a) The determination that a name is used as a synonym for a certain method and has developed into a generic term is subject to strict requirements. As long as a relevant public still adheres to the meaning of the word as an indication of the origin of the goods or services from a particular business, such a development cannot be assumed.

b) If a sign identical to an earlier mark is incorporated into a later combination sign, the increased distinctiveness of the earlier mark due to use can be taken into account when determining the distinctive components of a later sign. However, it cannot generally be concluded that a sign incorporated into an overall sign always characterizes the latter if it has increased or at least average distinctiveness as a result of use. Rather, the overall sign in question must be taken into consideration and it must be examined on a case-by-case basis whether all other components of this overall sign largely recede into the background (clarification of BGH, judgment of December 5, 2012 – I ZR 85/11, GRUR 2013, 833 para. 48 = WRP 2013, 1038 – Culinaria/Villa Culinaria).

Tenor

On appeal by the opponent, the decision of the 30th Senate (Trademark and Design Appeal Board) of the Federal Patent Court of March 23, 2017 is set aside.

The case is referred back to the Federal Patent Court for a different hearing and decision.

Reasons

A. On October 26, 2010, the trademark owner applied for the word mark “Internationale Kneipp-Aktionstage” No. 30 2010 062 575 at the German Patent and Trademark Office for the services in Class 41 “Education, training, entertainment, sporting and cultural activities”, Class 43 “Services for the catering and accommodation of guests” and Class 44 “Medical services; health and beauty care for people”. The trademark was entered in the register on February 14, 2011 and the registration was published on March 18, 2011.

On May 30, 2011, the opponent filed an opposition based on its word mark filed on May 30, 1996 and registered on April 7, 1998, No. 396 24 268 “KNEIPP”, the scope of protection of which includes the services in Class 41 “Education; training; entertainment; sporting and cultural activities”, Class 43 “Catering; accommodation for guests” and Class 43 “Information and advice on medicinal plants and diet as well as water and herbal cures through the publication of texts; Training and further education in the field of hydrotherapy, phytotherapy, exercise therapy, nutritional therapy and health therapy, in particular for doctors, healers, medical assistants and bath attendants; medical care, health and beauty care; Spa services in bathing and health resorts as well as sanatoriums; curative treatment for prevention, rehabilitation, as well as water application, administration of baths, in particular herbal baths, drinking cures with herbal, tea and plant juices; exercise therapy, nutrition and diet therapy, order therapy; Collecting information material on therapeutic experiences with water and herbal cures, in particular for spa doctors, doctors of naturopathy, health resorts; information and advice on medicinal plants and diet as well as water and herbal cures; services in the field of veterinary medicine and agriculture.

The German Patent and Trade Mark Office rejected the opposition by decision dated December 5, 2014. The opponent’s appeal against this was unsuccessful (BPatG, GRUR 2018, 529 = WRP 2018, 578).

With the appeal on points of law allowed by the Federal Patent Court, the opponent continues to pursue its request for cancellation.

B. The Federal Patent Court held that the German Patent and Trademark Office had rightly rejected the opposition based on the word mark “KNEIPP” pursuant to Sec. 43 para. 2 sentence 2 MarkenG.

However, the comparative marks claimed protection for identical services. However, the original distinctiveness of the opposing mark in relation to the services in question is far below average. The name Kneipp has a descriptive function for the services in question because it refers to the therapies and teachings developed by the priest Kneipp in the 19th century. It can be assumed in favor of the opponent that its trademark “KNEIPP” has increased public awareness and distinctiveness due to intensive use. This merely means that the opponent’s mark should be accorded an average scope of protection.

A likelihood of confusion within the meaning of Section 9 para. 1 No. 2 MarkenG is ruled out in any case due to a lack of similarity of the signs. The “Kneipp” component of the sign does not characterize the overall impression of the challenged mark “Internationale Kneipp-Aktionstage” in such a way that its other components are pushed into the background. The public has no reason to recognize the earlier mark in the later combination of signs as a reference to the earlier mark owner because the earlier sign “KNEIPP” is reduced to its descriptive core in the later combination and the later combination mark appears as part of a uniform statement. It is also not apparent that the element “Kneipp” occupies an independent distinctive position within the challenged mark and therefore a likelihood of confusion in the broader sense is to be affirmed.

