Trademark Insight – December 2022 – Current trademark law decisions from Germany, Alicante and Luxembourg | Hogan Lovells

December 25, 2022 Editorial Staff 33 min read

Dear readers,

After the successful start of our new series TRADEMARK INSIGHT in German language last month and the great feedback we received, we are happy to now also provide you with an English language version. In this second issue of TRADEMARK INSIGHT, we again present a broad selection of interesting decisions. Below, you will find a careful selection of summaries of decisions of the Munich Regional Court I, the BPatG, the EUIPO Boards of Appeal and the EUGC.

Happy holidays and a relaxing end of the year to all of you
Thorsten Klinger and Dr. Andreas Renck

Distinctiveness of “It’s like milk but made for humans” (EUIPO)

In 2019, the company Oatly AB applied to the EUIPO for registration of “It’s like milk but made for humans” as a EU-word mark for various goods in classes 29, 30 and 32, among others, including a variety of milk substitutes and other substitute products. The EUIPO rejected the application for lack of distinctiveness with respect to almost all of the claimed goods in the aforementioned classes.

The applicant appealed unsuccessfully to the EUIPO. The Board of Appeal confirmed that the sign was merely laudatory for the goods claimed. It conveys the impression that the goods bearing the sign are or contain milk substitutes which are similar to real milk in terms of consistency, nutritional values and possible uses.

The applicant successfully challenged this before the EU General Court (GC), which annulled the decision and referred it back to the Board of Appeal for a new decision. The conjunction “but” within the sign creates the impression that milk is not intended for human consumption and therefore makes the public think about the idea that milk is part of basic nutrition, which has been taken for granted up to now. As a result of the thought-process triggered in the public, the sign is very distinctive.

After the case had been referred to the Grand Board of Appeal due to possible further absolute grounds for refusal (misleading nature) and infringement of competition and food law provisions and then back to the Second Board of Appeal, the latter now allowed the appeal, annulled the original official decision and allowed registration of the sign for all the goods claimed. The Board of Appeal was bound by the decision of the GC in its decision. After the GC had granted the sign a minimum degree of distinctiveness and after the Grand Board of Appeal had not found any further grounds for refusal, there was nothing to prevent the registration of the sign for all goods claimed.
(EUIPO BoA, decision of 7.9.2022, R 723/2021-2)

Invalidity of a trademark blocking application due to bad faith (EUGC)

In the November issue of Trademark Insight (German version available only), we reported on a decision of the Board of Appeal of the EUIPO concerning the invalidity of a blocking trademark application due to bad faith (ATHLET). In a similar case, the EU General court (GC) has now confirmed the abusive nature of the business practice underlying these applications.

In a similar way as recently described in the ATHLET case, the self-proclaimed “trademark author” Erich A. also applied for registration at the EUIPO of the sign “MONSOON” through one of his companies. Subsequent successful proceeding were commenced against the use of the signs Hoofer Monsoon, Monsoon and Pioneer Monsoon of Karsten Manufacturing Corp. by way of a preliminary injunction before the LG Erfurt. In the main proceedings, the Erfurt District Court set aside these injunctions on the grounds that the proceedings initiated by Erich A. were an abuse of rights.

Subsequently, Karsten Manufacturing Corp. successfully filed an application for invalidation of the EU word mark MONSOON with the EUIPO on the grounds that the application was filed in bad faith. The appeal filed against this by the trademark owner was unsuccessful. The trademark owner then filed an action against the decision of the Board of Appeal before the GC, claiming that he application was neither intended to circumvent the grace period nor to infringe the priority principle.

The GC dismissed the action as unfounded. Contrary to the priority principle, an earlier trademark is not protected if the applicant was acting in bad faith when filing the trademark application. In such cases, the trademark must be declared invalid upon application. The term bad faith, which is not standardized by law, describes conduct which deviates from the recognized principles of ethical conduct or from honest practices in trade and commerce. In this context, the intention to use the product had to be examined in particular. If this is missing, this indicates a purpose of prevention and can speak for the assumption of bad faith. In order to determine the intention of use, all circumstances of the individual case must be taken into account.

