In another decision, the German Federal Patent Court has sharpened the requirements for the assumption of similarity of signs if the signs only match in descriptive elements (BPatG, decision of October 7, 2021, 30 W (pat) 503/20 – dental.h/DENTAL X
The decision is based on an opposition against the trademark “dental.h” based on the trademark “DENTAL X” for inter alia services of a dental laboratory. The DPMA rejected the opposition, the appeal before the BPatG was also unsuccessful.
As generally known, the element “DENTAL” stands for goods or services in the field of “dental related goods and services” and is thus descriptive in itself with regard to the services claimed. The other element of the opposition mark, the letter “X”, on the other hand, is not descriptive, and the overall sign “DENTAL X” is thus at least averagely distinctive. However, the signs “dental.h” and “DENTAL X” coincide only in the descriptive element “DENTAL”. In their respective non-descriptive elements, the letters “X” and “h”, the signs differ. The court therefore logically rejected the assumption of sufficient similarity of the signs and thus of a likelihood of confusion, even in the case of identical services.
The decision is convincing. The opposing party could not have monopolized the descriptive word “DENTAL” in its sole position as a trademark. If the opponent could then invoke similarity of signs even in cases in which another sign corresponds precisely only in this element of the opposition mark, which cannot be protected in the sole position, this would contradict the principles of trademark law. An opposition can only be successful if the other, non-descriptive elements of the marks are at least similar.
With this decision, the BPatG contributes to eliminating the uncertainties that the INJEKT/INJEX ruling of the Federal Court of Justice had triggered in 2020. The Federal Court of Justice ruled that descriptive indications could not be disregarded in the comparison of the signs and could contribute to the overall impression. It can now be assumed that, while descriptive indications cannot be completely ignored in the comparison of the signs, the similarity of the signs in these descriptive elements alone will not be sufficient for the assumption of similarity of the signs if the other elements of the marks are not also at least similar.
And, of course, it is generally advisable to choose a strong, non-descriptive trademark from the outset and to thus avoid such discussions from the outset.