This decision of the Bundespatentgericht (German Federal Patent Court or BPatG) focuses on parodic signs and whether these can be opposed based on well-known trade marks.
In 2013 a German individual filed for “British Hairways” for “hair salon services” in class 44. British Airways opposed the mark inter alia based on European trade mark (EUTM) No. 6561534 (shown below), covering, among others, “airline services” in class 39. The German Patent and Trade Mark Office (DPMA) rejected the opposition. British Airways appealed the case to the BPatG.
The BPatG upheld the appeal and cancelled the mark. The BPatG found no likelihood of confusion. However, it confirmed reputation of British Airways (see mark above) for “airline services”, and that the relevant public would establish a link between the marks given (1) the high similarity of the signs and (2) the very high reputation of the earlier mark.
Further, “British Hairways” would take unfair advantage of “British Airways”. In particular, the owner confirmed to have chosen the name to attract more customers. That such puns would be common in the hair salon business was considered irrelevant.
The use was also considered to be without due course. The court agreed that “British Hairways” was protected as a parody. Nonetheless, freedom of the arts and freedom of expression (if applicable) would not outweigh British Airways’ IP rights. “British Hairways” clearly takes unfair advantage of the strong reputation of British Airways. Therefore, it would be unreasonable to grant an exclusive registered right to “British Hairways”, irrespective of its proposed use.
While freedom of the arts and freedom of expression may be raised as defences in relation to use, this does not apply to registrations.
Case details at a glance
Decision level: Bundespatentgericht
Parties: British Airways Plc v private individual
Citation: 30 W (pat) 15/19
Date: 20 January 2022