Trademark Insight 04/2023 – European Union & Germany – Current decisions on trademark law from Germany, Alicante & Luxembourg | Hogan Lovells

Dear readers,

In this issue of TRADEMARK INSIGHT we have once again compiled some interesting decisions of the recent months. Below you will find our summaries of decisions of German courts, the EUIPO Boards of Appeal and the GC, which are concise as usual. Of particular interest are the decisions on the use of a (descriptive) word mark preserving the rights (GOURMET), on the influence of a word element on a designed word/figurative mark by the word element (CRUSH), on the similarity of luggage and clothing (POLO CLUB) and on the risk of deception of the sign “JUST EGG” for non-animal products.

We welcome your feedback and suggestions by email to trademark.insight@hoganlovells.com.

We hope you find our summaries useful reading and enjoy them.

Thorsten Klinger und Dr. Andreas Renck

Index

• Genuine use of a “GOURMET” trade mark (GC)
• Likelihood of confusion between “Valensina” and “VINHA DA VALENTINA” (EUIPO)
• Distinctiveness of the sign “DREIZACK” (BPatG)
• Influence of a word element on a designed word/figurative mark (GC)
• Distinctiveness of a bottle shape mark (EUIPO)
• Likelihood of confusion between “HE&ME” and “ME” (GC)
• Use of a registered eagle-in-a-circle trade mark in an altered form (EUIPO)
• Violation of the principle of morality by the trade mark application “Narayana” (BPatG)
• Similarity of luggage (class 18) and clothing (class 25) (GC)
• Risk of deception of “JUST Egg” for non-animal products (EUIPO)
• Likelihood of confusion between “Centra” and “Centaura” (BPatG)
• Distinctiveness of “Metaverse FOOD” (EUIPO)
• Likelihood of confusion between “Sympathy Inside” and “INSIDE.” (GC)
• Likelihood of confusion between “flyblueair.com” and “FLYING BLUE” (EUIPO)
• Likelihood of confusion between “A.W.R.” and “AW” (EUIPO)

In invalidity proceedings against the EU trade mark “Gourmet”, shown below on the left, the EU General Court recently dealt with questions regarding genuine use. The application for invalidity was based on a likelihood of confusion with the earlier Spanish word mark “GOURMET”, which – like the contested mark – is protected for various foodstuffs in class 30.

While the invalidity applicant was unsuccessful before the Cancellation Division and the Board of Appeal, as from the EUIPO’s point of view the applicant was unable to prove genuine use of the earlier mark as a trade mark, the applicant’s action before the General Court successful.

In the GC’s view, the Board of Appeal was correct in assuming that the element “gourmet” is descriptive. However, the assumption that the sign as a whole lacked distinctive character was erroneous in law. After all, a minimum degree of distinctiveness must always be attributed to registered trade marks.

Furthermore, the Office erred in law in not recognizing that the signs shown at the bottom centre and on the right showed genuine use of the earlier word mark as registered, taking into account in particular that the protection conferred by a word mark exists irrespective of its specific configuration.

Neither the graphic design of the word element “gourmet”, nor the white chef’s hat or the other graphic elements, were capable to alter the distinctive character of the earlier trade mark “GOURMET”. Despite its low distinctiveness, the word element dominates the whole image. Overall, the Office erred in law in denying proof of use of the earlier mark as a trade mark, with the result that the Board of Appeal’s decision was annulled.

(EuG, judgment of 1.3.2023, T-102/22)

Likelihood of confusion between “Valensina” and “VINHA DA VALENTINA” (EUIPO)

In opposition proceedings, the EUIPO Board of Appeal dealt with the likelihood of confusion between “Valensina” (trade mark applied for) and “VINHA DA VALENTINA” (earlier trade mark), each claiming protection for goods in class 33. The Opposition Division had previously upheld the opposition.