In the present case, the German application establishing priority had been preceded by German and Austrian trademark applications for the same sign for largely identical goods filed by the trademark proprietor or a company affiliated with it in six-monthly alternation since 2006, the application fee for which had never been paid. The large number of transfers and changes of name and address of the trademark proprietor served solely to conceal the fact that all transactions originated from a single person, namely Erich A.. Such conduct was found to be contrary to the objectives of the EU Trade Mark Regulation for the following reasons. It merely aims to bring about a blocking position and the monopolization of the sign MONSOON by circumventing the six-month period serving the purpose of priority transfer and constitutes an abusive filing strategy. This is characterized by the fact that, despite formal compliance with the requirements of European Union law, an advantage not provided for by European Union trademark law is obtained.

(EUGC, judgment of 7.9.2022, T-627/21)

Distinctiveness of the sign “EFFLUX” (BPatG)

In 2020, Efflux GmbH applied for the sign “EFFLUX” at the DPMA for software, software development, software as a service, IT services and licensing of software in classes 9, 42 and 45. The trademark office rejected the application for lack of distinctiveness. EFFLUX is a well-known term in biology used to describe the outflow of ions or molecules from the cell through the cell membrane and is therefore descriptive of the goods and services claimed. Since software can also have mental content, EFFLUX could be understood as a factual title relating to content. The same applied to the services related to software, since where indications for (electronic) media were descriptive, as a rule, the services necessary for the production or publication of such goods were also devoid of distinctive character.

The applicant successfully appealed against this before the BPatG, which found as follows. The sign EFFLUX could not be denied any distinctive character for the goods and services claimed. It is true that the term, which is based on the Latin noun “effluvium” (discharge), describes the relevant biological process. However, the public will not understand the sign claimed in such a sense as a factual title relating to content. Although it is correct that software can have a variety of contents, EFFLUX cannot seriously be considered as such a descriptive indication of contents or subject matter. The treatment of a subject in the form of software using the application sign as a title must be obvious and customary in the industry. This presupposes a certain generality of the title in the sense of a generic term. Neither this, nor the further necessary direct and concrete factual relationship between the meaning of the sign and the goods is given for the relevant public.

(BPatG, 21.7.2022, 25 W (pat) 51/21)

Distinctiveness of the sign “BLACK IRISH” (EUGC)

In 2020, the company Lotion LLC applied to the EUIPO for the sign “BLACK IRISH” as an EU-word mark for various beverages in classes 30, 32 and 33. The application was rejected by the examiner for lack of distinctiveness. The applicant filed an unsuccessful appeal in which the Board of Appeal confirmed that the overall sign had a clear meaning for the English-speaking public, denoting color and geographical origin, and was directly related to the goods claimed. The applicant brought an action against this before the EU General Court (GC).

The GC dismissed the action as unfounded for the following reasons. The sign is a simple combination of two descriptive elements, which does not create an impression that is sufficiently far removed from the mere juxtaposition of the descriptive elements. Since the two elements refer to the geographical origin and the color of the beverages (which often has a characterizing function), the overall sign is exclusively descriptive for all the goods claimed. Consequently, the sign also lacks distinctive character.

(EUGC, decision of 14.9.2022, T-498/21)

Likelihood of confusion between “red temp” and “RED TAPE” (EUIPO)

In 2020, Shenzhen Bluelans Network Technology Co., Ltd. filed an application for the sign “red temp” as an EU-word mark for various clothing items in class 25. Mirza International Limited filed an opposition on the grounds of likelihood of confusion with its earlier priority EU-word mark “RED TAPE”, also protected in Class 25 for clothing. The Opposition Division rejected the opposition for lack of likelihood of confusion finding that the matching element “red” has a limited distinctive character as a mere color indication for clothing. In the case of the more distinctive elements “temp” and “TAPE”, differences would be more easily perceived by the public due to their character as short terms. Therefore, there is at most a low degree of similarity and no likelihood of confusion.

