The German Patent and Trade Mark (DPMA) initially saw a likelihood of confusion between both marks and ordered that the later mark be taken off the register. On appeal the DPMA's "Erinnerungsprüfer" overturned the office's initial decision and decided that there was no likelihood of confusion due to the fact that the painting "Das Schokoladenmädchen" (The Chocolate Girl) by Jean-Étienne Liotard, on which the earlier mark was based, was of "lower than average distinctiveness" since this particular painting had traditionally been used to advertise chocolate products and for general marketing purposes. As such, even small differences between the marks had to be considered (colours, figure, shape, face of the respective girl depicted). Taking this into account, there was no likelihood of confusion despite and identity of goods and service covered and despite the similarity of device marks.

On further appeal by the opponent the Federal Patent Court agreed with the "Erinnerungsprüfer's" assessment. Referring to the ECJ's decision in PICASSO the Court stated that there was a certain degree of "interrelation" between the similarity of marks, the similarity of goods and services, the scope of protection granted to the earlier mark and the expected level of attention devoted by the relevant consumers towards the use of branding and trade marks. The judges agreed with the opponent that the marks as such were similar, that the goods and services concerned were similar, but pointed out that the earlier mark's degree of distinctiveness was "lower than average". The fact that the painting "Das Schokoladenmädchen" (The Chocolate Girl) by Jean-Étienne Liotard had in the past often been used to market goods made of chocolate (as well as other goods) had "weakened" the earlier mark's distinctiveness. The proprietor of the earlier mark had also not sufficiently shown that it had used the mark extensively. As a consequence, the requirements concerning the "distance" between the marks had to be lowered. Given both marks claimed different colours, the earlier mark was a two dimensional mark, whereas the later mark was a three dimensional mark, as well as the differences in figure, shape and face of the girl depicted, were enough in the court's view to rule out a likelihood of confusion between both marks. As such, the court rejected the appeal with the overall result that the opposition had failed.

To read this interesting court order in its entirety (in German), please click here (case reference
27 W (pat) 89/09 of 15 June 2009).

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