The opponent could also not successfully rely on the protection of the mark with a reputation pursuant to Sec. 9 para. 1 No. 3 MarkenG. The public, which perceives the challenged mark as a uniform, descriptive overall term, has no reason to establish a mental link to the – assumed – well-known mark of the opponent.

C. The opponent’s admissible appeal on points of law is successful.

I. An appeal on a point of law that is admitted without being limited to a definable part allows the appellate court to conduct a full legal review of the contested decision without being limited to the decision on the legal questions cited as grounds for admission (see decision of July 9, 2015 – I ZB 65/13, GRUR 2015, 1012 para. 7 = WRP 2015, 1108 – Nivea-Blau; decision of February 11, 2016 – I ZB 87/14, GRUR 2016, 500 para. 6 = WRP 2016, 592 – Fünf-Streifen-Schuh).

II. During the appeal proceedings, the law applicable to the dispute was amended by the Act implementing Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (BGBl. I 2018, p. 2357) with effect from 14 January 2019. However, this does not result in a change to the legal situation that is relevant for the assessment of the dispute.

1. since the application for the contested trademark was filed between October 1, 2009 and January 14, 2019, the opposition filed against the registration pursuant to Sec. 158 para. 3 MarkenG in the version applicable since January 14, 2019 (MarkenG nF), Section 42 para. 1 and 2 MarkenG in the version applicable until January 14, 2019 (MarkenG aF) shall continue to apply.

According to § 42 para. 1 MarkenG aF, the proprietor of a trademark or a business name with earlier priority may file an opposition against the registration of the trademark within a period of three months from the date of publication of the registration of the trademark pursuant to § 41 para. 2 MarkenG, the proprietor of a trademark or a business name with earlier seniority may file an opposition against the registration of the trademark. The opposition can be based on the fact that the trademark can be canceled due to an applied for or registered trademark with earlier seniority pursuant to Section 9 MarkenG (Section 42 (2) No. 1 MarkenG aF).

2. the opposition proceedings for the cancellation of the contested trademark pursuant to § 42 para. 2 MarkenG (old version) aimed at the cancellation of the challenged mark has the objective of eliminating an existing state of disturbance. Accordingly, the reason for cancellation must exist both at the time of the collision, i.e. at the time of filing the application for the challenged later trademark, and at the time of the decision on the opposition (BPatG, decision of October 4, 2017 – 27 W [pat] 38/14, juris para. 43; Hacker in Ströbele/Hacker/Thiering, MarkenG, 12th ed., § 9 para. 224). A strengthening of the distinctiveness of the opposing mark must therefore have already existed at the time of priority of the challenged mark and still exist at the time of the decision. A weakening of the distinctiveness that occurred after the filing date must be taken into account (see BGH, decision of April 3, 2008 – I ZB 61/07, GRUR 2008, 903 para. 14 = WRP 2008, 1342 – SIERRA ANTIGUO; decision of June 2, 2016 – I ZR 75/15, GRUR 2017, 75 para. 31 = WRP 2017, 74 – Wunderbaum II).