The opponent filed a sucessful appeal. The Board of Appeal found as follows. With regard to the identical word element “red”, it was by no means to be assumed that there was a weak distinctive character. It is true that a color indication contained in the sign can certainly indicate a characteristic of the goods claimed. For this to be the case, however, the sign as a whole must refer to a characteristic which is objective, inherent in the nature of the goods and enduring in relation to them.

Although the Opposition Division had correctly assumed that the color red had no direct connection with the nature of the goods in question, it had then incorrectly further assumed that the mere possibility that the goods claimed might contain that color was sufficient for the assumption of limited distinctiveness. In this respect, the Opposition Division had incorrectly applied a previous EU case law on the significance of word elements with a color reference (EUGC, judgment of 25.6.2020, T-133/19) and was incoherent in its reasoning.

The fact that the color designation corresponds to one of the possible color variants does not establish its status as a descriptive indication, provided that the color represents only a purely incidental aspect which only some of those goods may have and which, in any event, has no direct and immediate connection with their nature. The assumption that the color would actually be recognized by the relevant public as a description of a characteristic inherent in the nature of those goods, if the goods claimed are also offered in part in that shade, is far-fetched.

That is also the case with the word element “red”, the content of which is incidental and secondary to the goods claimed. Consequently, that word element has an average distinctive character. On this basis, there is an average similarity between the comparison signs, which leads to a likelihood of confusion, taking into account the identity of the goods.

(EUIPO BoA, decision of 14.9.2022, R 463/2022-1)

Effective use of the sign “easyJet” (EUIPO)

The easyGroup Ltd. is the owner of the EU-word mark “easyJet”, protected for a variety of goods and services in classes 3, 8, 9, 12, 14, 16, 18, 25, 28, 29, 30, 31, 32, 33, 34, 35, 36, 38, 39, 41 and 43. Easy-Tutor GmbH filed a revocation application against this registration on the grounds of non-use. After reviewing the evidence of use, the Cancellation Division ordered cancellation of the most of the goods and services. Only for a limited selection of transport, sales and hospitality services in classes 35, 39 and 43 was use-preserving rights assumed. The documents taken into account overlapped to a large extent with those from parallel proceedings concerning the EU trademark “Easyjet”.

The trademark owner filed a partial appeal against the decision, namely with regard to the cancellation of preparations of cereals, bread, pastries and confectionery in class 30. The Board of Appeal had recognized a right-preserving, effective use for prepared meals, snacks and snack items in the parallel proceedings to the EU word mark Easyjet on the basis of largely coinciding evidence of use. Although the trademark owner acknowledges that any decision must be made on the basis of the evidence provided in the specific proceedings, that decision has a strong indicative effect that must be taken into account.

The Board of Appeal now allowed the appeal in respect of bread and pastries and dismissed it in respect of the remainder, finding as follows. The evidence of use submitted showed extensive use of the sign for various bakery products. It is irrelevant that almost all of the evidence shows the word mark in the graphic form shown below. The distinctive character is not altered by the specific form of the design, since it relates only to non-descriptive elements such as the color scheme and the typeface.

Although the bread and bakery products covered by the mark at issue here are not identical to the goods at issue in the parallel proceedings, they belong to a single homogeneous group and are therefore essentially similar to them. Nor could the trade mark proprietor reasonably be expected to provide evidence of genuine use for all conceivable variants of the goods covered by the registration. The use of the mark for various bakery products, which had already been assumed by the Cancellation Division, could therefore not be meaningfully distinguished from the categories of bread and bakery products, with the result that use had to be acknowledged for them. With regard to the other goods still at issue, on the other hand, no use was found.

(EUIPO BoA, decision of 15.9.2022, R 2076/2021-2)

Legal interest in suspending opposition proceedings (BPatG)

In 2019, Kaave GmbH filed an application with the DPMA for the sign “Kaave” as a word mark for various retail services in Class 35. JULIÀ GRUP FURNITURE SOLUTIONS, S.L. filed an opposition against this on the grounds of likelihood of confusion with its earlier priority EU-trademark “Kave Home” shown below and the earlier priority EU-word mark Kave, each also protected inter alia in Class 35.

