In its ruling of March 2, 2017 (case reference: I ZR 30/16), the BGH overturned a ruling by the Higher Regional Court of Hamm. This court dealt with the likelihood of confusion under trademark law between two opposing signs. The OLG denied the likelihood of confusion between “Medicon-Apotheke” and “Medico Apotheke” despite their similarity in terms of sound and typeface.
The BGH clarifies that the assessment of whether a word mark is descriptive of the goods or services claimed depends on the meaning attributed to the words by the relevant public. However, it is not important what meaning the trademark owner wants to attach to the words.
“Medicon pharmacy” vs. “Medico pharmacy”
The owner of the word mark “Medicon Apotheke” was a service provider in the field of pharmacy. The trademark of the word/figurative mark consisted of the superimposed words MEDICON (blue) and APOTHEKE (red) on a white background.
She objected to the operator of a pharmacy with the name “Medico Apotheke”, which could also be found online under the domain “medico-Apotheke-p”. In her opinion, the use of the term “Medico-Apotheke” infringed her licensed trademark rights from the point of view of likelihood of confusion.
LG and OLG deny likelihood of confusion of trademark law based on meaning
The Regional Court of Bielefeld and the Higher Regional Court of Hamm had initially assumed that there was no likelihood of confusion between the two signs (Ref.: 17 O 12/15 and 4 U 77/15).
The Higher Regional Court of Hamm assumed that the public would understand the word elements “medi” to mean medicine, medical or medication, and the word element “con” to mean consulting. This interpretation of the brand name reflects the area of activity of the trademark owner’s company – namely consulting in the field of medical products.
According to the Higher Regional Court of Hamm, the trademark owner of “Medicon-Apotheke” and Medico-Apotheke are not active on the same market according to the meaning of the word mark – namely the market for the distribution of medicines.
BGH: Analytical consideration of the brand name irrelevant
However, the BGH now opposes this. It contradicts the principle of experience that the public generally takes a dissecting and analyzing view of a brand name. The public would clearly assume the same business field behind the term “Medicon-Apotheke” as behind the term “Medico-Apotheke”.
However, only the phonetic, visual and conceptual similarity of the signs is decisive for the assessment of the likelihood of confusion. However, a meaning that only emerges after analytical consideration is not sufficient. In the present case, the trademarks have no clearly recognizable distinctive meaning.
Furthermore, the BGH clarifies in its ruling that the likelihood of confusion cannot be denied, especially if the service is identical, the word mark has the same average distinctiveness and the number of characters is the same.