The Federal Patent Court recently held that a likelihood of confusion existed between the marks SANDTER 1953 and >SANDER<.(1) Despite low sales volumes, the >SANDER< mark was capable of preserving rights. However, the mark was phonetically confusingly similar to the trademark SANDTER 1953.
Luxembourg company NetMed Sàrl applied to register the trademark SANDTER 1953 at the German Patent and Trademark Office for various goods in Classes 3, 5 and 10. German company Sander chemisch-pharmazeutische Fabrik GmbH filed an opposition based on its trademark >SANDER<, which it had registered in 1933. The German Patent and Trademark Office rejected the opposition because right-preserving use had not been established.
The Federal Patent Court recognised right-preserving use, at least for 'finger cots' – protective covers for fingers which are used both in factories as industrial safety products and as hygienic protection in the medical and first aid fields. The Federal Patent Court did not see the low sales volume as a problem and considered it to be in the applicant's favour that the finger cots were low-priced goods. Low sales figures of low-priced, mass-produced goods could exclude purely fictitious use when high volumes are sold in the market, which was the case at hand. The (absolute) sales figure was not important. Rather, the issue was whether, when viewed objectively, the sales activities could be regarded as making good business sense even without taking into account the purpose of maintaining the brand's existence.
Further, the Federal Patent Court considered finger cots to be covered by the list of goods of the opposing mark. Although finger cots were not explicitly listed, this category could be subsumed under "gloves" (Class 25) and "bandages" (Class 10). The finger cots served to cover one or multiple fingers in order to prevent unprotected contact with the environment.
In order to assess the similarity of the goods, the Federal Patent Court applied the extended minimal principle, which extends the group of goods taken into account beyond those actually used (here "finger cots for use in occupational safety") to other fields of application (eg, the medical field). The relevant public would consider the goods to be a special form of protective clothing, irrespective of their specific purpose. Thus, the Federal Patent Court recognised, based on the same hygienic purpose (ie, to protect against injury or contamination), a similarity between the goods and "dressings" in Class 5 and "clothing especially for operating rooms; clothing for medical purposes" in Class 10.
Finally, the Federal Patent Court affirmed trademark similarity because the contested mark SANDTER 1953 was decisively characterised by the word element 'sandter'. The additional element '1953' would be considered merely as an annual figure by the relevant public that contained no indication of origin. Phonetically, the marks SANDTER and SANDER could hardly be distinguished.
The Federal Patent Court saw no similarity with the remaining goods ("massage oil; disinfectants; towels and linen for medical purposes") and rejected the opposition in this respect. This was not affected despite a certain functional relationship (eg, the wearing of finger cots in the use of massage oil or disinfectants).
For low-priced mass-produced products, even low sales figures may be sufficient to constitute use to preserve rights. The quantities sold are the decisive factors. For old brands – in the case at hand the mark at issue had been registered in 1933 – it may make sense to reapply for the trademark if the terms in the registered class are outdated and use under those terms may take some effort to prove. In the parallel EU case, the Office for Harmonisation in the Internal Market Board of Appeal recognised use only for "bandages".(2)
For further information on this topic please contact Margret Knitter at SKW Schwarz Rechtsanwälte by telephone (+49 89 286 40 300) or email (email@example.com). The SKW Schwarz Rechtsanwälte website can be accessed at www.skwschwarz.de.
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