The applicant then filed a request for cancellation of these opposition marks on the grounds of earlier rights, based on its company mark Kaave and the domain name kaave.de. It then requested the DPMA to suspend the proceedings until the decision on the declaration of invalidity of the opposition marks. The Trademark Office rejected this request without stating reasons, against which the applicant filed an appeal. Due to the lack of reasons, the challenged decision could not be considered as an exercise of discretion. On the merits, the request for suspension was well-founded, since there was a sufficient probability that the opposition marks would be cancelled due to the applicant’s earlier rights. In the event of a successful cancellation, the opponent would no longer be able to assert any earlier rights against the trademark application, so that the applicant’s interest in the suspension of the opposition proceedings outweighed the opponent’s interest in a speedy decision.

The BPatG dismissed the appeal as inadmissible. In the meantime, the EUIPO had rejected the cancellation requests of the applicant with final effect, since no more than merely local significance could be proven for the asserted earlier rights of the applicant. Thus, the applicant’s need for legal protection had ceased to exist after the filing of the appeal, since the opposition proceedings could no longer be suspended until the final decision on the invalidity of the opposition marks and the objective of the appeal could no longer be achieved.

However, due to a serious procedural error of the DPMA, the appeal fee had to be refunded to the applicant. On the one hand, it was indeed not evident from the letter of the trade mark office on which grounds the rejection of the application for suspension had been based and, in particular, whether the discretionary power of the DPMA had been exercised at all. In this context, a suspension could be considered in particular if invalidity proceedings against the opposition marks are pending. Although the provision of Sec. 32 (2) Trade Mark Ordinance only mentions proceedings before the DPMA, this must also be extended to proceedings before the EUIPO. The failure to provide the opportunity to comment and the consequent lack of a hearing constitutes a further substantial procedural defect which necessitates repayment of the appeal fee.

(BPatG, decision of 20.6.2022, 25 W (pat) 501/21)

Likelihood of confusion between “Magic Zero” and “MAGIC” (BPatG)

In 2019, Magic Zero GmbH applied to the DPMA for registration of the sign “Magic Zero” as a word mark for goods in Classes 29 and 30, including bouillon, broth and various spices. Raps GmbH & Co. filed an opposition against this on the grounds of likelihood of confusion with its word mark “MAGIC”, which has an earlier priority and is protected, inter alia, for spices as well as salt and products made therefrom for foodstuffs.

The DPMA rejected the opposition in its entirety due to a lack of likelihood of confusion, finding as follows. The opposition mark, which is inherently weak, has an overall average distinctiveness due to extensive use. Nevertheless, the mark applied for is sufficiently distant from the mark on which the opposition is based. Although the consumer would understand the word element “Zero” in the sense of “without” added sugar, preservatives, glutamate or similar, this does not mean, however, that the traffic is oriented exclusively to the corresponding element “Magic”. Since both have a descriptive character in relation to the goods claimed, they are of equal value. Against that background, the additional element “Zero” in the mark applied for constitutes a sufficiently clear difference.

The opponent filed an appeal against this, which was partially upheld by the BPatG, finding as follows. It is true that there is no direct likelihood of confusion due to the sufficiently clear differences between the two signs as a result of the additional element “Zero”. Such a likelihood of confusion could only be assumed in the event of the overall sign being characterized by the element “Magic”. In the present case, however, the element “Magic” cannot be considered to be distinctive due to its frequent use, its factual reference and its original weakness as a distinctive sign.

However, with regard to the identical and highly similar goods in the condiments [marinades] segment, there is a likelihood of confusion in the broader sense. It is common practice in the relevant foodstuffs sector to supplement existing product ranges with new product lines for which the previous mark is supplemented. Against that background, it must be assumed that the public also understands the sign element “zero” as such an addition, which indicates the absence of otherwise usual ingredients of the product range. However, this applies only to the extent of the identical or highly similar goods.

