On 5 March 2015, the German Federal Court of Justice (I ZR 161/13) issued a ruling that two
wordmarks that consist of the same three letters, albeit in a
different order (here: IPS and ISP), might lead to confusion as to
the origin of goods and services sold under these marks. In
particular, the Court noted that the pronunciation of the
individual letters in their given order had the same sequence of
vowels (here: i-e-e, German pronunciation). Thus, the Court found
there to be a likelihood of confusion between the two wordmarks
that were both used for IT services.
Pursuant to section 14 para. 2 No. 2 of the German Trademarks
Act (MarkenG), "a third party shall be
prohibited, without the consent of the proprietor of the trademark
in the course of trade, from using a sign if the likelihood of
confusion exists for the public because of the identity or
similarity of the sign to the trademark and the identity or
similarity of the goods or services covered by the trademark and
the sign, including the likelihood of association with the
trademark". The question whether a likelihood of confusion
exists between two marks must be assessed globally, taking into
account all factors relevant to the circumstances of the case.
According to the German Federal Court of Justice, the Hamm Court of
Appeal was right, therefore, to consider that the two marks share a
first identical vowel, "i", that both are formed
according to the pattern "vowel-consonant-consonant",
that they have the same number of syllables and have a similar
sequence of vowel sounds in German ("i-e-e").
The relevant factors to be considered in the assessment of
similarity between two marks are phonetic similarity, graphic
similarity and similarity in meaning. Under established case law,
it is, in principle, sufficient to show similarity between two
marks in one of these areas. Thus, in the present case, the fact
that the sequence of vowels is identical led the Court to conclude
that the (German) pronunciation of the two marks may lead the
public to believe that the IT services at issue derive, at the very
least, from economically linked undertakings. In the Court's
opinion, a likelihood of confusion in the perception of the
targeted public could therefore not be ruled out, despite
differences in the consonant pattern.
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This Mayer Brown article provides information and comments
on legal issues and developments of interest. The foregoing is not
a comprehensive treatment of the subject matter covered and is not
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