In the “Thomson life” decision (of 6 October 2005 – C-120/04) the ECJ held that there may be a likelihood of confusion where the contested mark is a composite consisting of an earlier registered trade mark together with the company name of another party where the earlier registered trade mark does not dominate the overall impression but still has an independent distinctive role within the composite mark. In the “Maltese Cross” decision of 11 May 2006 (no. I ZB 28/04), the German Federal Court of Justice (Bundesgerichtshof - FCJ) gave useful guidance on the concept of the independent distinctive role. The opposition proceedings, in which the FCJ had to decide, related to a scenario, where the contested trade mark (left) of the company name “LAZARUS” and the “Maltese Cross” device and where the opposition mark consists of that “Maltese Cross” (right). Both trade marks were registered for among other things identical nursing and charitable services.
The Federal Patent Court (Bundespatentgericht - FPC) found that there was no likelihood of confusion between the two marks. It held that the device element of the Maltese Cross did not dominate the overall impression of the contested mark, as the relevant public would regard the word element “LAZARUS” as dominating. On appeal, the FCJ reversed that decision and referred the matter back. Applying the “Thomson life” ratio, the FCJ regarded the - purported - dominance of the word “LAZARUS” as irrelevant for the independently distinctive role of the “Maltese Cross” in the contested mark. On the contrary, the FCJ found a variety of factors which could support an independent role of the “Maltese Cross”: In particular, the FCJ referred to the visual effect of the crest-shaped design of the “Maltese Cross” which suggests a perception separate from the word element. Also, the FCJ referred to the branding customs in the charitable services sector; it found that if the relevant public is used to combinations of company names with crest-shaped cross designs, there is an advanced likelihood that the cross design will be perceived as independently distinctive.
The decision is important as it unequivocally confirms that there are two alternative concepts according to which a common component can convey likelihood of confusion between a mark solely consisting of that component and a mark combining that component with another element: either the common component (or a similar one) has an independently distinctive role within the overall context of the colliding mark or, alternatively, it dominates the overall impression. Also, the decision illuminates what can support an independently distinctive role. Sign-inherent factors are important, such as the specific design of the complex sign, the arrangement of its components and their interrelation. The decision also underlines the importance of sector specific branding customs.
From that decision no conclusions can be drawn as to the widely discussed question of whether the concept of the independently distinctive role of a component can also convey a likelihood of confusion between two complex trade marks, which have the component in common but each combine it with different elements, such as different company names.