(BPatG, decision of 14.7.2022, 25 W (pat) 37/21)

Distinctiveness of a logo mark (EUIPO)

The Deutsche Gesellschaft für Nachhaltiges Bauen – DGNB e.V. (German Sustainable Construction Council) applied for registration of the sign shown below as a European Union figurative mark for services in classes 35, 37, 41 and 42, including advertising, construction, education and authentication and quality control. The Office rejected the application for lack of distinctiveness.

The applicant’s appeal was unsuccessful. According to the Office, the sign applied for consists of a simple geometric figure and is not capable of conveying a message that consumers can remember and is therefore not capable of serving as an indication of commercial origin. The sign is neither unusual in its overall impression nor does it have a characteristic or striking feature.

Furthermore, a blanket justification for the rejection of all services was also permissible, since the same ground for refusal precluded all services that could be assigned to a category. Due to the fact that the applicant is the “Deutsche Gesellschaft für Nachhaltiges Bauen”, it must be assumed that the services in class 37, and in particular construction as well as consulting and information on this subject, represent the applicant’s main activity. This direct and concrete connection of all services forms a sufficiently homogeneous group, which justifies the general justification for refusal.

(EUIPO BoA, decision of 21.9.2022, R 338/2022-2)

Legal nature and terminability of a trademark agreement (District Court München I)

The Augsburg Brauerei S. Riegele is, inter alia, the owner of two German word marks “Spezi” from 1955, protected for beer in class 32 and 1994, protected, inter alia, for cola mixed drinks in class 32. Due to previous disputes about the right to use the name Spezi by Paulaner-Salvator Thomasbräu, the parties entered into an agreement in 1974 to allow Paulaner-Salvator Thomasbräu, for a one-time price of 10,000 marks, to produce its own cola-orange mixed drink “forever” and to market it under the trademark Spezi. In May 2021, Riegele declared the termination of this agreement to the current Paulaner company. Paulaner then brought an action seeking a declaration that the termination was not legally effective. Riegele filed a counterclaim, claiming injunctive relief, information and damages. At the heart of the dispute was the question of what the 1974 agreement was about, whether it could be terminated, and whether Paulaner could consequently continue to market its mixed beverages under the Spezi brand.

The Paulaner Brauerei Gruppe argued that the agreement was a demarcation agreement which, as such, could not be terminated. This was made clear by the fact that a one-off compensation payment had been made. Moreover, Spezi had in the meantime become a generic name for cola-orange mixed drinks.

Riegele, on the other hand, sees the agreement as a terminable license agreement and is seeking the conclusion of a new license agreement on new terms. Taking into account the sales volume produced by Paulaner and based on the license fees agreed in other contracts, this would mean annual license costs of five million euros for Paulaner. Riegele further argued that the current Paulaner Brauerei Gruppe could not invoke this agreement anyway, since they had not concluded any contract and, due to various circumstances, the Paulaner Brauerei Gruppe could not invoke the agreements concluded with Paulaner-Salvator-Thomasbräu at the time as its legal successor.

The court now ruled that the Paulaner Brauerei Gruppe was the legal successor of the then counterparty and that the agreement concluded in 1974 continued to exist. It was not a license agreement, but a coexistence and demarcation agreement. The change of the title of the document from “License Agreement” to “Agreement” even before the conclusion of the agreement was, in addition to other accompanying circumstances, an essential indication of this. The purpose of the agreement at that time was a final settlement of the disputes between the parties. Paulaner had subsequently made considerable investments in brand development, relying on the settlement of the previous dispute.

In contrast to license agreements, coexistence and delimitation agreements – also because of the potentially unlimited duration of protection through extension – could not be terminated by ordinary notice. There are therefore justified reasons for wanting to delimit the rights of use of confusingly similar signs in the long term. Finally, the behavior of Paulaner, which was in compliance with the contract, did not give the trademark owner an extraordinary right of termination, so that Paulaner may continue to call its products “PAULANER Spezi”. The fact that Riegele now regrets the conclusion of the contract and would like to share in the economic success of Paulaner’s sales of Spezi products does not show otherwise. Whether Spezi is now a generic name is therefore irrelevant. The counterclaim of Brauerei S. Riegele was consequently unsuccessful; the continued existence of the agreement precluded the asserted claims.

