In Case T-338/09, Müller-Boré & Partner Patentanwälte . Rechtsanwälte applied in 1999 for the word mark MBP for services in Classes 35 and 42: ‘Business advice’ and ‘Patent agent services; legal services; services of a representative registered at the European Patent Office (European Patent Attorney); consultancy, representation, providing of expertise and research (technical and legal), in particular in the field of protection of industrial property regarding patents, registered designs, registered effects, trademarks, topography, plant varieties protection, copyright, employed inventors' rights and protected privilege licences; administration of protected privileges including fee monitoring; legal research concerning the protection of industrial property, in particular research into international protected privileges; technical consultancy; technical and legal translations’.

MM. Eugen Popp, Wolf E. Sajda, Johannes Bohnenberger et Volkmar Kruspig opposed it on the basis of ip_law@mbp. registered for services in Class 42 “Lawyers' offices” according to article 8(1) b) and 8 (4) of the CTMR read with Article 5 (2) of the Markengesetz on the basis of earlier commercial name “mbp.de”.

The Opposition Division rejected the opposition in its entirety. It found that even though the services are highly similar for Class 42 and similar for Class 35, the comparison of the signs excludes a risk of confusion. Further, the evidence filed does not demonstrate genuine use because dated 2000 and at the most, demonstrates use of a website.

The Board of Appeal partly cancelled the OD’s decision and refused the CTM for all services in Class 42. It held there was no similarity with Class 35 ‘business service’ and Class 42 ‘lawyer’s offices’. The General Court confirmed the findings.

There is visual and aural similarity between the marks, at least for the public in Germany and UK. IP will be considered as purely descriptive if understood as Intellectual Property (the Court rejected the argument that it will be understood as Internet Protocol), the symbol @ lacks distinctive character so the earlier mark seems derived from the contested mark “MBP”

Therefore, for identical services, the BoA correctly concluded that there is a likelihood of confusion due to the average distinctive character earlier mark, even for the specialized public with a higher degree of attention. Said public would have no difficulty in identifying the indication “IP llaw” as belonging to the legal field and would perceive the earlier sign as a variant of the contested CTM referring to particular specialized branch of MBP.

The General Court did not deem necessary to review the claim on whether the BoA had correctly assessed whether the opponent had demonstrated (scarce) use of the earlier trade name “mbp.de” (i.e.: only one webpage by way of “wayback machine” was dated before 2000 and use on letterheads did not demonstrate use as a trademark).