Germany: Die grüne Post ./. Die grüne Post (with device)

The Federal German Patent Court (Bundespatentgericht) recently had to decide about an opposition filed against the trade mark 

based on the earlier sign

Die grüne Post

The term "Die grüne Post" has the meaning "the green post" in German so that it is not really surprising that both signs cover amongst other postal services and the like. Thus at least a part of the goods and services claimed by the respective trade marks are identical.

Usually one would tend to think that the case is rather simple since 

  • the services are identical,
  • the signs are at least identical from a phonetic point of view and
  • the earlier sign is registered as a word mark thus it should have at least some inherent distinctiveness

Therefore a risk of confusion exists, the opposition is successful, the contested trade mark is partially deleted and the case is closed.

This at least was the opinion of the German Patent and Trademark Office in the first two instances.

However, the court held that although the earlier sign is registered as a word mark its distinctiveness is extremely low. On the one hand the public is used to the term "Post" in the field of postal services. On the other hand the element "grün" ("green") will merely be perceived as an indication for the relevant services being environmentally compatible, non-polluting, ecologically friendly or the like and may thus not serve as an indication for a specific company supplying the relevant services.

In view of this extremely low distinctiveness of the earlier sign the Court requested identical or at least highly similar signs in order to state a risk of confusion. When assessing the similarities between the signs the Court then came to the conclusion that the additional device element is sufficient to differentiate between the signs in view of the extremely low disctinctiveness of the word elements. This, according to the Court, not only applies to visual similarity but to phonetic similarity as well. 

So the opposition was dismissed ...

Case reference: Bundespatentgericht 26 W (pat) 193/09 of April 26, 2011. The decision can be retrieved from the court’s website by following the above link.

PS: This Class 46 member disagrees with the Court in this case. The Court admitted that different colours are used in the field of postal services to differentiate between different companies. Even the colour green is currently used by a specific company. Thus the word elements "Die grüne Post" may serve as an indication for a specific company and therefore have to be regarded as having a certain distinctiveness. Additionally the Court seems to think that the term "Die grüne Post" completely lacks distinctiveness. A possible complete lack of distinctiveness of the word elements "Die grüne Post" and thus of the earlier sign itself may be the subject of cancellation proceedings based on absolute grounds but should not be discussed in opposition proceedings, in which the fact, that the earlier sign was registered as a word mark and thus implicitly has inherent distinctiveness should be accepted. Finally this Class 46 member is of the opinion that the graphical element of the contested sign is not sufficient to overcome the phonetical identity between the word elements. Comments of readers are highly appreciated in this case...  

Posted by: Robert Börner @ 08.32
Tags: lack of distinctiveness, dominant element of device mark,

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