3. the amendments to Section 9 MarkenG that came into force with effect from January 14, 2019 are irrelevant for the decision in the dispute The version of Section 9 para. 1 no. 3 MarkenG, which has been in force since 14 January 2019, represents an adaptation of the provision to the case law of the Court of Justice of the European Union, with which the latter extended the protection of reputation in accordance with Directive 89/104/EEC to the area of similar goods and services (cf. ECJ, judgment of January 9, 2003 – C-292/00, ECR. 2003, I-389 = GRUR 2003, 240 para. 30 – Davidoff [Davidoff/Durfee]). This corresponds to the case law of the Senate (see BGH, judgment of September 23, 2015 – I ZR 78/14, GRUR 2015, 1201 para. 76 = WRP 2015, 1487 – Sparkassen-Rot/Santander-Rot). The newly introduced provision in Section 9 para. 3 MarkenG as amended serves to implement Art. 39 para. 7 of Directive (EU) 2015/2436. Accordingly, goods and services are not considered similar because they appear in the same class of the Nice Classification. On the other hand, goods and services are not considered different because they appear in different classes of the Nice Classification. The fact that class divisions have no direct significance for the assessment of the similarity of goods or services already corresponds to German legal practice (Büscher in Büscher/Dittmer/Schiwy, Gewerblicher Rechtsschutz Urheberrecht Medienrecht, 3rd edition, § 14 MarkenG para. 221; Hacker in Ströbele/Hacker/ Thiering loc. cit. § 9 para. 100 with further references).

III. The Federal Patent Court’s assessment that there is no likelihood of confusion between the word mark “KNEIPP”, on which the opposition is based, and the challenged mark “Internationale Kneipp-Aktionstage” pursuant to Sec. 9 para. 1 No. 2 MarkenG does not stand up to legal scrutiny.

1. the question of whether there is a likelihood of confusion within the meaning of Sec. 9 para. 1 No. 2 MarkenG exists must – as with § 14 para. 2 No. 2 MarkenG – must be comprehensively assessed taking into account all relevant circumstances of the individual case.

An interaction between the identity or similarity of the goods or services, the degree of similarity of the marks and the distinctiveness of the earlier mark must be assumed in such a way that a lower degree of similarity of the goods or services can be offset by a higher degree of similarity of the marks or by an increased distinctiveness of the earlier mark and vice versa (established case law; cf. Case law; see only ECJ, judgment of December 18, 2008 – C-16/06 P, ECR 2008, I-10053 = GRUR-RR 2009, 356 para. 45 f. – Les ?ditions Albert Rene v OHIM [OBELIX/MOBILIX]; BGH, decision of July 9, 2015 – I ZB 16/14, GRUR 2016, 283 para. 7 = WRP 2016, 210 – BSA/DSA DEUTSCHE SPORTMANAGEMENTAKADEMIE; decision of January 14, 2016 – I ZB 56/14, GRUR 2016, 382 para. 19 = WRP 2016, 336 – BioGourmet; decision of November 9, 2017 – I ZB 45/16, GRUR 2018, 79 para. 7 = WRP 2018, 82 – OXFORD/Oxford Club).

(2) The Federal Patent Court rightly assumed that the opposing mark and the contested mark claim protection for identical services. The Federal Patent Court assumed that the services in Class 41 “Education; training; entertainment; sporting and cultural activities” and Class 43 “Services for the catering and accommodation of guests” were contained identically in the respective lists of the opposing marks. In Class 44, the services “health and beauty care for people” claimed by the contested mark could be classified under the generic term “health and beauty care” claimed by the opposing mark. The protection of the services in class 44 “medical services” claimed by the contested mark includes the services of the opposing mark for “medical care” and “health care”. This assessment does not reveal any error of law.

(3) The assumption of the Federal Patent Court that the opposing mark originally had a merely below-average distinctiveness for the services claimed, which was increased as a result of its use and was therefore to be regarded as average, does not stand up to legal review.

a) The opposing mark has been registered in the register kept at the German Patent and Trademark Office. Therefore, it cannot be denied any protection on the grounds that it is not originally distinctive. A refusal of protection on this basis is possible both in infringement proceedings (see BGH, judgment of November 24, 2011 – I ZR 175/09, GRUR 2012, 618 para. 15 = WRP 2012, 813 – Medusa) and in opposition proceedings (see ECJ, judgment of May 24, 2012 – C-196/11 P, GRUR 2012, 825 para. 38 f. – Formula One Licensing/HABM [F1-LIVE]; BGH, GRUR 2016, 382 para. 38 – BioGourmet; GRUR 2017, 75 para. 19 – Wunderbaum II) inadmissible.

