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BGH on risk of confusion in trademark law

October 2017

Anyone registering a trademark needs to make sure that no rights pertaining to an existing trademark will be infringed and that there is no risk of confusion between the trademarks.

Trademarks are of great important to businesses. They improve brand recognition from the perspective of consumers and contribute to customer loyalty. Violating existing trademark rights can give rise to tough sanctions. In its ruling of March 2, 2017, the Bundesgerichtshof (BGH), Germany’s Federal Supreme Court, held that when it comes to assessing whether a word mark or its components describe the goods or services covered, it does not come down to the importance or meaning the trademark owner attaches to the word mark. We at the commercial law firm GRP Rainer Rechtsanwälte note that the Court clarified that it is in fact the perspective of the audience being addressed which is decisive (Az.: I ZR 30/16).

It went on to say that it is possible by way of exception to negate the risk of confusion between two marks despite there being phonetically and visually similar if the marks’ conceptual content is clearly divergent and this is readily discernible. On the other hand, the BGH ruled that if the meaning is only evident following an analytical examination then this is insufficient for these purposes.

The Bundesgerichtshof had to rule on a trademark dispute between two pharmacies. The plaintiff is the owner of a word mark, part of whose name includes the word “Medicon”, as well as a corresponding word/image mark. The defendant made use of a similar term, which merely omitted the letter “n”. The plaintiff viewed this as a violation of its licensed trademark.

While the legal action was unsuccessful before the courts of lower instance, with the Oberlandesgericht (OLG) Hamm [Higher Regional Court of Hamm] proceeding on the assumption that there was no risk of confusion between the trademarks, the BGH took a different view.

The OLG had started from the premise that the trademark under dispute had very little and far below average distinctive character, consisting of a series of descriptive and undistinctive words strung together, whose content was said to be readily apparent to its audience without the need to carry out any analysis. Notwithstanding this, the BGH ruled that when determining the distinctiveness of a trademark one needs to focus on the overall impression of the mark, and that the audience generally tends not to dissect and analyse a trademark. It therefore concluded that a similarity between marks cannot be negated.

Lawyers who are experienced in the field of intellectual property law can advise companies on all issues relating to trademark law.

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