Trademark Infringement and Likelihood of Confusion

The likelihood of confusion is of central importance in most cases of trademark infringement. The use of a sign that resembles a trademark may be a trademark infringement. The more similar the sign used is to the protected trademark and the more similar the opposing goods or services for which the sign is used and for which the trademark has been registered are, the more likely the trademark right infringement is.

German Federal Court of Justice, judgement of 2 April 2015 – I ZR 59/13 - Springender Pudel (see below)

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Risk of confusion due to interaction of three factors

Whether there is a likelihood of confusion within the meaning of § 14 (2) No. 2 German Trademark Act (MarkenG) - as in Art. 9 (1) No. 2 of the European Trade Mark Regulation (EUTMR) must be examined on the basis of the interaction between
 

  • the distinctive character of the earlier mark,
    so that a lower product similarity can be compensated by a higher similarity or distinctiveness of the earlier mark and vice versa (see Federal Supreme Court, judgment of 02.02.2012 - I ZR 50/11, paragraph 22 - Bogner B/Barbie B
  • the similarity of the signs and
  • the similarity of the products (goods or services) marked with them.

However, if the opposing products are absolutely dissimilar, they cannot make a strong mark similar (see Federal Supreme Court, judgement of 20.1.2011, I ZR 10/09 - BCC).

The role of distinctiveness in trademark infringement

Another factor is the so-called "distinctiveness": a high degree of distinctiveness increases the likelihood of confusion and makes trademark infringement more likely.

No likelihood of confusion with well-known brands is required

A likelihood of confusion is not necessary for the infringement of a well-known trade mark within the meaning of § 14 (2) No. 3 German Trade Mark Act (MarkenG) or Art. 9 (2) (c) EUTMR. In the case of such marks, it may be sufficient to infringe a trademark if the distinctiveness or reputation of that mark is impaired. The use of signs which are similar or identical to well-known marks is therefore particularly dangerous.

Example of a well-known brand in Germany: "Fisherman's Friend" (Regional Court of Frankfurt a.M. v. 28. 4. 2000 - 3/12 O 13/00 - FISHERMAN´S FRIEND)

Phonetic, visual or conceptual (analogous) similarity

For a likelihood of confusion, it is usually sufficient to have a phonetic, visual or even just conceptual similarity. Similarity in only one of these categories may already suffice for a likelihood of confusion (ECJ judgement of 22 June 1999, C-342/97 - Lloyd/Klijsen, para. 28).

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Thomas Seifried, Trademark Attorney (Rechtsanwalt) und Intellectual Property Specialist Lawyer (Fachanwalt fuer gewerblichen Rechtsschutz)

Visual Similarity

Example: No likelihood of confusion due to (written) visual similarity: the figurative trademark "PUMA"

[Translate to English:]

is not infringed by use of the figurative sign "PUDEL" (German Federal Supreme Court, judgement of 2 April 2015 - I ZR 59/13 - Springender Pudel).

BUT: The use of the sign "PUDEL" nevertheless infringes the well-known(!) trademark "PUMA", because likelihood of confusion is not necessary (see above) and here the appreciation of the well-known trademark is exploited (Federal Supreme Court, judgement of 2 April 2015 - I ZR 59/13 - Springender Pudel).

Example: Conceptual Similarity

Example:
From 1993 to 1999, the Beck brewery had a registered figurative trademark for beer in which an upside down key was depicted:

This trademark infringed the earlier figurative trademark "Original Schlüssel Obergaerige Handwerkliche Hausbrauerei" of Brauerei Schluessel. This trademark was also registered for beer. For the signs had coincided in their meaning. The trademark of Brauerei Beck was therefore cancelled again (Federal Supreme Court, decision of 18 March 1999 - I ZB 24/96 - Schlüssel).

Author: Thomas Seifried, Trademark Attorney (Rechtsanwalt) und Intellectual Property Specialist Lawyer (Fachanwalt fuer gewerblichen Rechtsschutz)