The German Federal Patent Court (BPatG) recently ruled on the likelihood of confusion between two "BIO" marks, BIONSEN and BIOPHEN (the decision - in German - is available here).

Both trade marks were registered for a number of identical and similar class 3 goods. After evaluating the evidence regarding the contested use of the older trade mark BIONSEN, the BPatG moved on to consider the similarities between the marks. In its evaluation, the court discussed two established principles:

Firstly, consumers tend to pay closer attention to the beginnings and endings of trade marks. And secondly, descriptive elements of trade marks are generally less relevant for a finding of confusion than non-descriptive and fanciful elements.

In this particular conflict, the court gave precedence to the first principle over the second. It held that due to the identical beginnings (BIO-) and endings (-EN) of the two marks, they were confusingly similar. The differences between the middle letters -NS- and -PH- were not sufficiently strong to rule out confusion. Furthermore, the court dismissed the applicant's argument that the syllable "BIO" had to be disregarded as descriptive and diluted. The court thought that in the present case, consumers would not read the older trade mark BIONSEN as "BIO-NSEN". The resulting letter sequence "-NSEN" would be neither familiar nor pronounceable in German. Hence, the German public would pronounce the mark as "BI-ON-SEN". The possible meaning of the prefix "BIO" as referring to goods or ingredients of an ecologically controlled origin would therefore not come to mind here. In consequence, the court held that the element "BIO" shared by the two marks is neither descriptive nor diluted. Rather, it carries its full weight in the evaluation of similarities.

The decision is a welcome exception to the ongoing trend in German opposition case-law to give strong precedence to arguments of descriptiveness and lack of distinctiveness. These arguments are sometimes used without sufficient attention to the individual circumstances whenever a trade mark or one of its parts could be perceived as descriptive. In a welcome deviation from this trend, the German Federal Patent Court has made a well-reasoned decision, paying detailed attention to the realities of consumer perception.  

Case Reference: 24 W (pat) 125/10 of 23 April 2013