Personal names are a classic means of identification due to their ability to individually designate the bearer of the name and thus distinguish them from other persons (see on Section 5 MarkenG: BGH, judgment of January 30, 2008 – I ZR 134/05, GRUR 2008, 801 para. 13 = WRP 2008, 1189 – Hansen-Bau). The question of whether a personal name has a function indicating the origin of goods or services is to be assessed according to the principles applicable to all trademarks (see ECJ, judgment of September 16, 2004 – C-404/02, ECR 2004, I-8499 = GRUR 2004, 946 para. 25 et seq. – Nichols).

If the public understands a personal name merely as a descriptive indication of goods or services, it lacks the function required for distinctiveness to ensure the identity of origin of the designated goods or services (see BGH, decision of 5 October 2017 – I ZB 97/16, GRUR 2018, 301 para. 12 = WRP 2018, 459 – Pippi-Langstrumpf-Marke, mwN; decision of 13 September 2018 – I ZB 25/17, MD 2019, 134 para. 15). The perception of the relevant public is decisive for the assessment of whether a name has become a common name. These include not only consumers and end users, but also, depending on the market characteristics, traders involved in the distribution of a product or service, such as dealers, manufacturers and intermediaries (cf. ECJ, judgment of April 29, 2004 – C-371/02, ECR. 2004, I-5791 = GRUR Int. 2004, 630 f. para. 23 to 26 – Björnekulla Fruktindustrier [Bostongurka]). The determination of the development of a trademark or a name into a generic name is subject to strict requirements. As long as a relevant public, even if it is only a part of the persons involved in the production or distribution of similar goods or services, still adheres to the meaning of the word as an indication of the origin of the goods or services from a certain business, such a development cannot be assumed (see BGH, judgment of July 12, 1963 – Ib ZR 174/61, GRUR 1964, 82, 85 f. – Lesering). If a term is included in a lexicon as a generic term, this speaks for the existence of a generic name; however, this presumption can be rebutted (Kopacek in BeckOK Markenrecht, 17th edition, as of April 1, 2019, Section 49 MarkenG para. 43). If a name is used as a synonym for a certain method, it develops a descriptive function in connection with the corresponding services – even without being established in trade (BGH, judgment of June 27, 2002 – I ZR 103/00, GRUR 2003, 436, 439 [juris para. 70] = WRP 2003, 384 – Feldenkrais).

b) The Federal Patent Court based its assessment on these principles. It assumed that the distinctiveness of the opposing mark was inherently far below average because the name “KNEIPP” had a descriptive function. The trade mark word “KNEIPP” was an inherently distinctive name. However, the public primarily associates this name with the well-known priest Sebastian Kneipp, who in the 19th century resumed the water treatment practiced in ancient times and developed his own system for this purpose. Kneipp medicine or Kneipp therapy, named after him, is a treatment method that includes water applications, active plant substances as well as exercise and nutrition recommendations. These therapies often take place as part of so-called Kneipp cures in specialized health resorts. In the classes 41 and 44 relevant to the dispute, the opposing mark claimed protection for services which, according to their subject matter and content, could deal with the teachings and therapies of the priest Kneipp and for which the name “KNEIPP” had developed into a generic term. The services “catering” and “accommodation of guests” in Class 43 claimed by the opposing mark did not relate to these methods or therapies. However, they could be directly related to these treatment methods insofar as they are directed towards or integrated into corresponding spa therapies. If the medical trade understands the word “Kneipp” in a factual sense, this is sufficient to assume a lack of or minimal distinctiveness. It must also be assumed that the targeted general public will also understand the trade mark word exclusively descriptively in the sense of a generic term. The appeal on points of law successfully challenges this assessment.

