The German Federal  Patent Court recently had to decide on the likelihood of confusion  between an earlier word mark registration for the sign “Casino Royale” and the later filed word and device mark “Casino Royale” (shown to the left) both covering, inter alia, similar services in classes 38 and 41.

Disagreeing with the German Patent and Trademark office (DPMA), the court denied a likelihood of confusion between both marks due to a low degree of distinctiveness of the earlier mark.  The court’s reasoning is summarised in its headnote, which this member of Class 46 has tried to (loosely) translate into English:

The very low degree of distinctiveness of word mark "Casino Royale", which renders this mark near unregistrable, means that despite the phonetic and conceptual identity between the opposed mark and the earlier trade mark and despite the high degree of similarity of the services covered, a likelihood of confusion must be denied on legal grounds.   The scope of protection of the earlier trade mark is limited to its “Eigenprägung” [Class 46 comment:  this may best be translated into “distinctive dominant character” but the author is open to a better translation], i.e. those components that render the sign eligible for trade mark registration (see BGH GRUR 2003, 963 (965) - Antivirus / Anti-Virus).   However, where a trade mark does not possess an “Eigenprägung” part - as it is the case here with the earlier mark on which the opposition is based, which consists solely of a combination of non-protectable elements - this cannot mean that more rights can be derived from a word mark than can be derived from a device mark;  as this would allow for an illegal retrospective monopoly in non-protectable signs.

BPatG, order of 31 July 2012, case reference 27 W (pat) 578/11 – Casino Royale - the full text of the decision can be retrieved here.