The appeal filed against this decision was unsuccessful. The Board of Appeal first dealt with the similarity of goods. In principle, only the registered goods are to be considered for this, without any actual acts of use being relevant. Due to pending revocation proceedings brought by the applicant against the opponent and in order to avoid a stay of proceedings, the Board of Appeal, like the Opposition Division before it, limited the comparison of goods to wines with regard to the goods claimed by the opponent.

There is a fundamental similarity of goods between the ones claimed by the mark applied for (alcoholic beverages (other than beer), excluding wines and sparkling wines) and the wines claimed by the earlier mark, as is also shown by a comprehensive catalogue of earlier decisions.

For the comparison of the signs, the Portuguese public is relevant, which correctly understands the word elements ‘VINHA DE’ of the opposing mark in the sense of ‘wines from’. Because of the descriptive effect for that public, the element ‘VALENTINA’ in the opposing mark is the distinctive element. In the mark applied for, the public would only perceive the word element ‘Valensina’ as distinctive, since the other elements were decorative or descriptive of the goods claimed. It could not be assumed that the public would understand “Valensina” as a reference to the region of Valencia, even if it was known for orange cultivation.

In the comparison of the signs, therefore, the elements ‘Valensina’ and ‘VALENTINA’ were standing opposite each other, which had an average visual and phonetic similarity. Consequently, the Opposition Division correctly assumed that there was a likelihood of confusion between the signs.

(EUIPO, decision of 6.2.2023, R 380/2022-2)

Distinctiveness of the sign “DREIZACK” (BPatG)

The German Federal Patent Court (BPatG) recently ruled on the distinctiveness of the word mark “DREIZACK” (German for trident). Previously, the German Patent and Trademark Office (DPMA) had refused the application on the basis of lack of distinctiveness and because of a need to keep the mark free for the jewelry and jewelry goods, jewelry and watch containers, timing devices, bracelets and necklaces claimed in Class 14. According to the DPMA, the sign is frequently reproduced in the jewelry sector in the motif or shape of the goods claimed and is therefore descriptive. Also a so called “reminder”-proceeding (revision of the decision within the same instance) was unsuccessful despite the restriction of the list. In the appeal proceedings, the applicant limited the list of goods and services, by adding wording such as “…with ornaments in the form of plants”, “…with ornaments in the form of geometric shapes” or similar.

The BPatG now almost completely overturned the decision of the DPMA. The court confirmed that a trident is a (quasi-) religious symbol that appears in Greek mythology, Hinduism and Christianity, among others. The symbol also has political and military significance. In the jewelry and watch sector in particular, motif-oriented designs play a special role. This applied in particular to motifs from religion, mythology and fairy tales. All of the claimed goods were regularly designated by a literal designation of their motif.

For a vast majority of the claimed goods, the subsequently added restrictions prevented a descriptive character and the existence of a need to keep the sign free. Nevertheless, despite the extensive and detailed restriction there were still some goods that the term “Driezack” had to be interpreted as descriptive for, since it could not be ruled out that some of the claimed shapes could also represent a trident. In the case of ‘rings with ornaments in the form of figures’ for example, the court held that the figure itself may be a trident or a representation of the sea god Poseidon or Neptune with his trident in his hand. The application therefore had to be rejected for such goods.

(BPatG, decision of 27.2.2023, 26 W (pat) 52/20)

Influence of the word element on a designed word/figurative mark (GC)

In opposition proceedings on the ground of likelihood of confusion between the two signs shown below (both claiming protection for goods in Classes 16 and 28), the GC commented on the effect of an identical word element in the case of a detailed graphical design of the earlier mark. Previously, the Opposition Division and Board of Appeal of the EUIPO, had found a likelihood of confusion. The EUIPO decisions have now been confirmed by the GC, as there is a likelihood of confusion between the trade mark applied for shown below on the left and the earlier trade mark shown below on the right.

