Is it a boy or a girl? This is a question usually of concern to new
and/or expecting parents, but less so perhaps a question considered in trade
mark opposition matters. However, a recent court decision by the German
Federal Patent Court (case reference: 29 W (pat) 14/12) hinged on exactly that
point and may provide IPKat-reading trade mark practitioners with some
interesting arguments.
An opposition based on an earlier Community
trade mark registration for the mark CORDIUS covering, inter alia, 'financial
services' was brought against a
German national trade mark application for the mark CORDIA covering similar
financial services in class 36. Comparing the services (which
this Kat will not list/translate in detail), the court easily concluded that these
services were of medium similarity. The court
further found that both marks were aimed at specialised consumers from the trade
as well as consumers with a background in finance and economics. Such
consumers, in view of the court, paid a higher level of attention due to their
professional backgrounds. However, even if the financial services offered
under the trade marks were aimed at the average consumer, then it would have to
be assumed that these would pay a heightened level of attention due to the fact
that financial decisions are usually more closely considered than everyday
purchases.
Based on this background, the German Federal
Patent Court therefore on balance decided against a likelihood of confusion
between CORDIA and CORDIUS, even though both trade marks share the identical first
five letters CORDI- and only differ in their respective ending –A vs -US.
The court explained that it was true that the average consumer usually pays
more attention to the beginning of trade marks, which in this case were
visually and phonetically identical. Nonetheless, the judges took the
view that the relevant consumers in this case would also pay closer attention
to the "significant gender difference" between CORDIA and CORDIUS,
i.e. one being a female first name (CORDIA), the other one being a male first
name (CORDIUS). Consequently, the judges
held that the marks were visually, conceptually and phonetically distinguishable
and there was no likelihood of confusion.
A quirky and enjoyable little
case, which can be read in its entirety here (in German).
Yes, in German the gender of words makes a huge difference. Cordia or Cordius, not the same at all!! In court, you'll meet either Staatsanwalt Herr Doktor X, or Staatsnwältin Frau Doktor Y.
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