(Munich Regional Court I, decision of 10.11.2022, 33 O 10784/21)

Distinctiveness of “Belagio” and its need to be kept free (BPatG)

In 2018, a German entrepreneur applied for the sign “Belagio” at the DPMA as a word mark for various services in classes 36, 37, 43 and 44, including real estate, construction and services of homes for the elderly and senior citizens. After objection by the Office, the applicant specified the list of services with respect to classes 36 and 43 and limited it to real estate located in Germany with respect to services in class 36.

The application was then rejected by the DPMA due to the existence of a need to be kept free, against which the applicant filed a special motion [German: Erinnerung] and now requested that the list of services be restricted to classes 36 and 37, with services relating to hotels and casinos being explicitly excluded from class 36 by means of a renewed restriction. The Office rejected the special motion because the term “Belagio” is understood as a reference to services offered in the town of Bellagio on Lake Como. The relevant public is readily aware of this place name. Nor is it excluded that the services claimed are provided in that place. It is irrelevant whether the public predominantly thinks of the casino hotel Bellagio in Las Vegas when it thinks of the sign Belagio.

The applicant filed an appeal against the rejection of the special motion, requesting registration of the trademark application in all four classes initially claimed. An internet search primarily points to the casino. It could not be assumed that the place Bellagio was better known to the German public. Moreover, mere knowledge of the existence of such a place is not sufficient; the public must also know where it is located and what is located there. Moreover, the restriction of the services provided by it to real estate situated in Germany means that the public does not establish a link with an Italian place.

The BPatG rejected the appeal as unfounded. The examination was to be based exclusively on the services claimed in classes 36 and 37, since the list had been effectively limited to these classes by the applicant. The restriction to real estate located in Germany was admissible, since it was an appropriate restriction which concerned general and objective properties in a commercially comprehensible and thus legally delimitable manner. This was not the case with the exclusion of certain services relating to hotels and casinos, which was also carried out, since no economic imperative was discernible on the basis of which real estate and construction services did not also cover hotels or casinos.

However, with regard to the services in Class 36, the sign is capable of misleading the public as to its characteristics. The sign is suitable as a geographical indication of the specific geographical location of a property and is also understood as such by the trade. The restriction of the list of services excludes the reference to foreign countries, which means that no case of non-deceptive use is conceivable.

In connection with the services claimed in Class 37, the sign constitutes a geographical indication which lacks any distinctive character. As a possible indication of the place where the services mentioned are provided, the sign cannot fulfill an operational origin function.

(BPatG, decision of 19.8.2022, 25 W (pat) 42/21)

Binding nature of the EUIPO’s statement of reasons for the application for invalidity (EUGC)

Health and Happiness (H&H) Hong Kong Ltd. is the owner of the EU trademark “Swisse” shown below, protected in class 5. In 2018, the company Giuliani SpA filed an application for invalidity against this trademark on grounds of, inter alia, lack of distinctiveness and deceptiveness as to geographical origin. The Cancellation Division subsequently declared the mark invalid on the grounds of lack of distinctiveness, without addressing the further grounds. The trademark owner filed an unsuccessful appeal against this decision. The Board of Appeal also found that the sign was not an indication of commercial origin, but a descriptive indication of geographical origin.

The trademark owner then filed an action against the decision of the Board of Appeal before the EU General Court (GC). It argued that the cancellation applicant had stated different grounds for invalidity in the form than in the detailed statement of reasons, in which it only cited misleading, bad faith and unfair exploitation of a state name. Therefore, with regard to the ground for invalidity of lack of distinctiveness, there was no statement of reasons by the applicant. The EUIPO should therefore not have dealt with the lack of distinctiveness. Rather, they should make their decisions solely on the basis of the arguments put forward by the applicant.