First, the court held that the EUIPO did not err in law in finding that the goods and services claimed were in any event similar. The word element ‘CRUSH’ in the earlier mark was just as distinctive as the figurative element representing a safe. In the trade mark applied for, the word elements “The” and “Series” were only very weakly distinctive or not distinctive at all. Since the stars would be perceived as purely decorative, the two signs would therefore contrast with the (at least distinctive) word elements “crush”. A comparison of the signs as a whole showed a below-average visual similarity, an average phonetic similarity and a low conceptual similarity.

In particular, the figurative elements in the earlier trade mark and the additional word elements and stars in the trade mark applied for did not allow a different result due to the characterization of both signs by the word element ‘crush’.

(EuG, judgment of 1.3.2023, T-295/22)

Distinctiveness of a bottle shape mark (EUIPO)

In examination proceedings, the EUIPO’s Board of Appeal dealt with the distinctive character of the shape mark shown below for various goods in Class 30, including sauces, dressings and spices. The application had been refused protection as an EU designation of an International Registration by the EUIPO’s first instance due to lack of distinctiveness.

The appeal against this was unsuccessful. The Board of Appeal held that, because the claimed goods are everyday consumer goods, they are aimed at the average consumer. Although the same requirements for distinctive character apply to shape marks as to other types of trade marks, according to the Board of Appeal, experience shows that the public does not generally perceive shapes as indicators of commercial origin. This was particularly true in the foodstuffs sector. Therefore, as a rule, only those shapes which depart significantly from the norms and customs of the respective market have distinctive character.

These requirements were not met by the shape in question. The overall impression of the bottle design did not differ sufficiently from other bottles available on the market. The surrounding decorative border in the middle of the bottle did not change this, as in the view of the public it had only an aesthetic function. The Japanese characters “エバラ” – if they are at all perceived – also do not help to render the sign distinctive. The vast majority of the public would not attach any meaning to these signs, but would perceive them as a general reference to Japan or Asia, without any further expressive content. Overall, the shape therefore had no (design) elements capable of indicating commercial origin.

(EUIPO, decision of 6.2.2023, R 1975/2022-4)

Likelihood of confusion between “HE&ME” and “ME” (GC)

In opposition proceedings, the GC dealt with the likelihood of confusion between the signs “HE&ME” (trade mark applied for) and “ME” (earlier trade mark), each claiming goods in class 25. After rejection of the opposition by the EUIPO Opposition Division, the Board of Appeal assumed that there was a likelihood of confusion.

The action brought against this before the GC was unsuccessful. The court held that the element “HE” of the trade mark applied for was descriptive of the gender of the target group of customers of the claimed goods and was therefore weakly distinctive. In any case, the additional elements of the trade mark applied for were not more distinctive than common element “ME”. The fact that the element ‘me’ appears at the end of the sign applied for does not mean that the relevant public will attach less weight to it, as both signs are relatively short. The earlier trade mark is identically contained in the trade mark applied for and is as such also recognizable because of the “&” symbol. Visually and phonetically, the signs are similar to an average degree.

The signs claimed identical and averagely similar goods. Against this background, according to the GC, the mark applied for does not keep the required distance to the earlier mark. Therefore, as correctly held by the Board of Appeal, there is a likelihood of confusion.

(EuG, judgment of 1.3.2023, T-25/22)

Use of a registered eagle-in-a-circle trade mark in an altered form (EUIPO)

In cancellation proceedings based on non-use, the EUIPO Board of Appeal recently dealt with the genuine use of the trade mark shown below on the left. Despite extensive evidence provided by the trade mark owner, the EUIPO Cancellation Division had previously largely granted the revocation application. The appeal filed by the trade mark proprietor against this was then partially successful.

The Board of Appeal concluded that the evidence submitted proved use for some of the goods. The central issue in dispute was the question whether the used signs were an alteration of the distinctiveness of the registered trade mark and could therefore not be considered as a use of that trade mark. The revocation applicant argued that the forms of use shown in second to fourth place below were not to be regarded as an acceptable variation of the eagle-in-a-circle mark, especially as in a large part of the evidence the eagle symbol was shown in combination with the word elements “AMERICAN EAGLE OUTFITTERS”, which were distinctive in themselves.

