Inga George takes on the BURLINGTON ARCADE decision of the General Court (judgment of 6 December 2017 – T-123/16) concerning the similarity between the services of a shopping arcade and the goods that may be sold in the various shops.
Taking the example of the Rap Shot/Rap decision of the German Federal Patent Court (order of 30 November 2017 – 25 W (pat) 1/16), Thies Bösling explains the different standards of the FPC and the General Court in cases where the junior mark consists exclusively of the earlier mark, to which another word is added. While according to the GC, this is an indication that the two trade marks are similar (see, e.g. GC judgment of 8 June 2017 – T-6/16 – SOUTHERN/Southern Territory 23°48‘25“S; judgment of 10 October 2017 – T-382/16 – Wings/Asna Wings; judgment of 20 October 2016 – T-693/15 – canyon/CLOVER CANYON; judgment of 11 June 2014 – T-401/12 – BORN/JUNGBORN) the FPC takes a much more restrictive approach. To establish the a likelihood of confusion, the FPC generally requires that the common element dominates the junior sign to an extent that the additional element is negligible (see, e.g. FPC order of 9 October 2017 – 28 W (pat) 517/16 – Becker/Becker Mining; order of 22 September 2015 – 29 W (pat) 541/12 – MUC/Muc Consult), or that the combination of both elements is conceptually similar to the older mark (order of 22 September 2015 – 24 W (pat) 48/13 – JAM/JAM ON), or that the older mark has acquired an enhanced degree of distinctiveness through use (order of 11 January 2017 – 29 W (pat) 75/13 – Kosmos/ART KOSMOS; order of 17 February 2016 – 26 W (pat) 37/13 – real,-/POLLO REAL; order of 15 December 2016 – 24 W (pat) 93/14 – Bild/familybild).
Publication details:
Inga George, Dienstleistungen eines Einkaufszentrums sind Einzelhandelsdienstleistungen der Klasse 35 – Burlington Arcade (GRUR-Prax 2018, 73)
Thies Bösling, “Rap Shot“ ist nicht verwechselbar mit „Rap“ – Rap Shot/Rap (GRUR-Prax 2018, 77)