c) The determination of the distinctiveness of the earlier mark is essentially the responsibility of the trial judge. In the appellate instance, it is therefore only necessary to examine whether the judge of fact has correctly grasped the legal concept and made a judgment without contradicting the laws of thought and principles of experience and whether the result obtained is supported by the findings made (established case law; cf. only BGH, judgment of October 21, 2015 – I ZR 23/14, GRUR 2016, 197 para. 28 = WRP 2016, 199 – Bounty; judgment of April 28, 2016 – I ZR 254/14, GRUR 2016, 1301 para. 36 = WRP 2016, 1510 – Kinderstube; judgment of November 10, 2016 – I ZR 191/15, GRUR 2017, 730 para. 23 = WRP 2017, 811 – Sierpinski-Dreieck). The Federal Patent Court made such errors of law. The appeal on points of law rightly complains that the opposing mark cannot be considered to have only the weakest distinctive character for all of the services in question on the grounds given by the Federal Patent Court.

aa) The Federal Patent Court held that the services relevant in the present proceedings could, according to their subject matter and content, deal with the teachings or therapies of the priest Kneipp. It assumed this not only for those services for which, in its opinion, the name “Kneipp” is synonymous, but also for those services which can merely be associated with a method designated by the proper name “Kneipp”. The appellant is right to object to this. The Federal Patent Court did not take sufficient account of the fact that the distinctiveness must be determined in relation to the goods and services in question and may vary depending on the area of goods or services (see BGH, judgment of October 30, 2003 – I ZR 236 – Kneipp). October 2003 – I ZR 236/97, GRUR 2004, 235, 237 [juris para. 33] = WRP 2004, 360 – Davidoff II; judgment of April 29, 2004 – I ZR 191/01, GRUR 2004, 779, 782 [juris para. 55] = WRP 2004, 1046 – Zwilling/Zweibrüder; judgment of February 5, 2009, GRUR 2009, 484 para. 83 = WRP 2009, 616 – METROBUS).

(1) The services in class 41 – education; training; entertainment; sporting and cultural activities – cover a wide range of services in the field of education and leisure, at least some of which have no immediately recognizable connection to the therapies and treatments for which the Federal Patent Court considers the name “Kneipp” to be synonymous. This applies in any case to services in the field of entertainment and cultural activities.

(2) The relevant services in Class 44 – medical care, health and beauty care – are more closely connected with Kneipp therapies and treatments. However, these services also include services which are not directly the subject matter and content of the method described by the name “Kneipp”. This applies to the field of beauty care. The Federal Patent Court has not established that the relevant public also regards the name “Kneipp” as descriptive for services which are not identical to the treatment methods described by the name “Kneipp”, but which could only be provided in connection with the implementation of these therapies and methods.

(3) The same applies to the services in question in class 43 (catering and accommodation of guests). In this context, the Federal Patent Court also did not find that the relevant public considers the name “Kneipp” to be descriptive for these services to such an extent that the word “Kneipp” is used as a synonym for accommodation or catering services.

bb) The Federal Patent Court’s assessment that the originally distinctive name “Kneipp” has developed into a generic term also does not stand up to legal scrutiny. It is true that the Federal Patent Court assumed that both the medical trade and the general public understand this term – in relation to all the services in question – as a generic term. However, the challenged decision does not reveal the factual basis on which the Federal Patent Court arrived at this finding.

(1) The decision of the German Patent and Trademark Office from another proceeding, which the Federal Patent Court referred to as grounds, does not contain a finding that the medical community understands the name “Kneipp” as a generic term. This decision merely states that the word “Kneipp” can be understood factually by the trade. However, it is also the name of a well-known person. It does not follow from these statements by the German Patent and Trade Mark Office that the medical community understands the name “Kneipp” exclusively as a factual indication. Even if this were the case, contrary to the opinion of the Federal Patent Court, this does not satisfy the strict requirements for the assumption that the originally distinctive name “Kneipp” has become a generic name for a special treatment method.

(2) According to the findings of the Federal Patent Court, the relevant public includes not only the specialist circles but also the general public. Accordingly, the name “Kneipp” can only be regarded as a generic term if the general public also understands it as a technical term. The Federal Patent Court assumed this to be the case. However, it is not apparent on what this assumption is based. In this context, findings should have been made as to whether the general public understands the name “Kneipp” as a factual designation or – like the specialist circles – also as a reference to a famous person. In the second case, it cannot be assumed that the general public understands the opposing mark as a synonym for the therapies developed by the priest Kneipp.

d) In view of all the above, it cannot be assumed that the opposing mark has only far below-average distinctiveness in all relevant service areas. It cannot be ruled out that it has average distinctiveness. The Federal Patent Court has assumed in favor of the opponent that the opponent’s mark is well known and distinctive due to intensive use. In the appeal proceedings, it must therefore be assumed in favor of the opponent that the opposing mark has above-average distinctiveness increased by use.