The Board of Appeal found, in line with the Cancellation Division, that EU trade mark law does not require that the sign is used on its own. It can be displayed on goods in combination with other trademarks and still constitute a genuine use. This applies even if the combination of the marks is protected as a trade mark in itself. Furthermore, the omission of the circular arrow elements did not lead to a different distinctive character, as they were not distinctive. The form of use displayed in the evidence therefore did not constitute an alteration from the registered form preventing the assumption of genuine use.

(EUIPO BoA decision of 15.2.2023, R 497/2022-5)

Violation of the principle of morality of the trade mark application “Narayana” (BPatG)

The German Federal Patent Court (BPatG) recently had to deal with the question of whether the application for the word mark “Narayana” for a variety of goods and services in classes 3, 5, 16, 25, 29, 30, 31, 32, 35, 41 and 44 violated the principles of morality. The German Patent and Trademark Office (DPMA) had previously assumed this to be the case and rejected the application in its entirety, since the term was the designation of an Indian god (“Narayana” literally means “the one coming out of the water” or “eternal man”). The commercialization of this term by granting a trade mark as an exclusive right in commercial transactions contradicted the religious and ethical values of the relevant public familiar with Hinduism and was therefore perceived as offensive.

The BPatG largely upheld the appeal against this decision. According to the court, the sign was only precluded from protection with regard to printed matter, teaching and instruction materials (Class 16), education (Class 41) and meat and meat extracts (Class 29).

The ground for refusal of violation of the principle of morality claimed by the DPMA only applied to meat products and meat extracts. After all, the worship of the cow as a sacred and inviolable animal is a general principle of Hinduism which is also known in Germany. In view of the prohibition on killing cows and eating their meat, which is very important to Hindu believers, the term “Narayana” as the name of a deity to designate meat (including cow meat) intended for consumption must be regarded as offensive. For the other goods and services claimed, on the other hand, the sign did not constitute an infringement of the principle of morality. Still, for above mentioned goods and services besides meat and meat extracts, “Narayana” constituted a descriptive indication, as these could be thematically related to the term.

The decision of the DPMA therefore largely had to be annulled, except for above mentioned goods and services. However, due to the legal questions on religious terms underlying this decision, which were relevant for the decision, the BPatG allowed an appeal on points of law to the German Federal Court of Justice (BGH).

(BPatG, decision of 8.3.2023, 29 W (pat) 548/20)

Similarity of luggage (class 18) and clothing (class 25) (GC)

In the present invalidity proceedings on the grounds of likelihood of confusion, the GC essentially dealt with a comparison of goods in classes 18 and 25. The earlier trade mark (displayed below on the left) was registered for luggage (class 18), while the contested trade mark (displayed below on the right) claimed protection for clothing goods in class 25.

After the Cancellation Division and the Board of Appeal had dismissed the invalidity application due to a lack of similarity of the goods, the invalidity applicant filed an action before the GC. According to the applicant, the goods luggage also include handbags and there exists a similarity of goods between handbags and clothing. The GC rejected this argument and denied a similarity of goods: luggage did not include handbags. While consumers, when purchasing luggage, paid attention, among other things, to a sufficient size for travelling, they would make a choice based more on their personal taste when buying handbags.

Furthermore, the GC denied a similarity of goods between luggage and clothing, as these goods were different in nature and each served a different purpose. Luggage was used to transport objects when travelling. Articles of clothing, on the other hand, were used to cover, protect and clothe the body. For this reason, manufacturers and distribution channels were also fundamentally different. The applicant had not proved that the public usually matched luggage and clothing and that, from the consumer’s point of view, there was a close aesthetic connection between the two goods. Despite the similarity of the signs, which had been recognized in all instances without further ado, there was therefore no likelihood of confusion.

