European Union Trademarks
The level of protection European Courts grant to weak marks is often surprising from a German perspective. For example, the CFI recently granted an opposition against a new application “FAIR ZONE” based on a figurative mark with the sole word element “FAIR”. The court conceded that the word “FAIR” was weak because it is generally understood only as an indication of fair trade. In the case of identical goods, however, the similarity of signs was sufficient to assume likelihood of confusion (ECJ, judgment of 9.9.2020, T-589/19).
The German Federal Supreme Court (FCJ) was so far stricter and usually only granted protection to weak marks against such marks that refer to the descriptive element in the same way. Now the FCJ seems to follow the ECJ. The FCJ had to decide on an opposition based on the trademark “INJEKT” against the younger trademark “INJEX”. Both trademarks claimed protection for medical devices such as syringes. The FCJ decided that in a comparison of signs, components with a weak distinctive character could not be disregarded from the outset. To balance interests of owners of younger trademarks, the BGH stresses the possibility of cancellation applications or the protective barrier of purely descriptive use (FCJ, decision of 6.2.2020 – I ZB 21/19).
Once a trademark has been registered, competent authorities cannot deny it any protection in opposition proceedings or infringement law suits. Especially after this more recent case law of the FCJ, owners of younger trademarks are therefore well advised to file an application for cancellation based on absolute grounds in good time in case of conflict. However, those who are creative in the selection of their trademark and do not resort to almost unprotectable modifications of purely descriptive terms could be even better positioned. Because whoever chooses a descriptive sign must be prepared for the fact that many third parties may also want to use or protect precisely this descriptive term or an alteration thereof.