The action was successful with the GC finding as follows. Although the applicant had selected the ground for invalidity of lack of distinctiveness in the drop-down menu of the online form, it had not submitted any reasons for this. Rather, the applicant had only addressed the other three grounds for invalidity. Nor could any conclusions be drawn as to the lack of distinctiveness from the explanations of the other grounds. It is true that there is a certain degree of overlap between the individual grounds for invalidity. This also applies to the grounds of invalidity of lack of distinctiveness and that of deceptiveness. Nevertheless, each ground for invalidity must be examined separately and independently. Depending on the respective ground, a different public interest must also be taken as a basis. The decision of the Board of Appeal was therefore erroneous in law in that it assumed that a deceptive character also resulted in a lack of distinctiveness.

In order to determine the grounds on which an application for invalidity is based, it is not merely the information in the online form and the selection from the drop-down menu there that must be taken into account. Rather, an overall view of all the circumstances of the application must be taken, with particular weight being attached to the grounds for the application.

In the present case, the menu selection and the justification content were contradictory. Furthermore, Article 63 (2) UMV stipulates that an application for invalidity must be filed in writing with a statement of the grounds. If this is not done, the application must be rejected as unfounded. This also applies because the trade mark proprietor otherwise has no opportunity to counter the statements on the lack of distinctiveness with arguments of its own which could possibly lead to a different assessment. To the contrary, applicants could select any ground for invalidity and limit themselves to general considerations in the statement of reasons. A subsequent detailed ex-officio examination of all grounds for invalidity by the EUIPO would create a situation unintended by the legislator, namely that in the invalidity proceedings the examination procedure to be carried out in the context of the application procedure would take place again. The contested decision should therefore be annulled.

(EUGC, decision of 19.10.2022, T-486/20)

Risk of deception by ®-symbol in application sign (BPatG)

In 2019, a German private individual filed an application with the DPMA for the sign “livevil”, shown below on the left, as a word/figurative mark in classes 25, 35 and 41. After objecting to the danger of deception posed by the included ®-symbol, the applicant filed the representation shown below without the ®-symbol and requested that the application be corrected accordingly.

The Trademark Office of the DPMA subsequently rejected the application due to the existence of a risk of deception. The sign originally applied for contained an indication of property rights by means of the ®-symbol (see detailed view below right), which falsely suggested that the sign component “livevil” provided with this symbol was registered as a trademark in favor of the applicant. This is not the case according to the current register situation, which must be taken into account in the examination of registrability. It further follows from the principle of the invariability of the application in the current proceedings that the filed representation of the mark without the ®-symbol may not be taken into account.

The applicant appealed against this decision. The sign claimed in the application had been inadvertently provided with the ®-symbol – the later filing without the ®-symbol had merely served as a correction. Use of the sign had not yet taken place and was not intended until the application was completed. In a previous application procedure, the trademark there had been registered with the ®-symbol.

The BPatG rejected the appeal as unfounded. As the trade mark office had correctly recognized, the registration of the sign was precluded by a risk of deception. The ®-symbol would be understood by the public as an indication of a registered trademark. In this case, it is clearly assigned to the word element “livevil” of the sign and not to the overall sign, to which the square, red area also belongs. The impression is thus created that the word element of the sign already enjoys protection in the specific form. According to the case law of the German Federal Court of Justice, there is a likelihood of deception if the sign contains the ®-symbol and this is assigned to such a component of the trademark which in itself (at the time of the application) does not have trademark protection. This is also the case here.