(EuG, judgment of 1.3.2023, T-217/22)

Risk of deception of “JUST Egg” for non-animal products (EUIPO)

The EUIPO Board of Appeal considered the question of whether the application for the EU trade mark “JUST Egg” shown below posed a risk of deception to consumers, since protection was claimed (amongst other goods) for herbal or non-animal goods in Class 29.

After the applicant filed an appeal against the refusal of the application, the Board of Appeal likewise found that there was a risk of deception. The English-speaking public understands “JUST Egg” to mean that the protected goods consisted exclusively of egg or egg products. However, the application claimed protection for non-animal goods. The sign thus contradicted the claimed list of goods and indicated characteristics which the goods did not have. That the public would perceive “JUST Egg” in the sense of an ironic message as a “just egg” (in the sense of an egg produced without animal suffering on a purely vegetable basis) was not obvious in view of the direct message of the application.

Even if the question of the risk of deception depended on the design of the packaging, the packaging submitted in the dispute would in any case be unsuitable for eliminating the risk of deception.

(EUIPO BoA decision of 16.2.2023, R 1917/2022-4)

Likelihood of confusion between “Centra” and “Centaura” (BPatG)

The German Federal Patent Court (BPatG) recently ruled in opposition proceedings on the likelihood of confusion between the trade mark applied for “Centra” shown below and the opposition mark “Centaura”, each protected for goods in classes 1, 3 and 5. The German Patent and Trademark Office (DPMA) had previously denied a likelihood of confusion.

The BPatG now confirmed the rejection of the opposition. The two signs were not capable of being confused. It was true that the signs claimed identical or at least similar goods. Nevertheless, in view of the normal distinctiveness of the earlier mark, the trade mark applied for still preserves a sufficient distance from the earlier mark.

In the context of the visual comparison of the signs, the signs differ in any case in the figurative element contained in the mark applied for. However, the figurative element does not dominate the contested mark to such an extent that it takes precedence in the designation of the sign. Furthermore, it must be taken into account that in the recollection of the public, the written word – unlike the rapidly fading spoken word – regularly enables the public to perceive the sign more precisely and repeatedly, so that it remains in the public’s memory better than the spoken word. The signs “Centra” and “Centaura” clearly differed in sound and image, in the number of syllables, vowel sequence, intonation and speech rhythm. Thus, even under unfavorable conditions of transmission, it was always possible to distinguish between them with certainty. From a conceptual point of view, there was no correspondence due to the reference to the English adjective “central” or the term “centaur” from Greek mythology.

There was therefore no direct likelihood of confusion and also no likelihood of confusion by association.

(BPatG, decision of 1.2.2023, 26 W (pat) 592/20)

Distinctiveness of “Metaverse FOOD” (EUIPO)

In this decision, the Board of Appeal confirmed the EUIPO-examiners assessment that the EU trade mark application “Metaverse FOOD” was devoid of distinctive character for (amongst other goods) foodstuffs and pharmaceutical preparations in classes 5, 29 and 30.

The term “Metaverse FOOD” would be understood by the relevant public as “food in a virtual space”. This was a non-distinctive reference to food or pharmaceutical preparations which were offered in a virtual space or could be purchased there.

The applicant’s argument that METAVERSE was a clearly defined and delimited category within the virtual world which should not be confused with other online activities was not considered valid by the Board of Appeal. In the Board’s view, there was no clearly defined category of METAVERSE. Even the boundaries between the virtual and the real world were not so clear. There was much to suggest that the metaverse was the next stage of online commerce, within which services were provided virtually in order to increase sales of goods in the real world. The refusal of the application for lack of distinctive character was not vitiated by an error of law.

