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THURSDAY, 28 NOVEMBER 2013
Battle of the Protans - German Federal Patent Court
The German Federal Patent Court (BPatG) recently allowed an opposition based on the older mark "Protan" against an application for "Triflex ProThan Detail". The decision - in German - is available here
Both trademarks were registered for identical goods, insulating material, in class 17. The German Patent and Trademark Office had rejected the opposition. The office held that the younger mark "Triflex ProThan Detail" would be perceived as a uniform composite mark. It could see no indications that "ProThan" would be identified by the relevant consumer groups as a dominant or individually distinctive element.
The BPatG reversed the decision. It applied the "Thomson Life" doctrine, holding that "ProThan" is perceived as individually distinctive within the composite younger mark. "Triflex" was found to be descriptive of the relevant goods which require a certain degree of flexibility. German consumers were therefore thought to understand "Triflex" as describing a material that is threefold flexible, or flexible in all three dimensions. Other consumers, especially professionals using the class 17 goods, might even recognize "Triflex" as the company name of the applicant. Since the applicant owns and uses a trademark series of "Triflex" marks, such users would recognize "Triflex" as the overarching house mark and "ProThan" as the relevant individual product designation. Likewise, the word "Detail" was said to be obviously descriptive. Hence, the court disregarded "Triflex" and "Detail" as less relevant elements and focused its comparison on the elements "ProThan" and "Protan". These being aurally identical and graphically very similar, the court found the opposition to be well-founded.
While this decision might not induce gasps of surprise from Alicante, where "Thomson Life" is applied quite liberally, the decision is rather unusual coming from a German trademark instance. So far, "Thomson Life" has been handled rather conservatively in Germany and applied mostly where the older mark has been taken over in identical form and combined either with the trade name of the applicant or with a well-known mark. The BPatG now clearly applies "Thomson Life" to a broader constellation, where the other elements of the composite mark are simply less distinctive and where the composite mark does not form a uniform meaningful expression. It remains to be seen whether decisions such as this one herald a new liberal trend or whether they will remain mere exceptions to the conservative rule.
Case Reference: 24 W (pat) 526/10 of 15 October 2013
Posted by: Anthonia Ghalamkarizadeh @ 08.23
Protan, ProThan, Triflex, BPatG, German Federal Patent Court, 24 W (pat) 526/10,
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