Is it a boy or a girl? The German Federal Patent Court investigates...
Is it a boy or a girl? This is a question usually of concern to new and/or expecting parents, but less so perhaps a question considered in trade mark opposition matters. However, a recent court decision by the German Federal Patent Court (case reference: 29 W (pat) 14/12) hinged on exactly that point and may provide IPKat-reading trade mark practitioners with some interesting arguments.
An opposition based on an earlier Community trade mark registration for the mark CORDIUS covering, inter alia, 'financial services' was brought against a German national trade mark application for the mark CORDIA covering similar financial services in class 36. Comparing the services (which this Kat will not list/translate in detail), the court easily concluded that these services were of medium similarity. The court further found that both marks were aimed at specialised consumers from the trade as well as consumers with a background in finance and economics. Such consumers, in view of the court, paid a higher level of attention due to their professional backgrounds. However, even if the financial services offered under the trade marks were aimed at the average consumer, then it would have to be assumed that these would pay a heightened level of attention due to the fact that financial decisions are usually more closely considered than everyday purchases.
An opposition based on an earlier Community trade mark registration for the mark CORDIUS covering, inter alia, 'financial services' was brought against a German national trade mark application for the mark CORDIA covering similar financial services in class 36. Comparing the services (which this Kat will not list/translate in detail), the court easily concluded that these services were of medium similarity. The court further found that both marks were aimed at specialised consumers from the trade as well as consumers with a background in finance and economics. Such consumers, in view of the court, paid a higher level of attention due to their professional backgrounds. However, even if the financial services offered under the trade marks were aimed at the average consumer, then it would have to be assumed that these would pay a heightened level of attention due to the fact that financial decisions are usually more closely considered than everyday purchases. Based on this background, the German Federal Patent Court therefore on balance decided against a likelihood of confusion between CORDIA and CORDIUS, even though both trade marks share the identical first five letters CORDI- and only differ in their respective ending –A vs -US. The court explained that it was true that the average consumer usually pays more attention to the beginning of trade marks, which in this case were visually and phonetically identical. Nonetheless, the judges took the view that the relevant consumers in this case would also pay closer attention to the "significant gender difference" between CORDIA and CORDIUS, i.e. one being a female first name (CORDIA), the other one being a male first name (CORDIUS). Consequently, the judges held that the marks were visually, conceptually and phonetically distinguishable and there was no likelihood of confusion.
A quirky and enjoyable little case, which can be read in its entirety here (in German).