(EUIPO BoA decision of 28.2.2023, R 2357/2022-2)

Likelihood of confusion between “Sympathy Inside” and “INSIDE.” (GC)

In opposition proceedings, the GC recently dealt with the likelihood of confusion between the word marks “Sympathy Inside” (trade mark applied for) and “INSIDE.” (earlier trade mark), both claiming protection in classes 25 and 35. The Opposition Division and the Board of Appeal of the EUIPO both assumed that there was a likelihood of confusion and rejected the mark applied for.

The GC now confirmed the Board of Appeal’s decisions and also assumed a likelihood of confusion between “Sympathy Inside” and “INSIDE. The trade mark applied for, consisting of two equally distinctive word elements, reproduces the only word element of the earlier trade mark, which had an average degree of distinctiveness. The dot at the end of the earlier mark is not immediately apparent to the public and must therefore be disregarded.

From a visual and phonetic point of view, the presence of the additional element ‘sympathy’ in the mark applied for results in a below-average similarity of the signs. Moreover, for the English-speaking public, there is an average degree of conceptual similarity. Finally, the opponent had succeeded in proving, by means of extensive evidence, a considerable market share and, as a result, an enhances distinctiveness acquired through use. Taking all the circumstances into account, there exists a likelihood of confusion.
(EuG, judgment of 8.3.2023, T-372/21)

Likelihood of confusion between “flyblueair.com” and “FLYING BLUE” (EUIPO)

In opposition proceedings concerning the likelihood of confusion between the figurative trade mark “flyblueair.com” (trade mark applied for) and the word mark “FLYING BLUE” (earlier trade mark), the EUIPO Board of Appeal recently focused on the comparison of goods and services in the context of a frequent flyer loyalty program.

Specifically, the question was whether the contested mobile phone apps (class 9), transport services (class 39) and accommodation (class 43) were similar to the advertising measures for retaining customers and staff and administration of a loyalty program in the field of air transport (class 35) claimed by the earlier mark. The Opposition Division previously denied the existence of a likelihood of confusion due to a lack of similarity of the goods and services. The opponent appealedt this decision.

The Board of Appeal, on the other hand, took the view that there was at least a low degree of similarity between the opposing goods and services. Frequent flyers would also be able to redeem the collected miles or points via mobile phone apps. The collected points or miles would later be used for different services such as hotel, flight, restaurant or car rental bookings. This was sufficient for the Board of Appeal to assume a sufficiently close connection, even though the applicant had restricted the classes concerned by the addition of with the exception of services in connection with customer loyalty programs.

As the parties did not challenge the Opposition Division’s findings on the degree of similarity of the signs, which was at least average in all respects, this was no longer relevant before the Board of Appeal. Overall, the Board of Appeal found that there was a likelihood of confusion.

(EUIPO BoA decision of 24.2.2023, R 1682/2022-1)

Likelihood of confusion between “A.W.R.” and “AW” (EUIPO)

In opposition proceedings, the EUIPO Board of Appeal ruled on the likelihood of confusion between the signs “A.W.R.” (trade mark applied for) and “AW” (earlier trade mark), each claiming protection for goods in class 25. The Opposition Division had previously found a likelihood of confusion. The applicant then appealed this decision.

The Board of Appeal dismissed the appeal as unfounded. The goods claimed were identical or at least similar to an average degree. Furthermore, neither of the two signs had any meaning from the point of view of the relevant public. The signs differed in the additional letter “R” and the dots. On the basis of the principle of imperfect recollection, it had to be taken into account that the earlier sign “AW” was included entirely and in exactly the same order in the mark applied for. This coincidence has considerable weight, especially as it concerns a considerable amount of letters in the sign. The impression is reinforced by the position of the identical elements at the beginning of the sign. Both visually and phonetically, there was at least an average similarity between the signs.
(EUIPO, decision of 9.2.2023, R 161/2022-2)

Disclaimer: Please note that the decisions included in this newsletter are a subjective selection of relevant trademark decisions made by the authors without any claim to completeness.

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