Section 2 - Likelihood of confusion in the case law of the European Court of
C. Germany
10. CANNABIS, 26 W (pat) 78/04 (11 October 2007)
German Federal Patent Court
The application to register the word-graphic mark shown below for the products (clothing articles, shoes, headpieces; beers with cannabis addition; mineral and carbonated water and non-alcoholic drinks, all with cannabis addition; fruit drinks and fruit juice, all with cannabis addition; syrup and other preparations for the preparation of drinks containing cannabis; alcoholic drinks excluding beers with cannabis addition) was filed at the German Patent and Trade Mark Office.
238 Mercedes Benz, supra note 233, at 8.
239 BGH GRUR 2006, 859 ff, ff No. 19, 22 - Maltese cross.
240 Mercedes Benz, supra note 233, at 7 – 9.
Opposition was raised against this application by the owner of two CTMs. The first CTM, CANNABIS, is registered for the products beers, wines, spirituous beverages, liquors, champagne, sparkling wine, catering and operation of restaurants, self-service restaurants, taverns, ice cream shops and pizzerias. The second CTM is registered for beers, wines, spirituous beverages and liquors, and is shown below:241
The German Patent and Trade Mark Office rejected the opposition of the two CTMs.242
The Federal Patent Court affirmed the Office’s decision by finding a lack of a likelihood of confusion between the marks.243
There is no likelihood of confusion between the word-mark CANNABIS and the opposed mark:
1. For those identical products, the distinctive strength of the opposing mark
“CANNABIS” is considerably weakened with respect to the products/services in question.
241 CANNABIS, 26 W (pat) 78/04 (11 October 2007), at 2 – 4.
242 CANNABIS, supra note 241, at 4.
243 CANNABIS, supra note 241, at 8.
“Cannabis” is the Latin scientific name for the hemp plant and is also used in colloquial language as the collective term for intoxicants made of that plant, in particular marihuana and hashish. “Cannabis” and “hemp” are often used synonymously.
Cannabis drinks (hemp drinks) have developed into popular drinks. In this way there are legalized uses of Cannabis, i.e. hemp. The descriptive characteristic of “Cannabis” as ingredient narrows the scope of protection of the word-mark “CANNABIS” in relation to drinks. Therefore, the word mark “CANNABIS” is not infringed.244
2. There is partial similarity between the products. As for the opposed mark’s products “clothing articles, shoes, headpieces”, there is no similarity between them and the opposing mark’s products.245
3. Similarity of the marks: the fact that the additional word elements “The” and “Sud”
in the opposed mark are in an inferior position so that the word “Cannabis” stands out should not be taken into account. Because of the arrangement and display, as well the meaning of the words on top of one another, the mark is taken as a whole, with no reason to orient oneself to single components.246 The element “Club” is very common establishment designation and therefore has only low distinctiveness, so this does not prevent the mark from being taken as a whole.247
4. Association: Due to the low distinctiveness of “Cannabis” and also due to the assumption of the mark “Cannabis Club” as a whole, direct confusion and confusion by association can be precluded.248
There also is no likelihood of confusion between the word-graphic CTM and the opposed mark based on the following reasons:249
1. The word-graphic CTM as a whole displays by itself an average degree of distinctiveness. However, regarding that the element “Cannabis” has a descriptive
244 CANNABIS, supra note 241, at 9.
245 CANNABIS, supra note 241, at 9.
246 BGH GRUR 1999, 586, 587; 2004, 598, 599 - Kleiner Feigling 247 CANNABIS, supra note 241, at 10.
248 CANNABIS, supra note 241, at 10 – 11.
249 CANNABIS, supra note 241, at 11 – 12.
character of the relevant goods, the distinctive force of the CTM is reduced.
2. There is partial similarity between the products.
3. There is no visual similarity between the marks. Both marks display a stylized hemp plant which is only of descriptive character for the relevant goods.
In sum, the German Community trade mark Courts assessed the degree of similarity of the marks and the goods of services in each of the ten cases analyzed. Concerning the similarity of the marks, the German approach is that what matters is the overall impression made by the respective signs, with comparison not confined to their individual components. When one of two marks in question is part of the other, similarity is found only if the identical component dominates the more complex mark. In general, similarity is found only if the identical component "dominates" the more complex mark.
Such domination is made possible if the component is more distinctive than the rest of the mark. Descriptive or associative components are normally not dominant.
The German Courts also emphasized the distinctiveness of the senior mark, and to a slightly lesser degree, the association that the public might make between the two marks.
The German Bundesgerichtshof (Federal Supreme Court) confirmed that the original distinctiveness of an senior trade mark, which is relevant for the question of whether a junior mark falls into its scope of protection, and which, in the affirmative, results in a confirmation of a likelihood of confusion, is also determined by the status of registration.
If a number of more or less similar trade marks are registered for identical or similar goods and/or services without their owners taking any steps against the registration of more or less comparable trade marks, this might be an important indication that the mark at issue has a limited scope of protection only, because it consists of used-up word elements of minor original character.250
As with the Spanish and UK Community trade mark Courts, the German Community
250 BVerfG, NJW 1999, 361.
trade mark Courts did not assess in all ten cases analyzed the three factors that were emphasized in the CTMR recitals. These three factors are the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified. The difference is that the German Courts analyzed the association which average consumers make between the two marks in question, whereas this same factor was considered in all Spanish and German cases. However, the distinctive character of the senior mark was analyzed in a higher proportion of German cases than of Spanish or UK cases.
Lastly, the degree of attention of the relevant average consumer was considered in only a very low proportion of the German decisions. Of all cases analyzed, there was no consideration of whether there were actual incidences of confusion or whether the defendant acted in good or bad faith. One point that is worth mentioning is that regarding the existence of a likelihood of confusion between the marks held by the parties under Art. 9(1)(b) CTR, the court in some cases saw no problem in relying on German as well as on European case law.