In the current issue 20/2023 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis Immaterialgüter- und Wettbewerbsrecht” (GRUR-Prax – Intellectual Property and Copyright Law / Practice Intellectual Property and Competition Law), BOEHMERT & BOEHMERT partner and attorney-at-law Dr. Rudolf Böckenholt explains a decision of the EUIPO of July 21, 2023 (R 2425/2022-5, GRUR-RS 2023, 18993 MENA) on the question of the effect of phonetic similarities of trade marks in the case of visual differences, if the products are predominantly purchased on sight.
The EUIPO takes the position that in such a case the visual impression of the marks is ultimately decisive.
“Buying on sight” means that customers do not ask for products in the supermarket, for example, but move through shelves in a search oriented on memory patterns, i.e. looking in particular for “familiar” labels, colours, design shapes and types of packaging. If it could be established that products would be bought on sight, the otherwise applicable rule that the public orientates itself on the simplest element, i.e. as a rule the word element, would no longer apply. The EUIPO is not alone in this view, but similar arguments before German courts have tended to be unsuccessful in the past.
The complete article by Dr. Rudolf Böckenholt can be found in German in the printed edition of GRUR-Prax 20/2023. Subscribers to Beck-Online can view it online here.