why his trade mark has become reinforced.
The rule of the priority of registration stipulates that in case of an enlargement of the protection of an earlier sign, the conditions for the enlargement must already exist at the time the conflicting trade mark is obtained [50]. That means that the reinforcement of the distinctive character of a trade mark has to be established on the day which is relevant for the seniority of the conflicting sign [51] [52]. A reinforcement of the distinctive character that may constitute the likelihood of confusion, but has been acquired later must be ignored, as the originally acquired legal position by the proprietor of the later trade mark has become irrevocable in this respect [53] [54].
Required difference between the conflicting signs
(Erforderlicher Zeichenabstand)
By having explored the distinctive character of the earlier trade mark and the similarity between the designated goods of the earlier trademark and the later trademark the degree of difference could be defined eventually. The degree of difference indicates which distance from the earlier sign the later sign has to respect in order not to raise any likelihood of confusion.
Applying the above cited rule of interdependence in case the distinctive character of the earlier sign is high, for example by a reinforcement due to intensive use and the products and services used by both signs are identical then the later sign has to keep a great distance from the earlier sign in order to avoid any likelihood of confusion. On the other hand, in the event the earlier sign is weak, as it is almost descriptive and was not or hardly used and the products and/or services used by both signs are similar, then a small difference is sufficient to avoid likelihood of confusion.
Similarity of earlier mark and later mark
Zeichenähnlichkeit
The global appreciation of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components [60] [61] [62].
In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details [63] [64]. In general, similarity in one of the visual, aural or conceptual aspects suffices to demonstrate that there is a likelihood of confusion between the two marks [65] [66] [67] [68].
Considering that the relevant public regularly does not perceive the sings next to each other at the same time and therefore is not able to compare them, the relevant public will obtain its perception most of time from an imperfect recollection of one of the signs [69] [70] [71] [72].
However, global assessment means that conceptual and visual differences between two signs may counteract aural similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately [73] [74].
[1] ECJ Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17
[2] ECJ Case C-251/95 SABEL [1997] ECR I-6191, paragraph 22;
[3] ECJ Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 18
[4] ECJ Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 40
[5] ECJ Case C-3/03 P Matratzen Concordv OHIM [2004] ECR I-3657, paragraph 28
[6] EuGH GRUR 2005, 1042 - THOMSON LIFE, paragraph 28
[7] EuGH GRUR 2008, 343 - BAINBRIDGE, paragraph 33
[8] EuGH GRUR 2004, 428 (Nr. 65) - Henkel
[9] EuGH GRUR 2006, 411 (Nr. 24) Matratzen Concord/Hukla
[10] EuGH GRUR 1999, 723 (Nr. 29) Chiemsee
[11] Ströbele/Hacker, MarkenG, 10. Aufl., § 9 Rd. 81, § 8 Rd. 29 ff.
[12] BPatG 33 W (pat) 523/13
[13] EuGH GRUR 1998, 387 (Nr. 22) - Springende Raubkatze
[14] EuGH GRUR 1998, 922 (Nr. 17) - Canon
[15] EuGH GRUR 2008, 343 (Nr. 48) - BAINBRIDGE
[16] BGH GRUR 2008, 1002 (Nr. 23) - Schuhpark
[17] BGH GRUR 2008 (Nr. 13) – Pantogast
[18] BGH GRUR 2010, 1103 (Nr. 37) - Pralinenform II
[19] BGH GRUR 2011, 824 (Nr. 19) - Kappa/KAPPA
[20] BGH GRUR 2010, 235 (Nr. 15) - AIDA/AIDU
[21] BGH GRUR 2012, 1040 (Nr. 25) - pure/pjur).
[22] ECJ Case C-251/95 SABEL [1997] ECR I-6191, paragraph 24;
[23] EuGH GRUR 1998, 922 (Nr. 18) - Canon
[24] -[29] reserved for future use
[30] ECJ Case C-39/97 “Canon”, paragraph 23
[31] ECJ Case T-203/02 “VITAFRUIT”, paragraph 65
[32] BGH I ZR 34/98 EVIAN/REVIAN
[33] BGH I ZR 94-04 – Kinderzeit
[34] - [39] reserved for future use
[40] BGH GRUR 2012, 1040 (Nr. 25) - pure/pjur
[41] Ingerl/Rohnke, MarkenG, 3. Aufl. § 14 Rd. 497
[42] EuGH GRUR 1998, 387 (Nr. 18, 24) - Springende Raubkatze
[43] EuGH GRUR Int. 1999, 734 (Nr. 20) - Lloyd Schuhfabrik
[44] EuGH GRUR 1998, 922 (Nr. 18) - Canon
[45] BGH GRUR 2006, 60 (Nr. 14) - coccodrillo
[46] EuGH GRUR 1998, 922 Canon, paragraph 18
[47] Ströbele/Hacker, MarkenG, 10. Aufl., § 9 Rd. 128
[48] Ingerl/Rohnke, MarkenG, 3. Aufl. § 14 Rd. 532
[49] vgl. EuGH GRUR Int. 1999, 734 (Nr. 22) - Lloyd Schuhfabrik)
[50] BGH GRUR 2003, 428, 433 – BIG BERTHA
[51] Ströbele/Hacker, MarkenG, 10. Aufl., § 9 Rd. 187
[52] BGH GRUR 2008, 903 (Nr. 14) – SIERRA ANTIGUO
[53] BGH GRUR 2003, 428, 433 – BIG BERTHA
[54] Ingerl/Rohnke, MarkenR, 3. Aufl., § 22 Rd. 4, 5
[55] - [59] reserved for future use
[60] Case C‑51/09 (Nr. 33) - Barbara Becker, paragraph 33
[61] BGH, GRUR 2012, 64 (Nr. 9) - Maalox/Melox-GRY
[62] BGH GRUR 2012, 1040 (Nr. 40) - pure/pjur)
[63] Sabel 23
[64] EuGH GRUR 2006, 413 (Nr. 21) - ZIRH/SIR
[65] BGH WRP 1999, 192 (194) - PATRIC LION/Lions
[66] BGH GRUR 2011, 824 (Nr. 26) - Kappa/KAPPA
[67] BGH GRUR 2006, 60 (Nr. 17) - coccodrillo
[68] EuGH GRUR 2006, 413 (Nr. 19) - ZIRH/SIR
[69] BGH GRUR 2006, 859 (Nr. 17) - Malteserkreuz.
[70] ECJ Case C‑254/09 - CK Creaciones Kennya/CK Calvin Klein, paragraph 45
[71] EuGH GRUR 2010, 933 (Nr. 33) - BARBARA BECKER/ BECKER
[72] Ströbele/Hacker, Markengesetz, 10. Auflage, § 9 Rd. 220 m.w.N.
[73] ECJ Case C‑361/04 P Ruiz-Picassoand Others v OHIM [2006] ECR I‑0000, paragraph 20
[74] ECJ Case C-206/04 ZIRH/SIR, paragraph 35