The applicant creating the false impression obviously intended and expected to gain an advantage over customers and competitors. Such an untrue advertising statement was to be prevented. The fact that the filing of the version with the ®-symbol was an oversight does not affect this, since neither the intentions of the application are taken into account, nor is an intention to deceive required. The sign represented an unchangeable and indivisible entity from the moment of filing; protection of the sign without the ®-symbol could only be achieved by filing a new application. The earlier application, which also contained a ®-symbol but was successful, differed from the present application in that the ®-symbol contained therein obviously referred to the sign as a whole. This had also been expressly stated by the examiner in the earlier application proceedings at the applicant’s request.
(BPatG, decision of 14.9.2022, 29 W (pat) 559/19)

Likelihood of confusion between two one-letter marks “A” (EUIPO)

In 2020, Klädarkivet Holding AB filed an application with EUIPO for the sign “A”, shown below on the left, for goods and services in classes 25, 35 and 45, including clothing, retail services relating to clothing and sales advice relating to clothing. Alvaro Moreno SLU filed a notice of opposition on the grounds of likelihood of confusion with, inter alia, its earlier priority mark A shown below right, also protected in, inter alia, Classes 25 and 35. The opponent also claimed reputation exploitation. The Opposition Division upheld the opposition on the grounds of likelihood of confusion for all goods and services except for online social networking services. Reputation of the opposition mark, which is necessary for the exploitation of reputation, was not proven.

The applicant filed an unsuccessful appeal against this. In the view of the Board of Appeal, there is a likelihood of confusion in the present case. The goods and services are similar to identical, with the exception of online social networking services. There is no dominant element in any of the signs. Due to the short length of the signs, the public perceives the sign as a whole. In the comparison of the signs, both signs are similar in the representation of the letter A, each having an average distinctive character, since they have no meaning in relation to the goods and services claimed.

That is not affected, in particular, by the fact that the signs could be perceived as abbreviations of Arkivet or Alvaro. The signs differ only in the other graphic elements surrounding the letters (black and white serrated ring or blue shield). Visually, there is an average similarity. Phonetically, the signs are identical. Contrary to the Opposition Division and in accordance with recent decision practice, mere one-letter marks are not capable of establishing conceptual identity merely on the basis of the one matching letter, provided that this letter has no meaning for the goods and services claimed. This is also the case here, so that no conceptual comparison of the signs is possible.

Overall, there is a likelihood of confusion between the signs for the identical and similar goods and services.

(EUIPO BoA, decision of 3.10.2022, R 658/2022-1)

Distinctiveness of the sign “LOVE AND CARE MIX” (BPatG)

In 2019, Katjes Fassin GmbH+Co. Kommanditgesellschaft applied for the sign “LOVE AND CARE MIX” at the DPMA as a word mark for goods in classes 5, 30 and 32, including food supplements, flavorings and various foodstuffs. The application was rejected for lack of distinctiveness. The appeal filed against this was also unsuccessful. The sign would be understood by the public as a laudatory indication that the mixtures were put together with love and care and/or that the consumption of these products gives consumers a feeling of love and care, so that in combination with the goods claimed it would have an origin-neutral promotional and laudatory objective statement.

The applicant’s appeal is directed against this reasoning, claiming that the decision is incompatible with the most recent case law of the German Federal Supreme Court, according to which all probable types of use are to be taken into account in the examination of distinctive character and not mere assumptions about the possible use of goods and signs.

The BPatG granted the appeal in its entirety (after withdrawal of the application for goods in class 5). For the goods still subject of the appeal, the sign LOVE AND CARE MIX has the required distinctive character. The sign as a whole conveys the meaning “mixture of love and care”. However, the meaning applied by the Trade Mark Office clearly goes beyond the meaning which can be inferred directly from the sign. The word element “MIX”, in combination with other terms, serves the purpose of explaining the special characteristics of the mixture. In the absence of other indications, those characteristics refer to the mixture itself and not to the method of production, the degree of popularity or the impact on customers.

Furthermore, the foodstuffs in question do not serve the purpose of care or welfare, but rather nutrition, so that the sign element “CARE” has no factual relevance for them. Although the goods claimed could in principle also be served to persons who are ill or in need of care, it is not foreseeable that the primary purpose of use is care, concern or healing. Furthermore, the combination of all the word elements leads to a further factual distancing of the overall meaning from the goods in question. The interpretation variants put forward by the trade mark office cannot be relied upon, since they require further intermediate mental steps.

(BPatG, decision of 19.8.2022, 25 W (pat) 71/21)

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