German Federal Supreme Court reorientation: Upgrading of weakly distinctive trademarks in case of likelihood of confusion

The decision of the German Federal Supreme Court (BGH) INJEKT/INJEX of February, 6 2020 is remarkable and fundamental for originally weakly distinctive prior trademarks or elements in trademark conflicts. Their importance in the assessment of the similarity of the signs has increased. In addition, the court also confirms the scope of genuine use extending in opposition proceedings to not too broad general terms covered by the registration.

In any case, – explicitly emphasized as new orientation and following the practice of the European Court of Justice (ECJ) – the BGH dogmatically underlines that weakly distinctive or descriptive trademark components cannot be excluded from the assessment of the similarity of the signs in the finding of a likelihood of confusion. If conflicting signs coincide only in descriptive elements, this fact cannot a priori be excluded for the examination of the respective overall impression of the conflicting signs.

Injection syringes INJEKT/INJEX – no likelihood of confusion according to the Federal Patent Court

In the trademark dispute between two pharmaceutical companies regarding specific injection syringes, pending since 2012, the German Federal Patent Court (BPatG) as prior instance had confirmed the rejection of the opposition of the previous instances regarding the earlier word marks INJEKT against the German word mark registration INJEX due to the lack of likelihood of confusion. Competitors could in principle approximate the term of their trademarks to the same descriptive indication. There would only be a far below-average aural or visual similarity between INJEKT and INJEX.

Referral back by the Federal Supreme Court – Taking into consideration of elements with a low degree of distinctiveness when comparing trademarks

First of all, the BGH – in accordance with the BPatG – assumes that the distinctiveness of the opposing marks INJEKT is originally below average due to the descriptive reference to medical syringes. The exchange of the letters “c” (“inject” being descriptive of “spritzen, injizieren” in German) with “k” leads to a – albeit low – per se distinctive character (“Eigenprägung”) and, thus registrability. This is increased to average distinctiveness through use.

However, the BGH upholds the appeal and criticizes that a likelihood of confusion cannot be denied precisely because the signs are not sufficiently similar. When examining the similarity of signs according to their respective overall impression, descriptive aspects of the signs must not be ignored from the outset and in general. Specifically and contrary to the BPatG, the assessment of the similarity of the signs must not only be based on the final consonants KT (for INJEKT) or X (for INJEX) – the elements which allegedly form the distinctive character (“eigenprägend”) of the conflicting marks. The visual and phonetic identity of the conflicting signs, apart from these final consonants, in form of the descriptive part alluding to the term “inject” should not be neglected in the overall perception of the marks.

Short comment

Up to now, there has been – at least on a dogmatic level – a divergence between the approach of the German and the EU courts in the assessment of likelihood of confusion in the face of weakly distinctive or descriptive marks (components). The BGH (e.g. in its decision GRUR 2012, 1040 – pjur/pure) already narrowly defined the scope of protection of such trademark registrations, namely limited to their distinctive part (“Eigenprägung”), i.e. to the distinctive element which was the basis for granting protection and, thus, beyond the descriptive content. As regards the similarity of the signs, descriptive indications – due to the consideration only of the distinctive and, consequently, dominant elements of the conflicting marks – were not taken into account in lack of a decisive influence on the overall impression of such mark. On the other hand, the EU courts (e.g. recently ECJ GRUR 2020, 52 – Hansson (Roslagspunsch/ROSLAGSÖL) did not a priori exclude similarities in weakly distinctive or descriptive elements from the assessment of the similarities of signs, in which the marks are generally to be compared as a whole. In order to avoid an overemphasizing of the element of the distinctiveness (as opposed to the weighting factor for the likeliness of confusion of the similarity of the signs), the aspect of weak distinctiveness is only considered in the overall assessment of likelihood of confusion.

The BGH has now explicitly moved away from the – dogmatic (by the a priori limitation of the scope of protection) – exclusion of descriptive components in the assessment of the similarity of signs. It has moved towards the ECJ’s line of a general comparison of the signs as a whole.

In practical terms, this may tend to enhance the value of identical weakly distinctive or descriptive elements, especially in the case of one-word marks. Similarity searches will certainly become more challenging with regard to “weak” trademark registrations.

Nevertheless, the fear of a straightforward favouring of weak marks in the assessment of likelihood of confusion and of an indirect monopolisation of descriptive indications is probably unfounded. Irrespective of both the BGH as well as the ECJ pointing out the possibility of applying for invalidation due to absolute grounds for refusal or, in infringement proceedings, to the free use exception due to descriptiveness, a likelihood of confusion will generally be denied in case of conflicting marks only coinciding in descriptive or weakly distinctive constituents as result of the overall weighting and the specific circumstances of the individual cases – already for lack of a determining influence on the overall impression of a trademark. Thus, the result of the assessment of likeliness of confusion will probably be mostly the same under the new “European” approach of the BGH compared to its previous systematic which a priori limited the scope of protection of marks eliminating their descriptive elements. The more open, broader consideration of the overall signs (including their descriptive elements) should be “captured”/”counterbalanced” by the lower importance of such components on the overall impression of the respective mark and during the overall weighing of the individual factors for determining the likeliness of confusion (in particular the low degree of distinctiveness). Nevertheless, weak marks should be taken “more seriously” and should be more carefully examined, even in a purely German context.

Clarification regarding genuine use

A further topic of the decision is not to be neglected: the BGH clarifies the scope of protection of a prior trademark challenged with the plea of non-use in opposition or infringement proceedings that the scope of protection of such trademark registered for a broad general term of goods/services is limited to the goods/services actually used. However, this means, that – beyond the specifically marketed individual product with all its individual characteristics (in this case credibility for “two-part disposable syringes”) – protection is also provided for similar goods (“gleichartige Waren”, here the product category “medical syringes”). The similarity is to be determined on the basis of an economic analysis. In the specific case, the BGH shares the result of the BPatG of an identity of goods between the extended product category “medical syringes” of the prior marks and the “needle free injection devices” claimed by the younger registration.

From a legal point of view, it is true that genuine use of the prior trademark in trademark infringement or opposition proceedings does not have a scope as broad as in trademark revocation proceedings. Due to the economic “moving space” to be preserved for the owner of the mark contested in revocation proceedings, genuine use for a specific/special product is to be considered genuine use also for a more comprehensive (not too broad) general term of goods in such proceedings. In trademark infringement proceedings, the use requirement generally requires the prior trademark being treated as if it had only been registered for the goods specifically used. However, this narrower perspective also includes – somewhat more broadly – similar goods.