4 The appeal on points of law also successfully challenges the Federal Patent Court’s assessment that there is no similarity between the signs.

a) When assessing the similarity of signs, the opposing signs must be considered as a whole and compared with each other in terms of their overall impression. This does not exclude the possibility that, under certain circumstances, one or more elements of a complex sign may be decisive for the overall impression which the sign creates in the mind of the relevant public (cf. ECJ, judgment of October 6, 2005 – C-120/04, ECR. 2005, I-8551 = GRUR 2005, 1042 para. 28 f. – Medien [THOMSON LIFE]; judgment of June 12, 2007 – C-334/05 P, ECR. 2007, I-4529 = GRUR 2007, 700 para. 41 – OHIM/Shaker [Limoncello/LIMONCHELO]; Federal Court of Justice, judgment of June 28, 2007 – I ZR 132/04, GRUR 2008, 258 para. 28 = WRP 2008, 232 – INTERCONNECT/T-InterConnect; judgment of January 22, 2014 – I ZR 71/12, GRUR 2014, 382 para. 14 = WRP 2014, 452 – REAL-Chips). Furthermore, it is possible that a sign that is included as a component in a composite mark or a complex marking retains an independent distinctive position without dominating or shaping the appearance of the composite mark or complex marking (BGH, judgment of December 5, 2012 – I ZR 85/11, GRUR 2013, 833 para. 45 = WRP 2013, 1038 – Culinaria/Villa Culinaria). However, the mere fact that all components of a composite mark or complex identification equally determine the overall impression of the mark or identification, because none of these components dominates or characterizes the appearance of the mark or identification, does not mean that these components have an independent distinctive position. Rather, there must be special circumstances that justify considering individual or several components of a composite sign as independently distinctive (BGH, GRUR 2013, 833 para. 45 – Culinaria/Villa Culinaria; GRUR 2018, 79 para. 37 – OXFORD/Oxford Club).

b) The Federal Patent Court assumed that there was no sufficient similarity between the opposing mark “KNEIPP” and the contested mark “Internationale Kneipp-Aktionstage” in terms of sound, typeface or concept. The challenged mark is not characterized by the element “Kneipp”. It is perceived by the public as a coherent overall concept which refers to an international event. The public assumes that the element “Kneipp” describes related services in such a way that they deal with the teachings of the priest Kneipp and the treatment methods developed by him. According to the case law of the Federal Court of Justice, it is possible to take into account a distinctive character acquired through use when examining which elements determine the overall impression of the challenged mark. It is true that the term “Kneipp” in the challenged sign is a weak or unprotectable sign that has only acquired average distinctiveness through use or market penetration. The earlier mark had also been incorporated in identical form into the younger combination sign. However, the inclusion of an average or enhanced distinctiveness of the earlier mark when determining the distinctive components of a later sign is subject to limits. It must be taken into account if the younger combination mark appears as a closed overall concept with a uniform conceptual statement. An imprint of the later combination mark must also be ruled out if the enforced earlier sign is reduced to its descriptive core in the later combination mark. The situation is similar in the case in dispute. The relevant public has no reason to perceive the earlier mark in the later combination of signs as a reference to the opponent. It would understand the word sequence as a reference to an event open to an international circle of participants and related services dealing with the teachings and therapies of the priest Kneipp. There was therefore no direct likelihood of confusion.

It is also not apparent that the element “Kneipp” occupies an independent distinctive position within the contested mark. The other elements of the contested mark “Internationale” and “Aktionstage” do not suggest to the public that the element “Kneipp” has an independent distinctive character. This is contradicted by the fact that the earlier mark is reduced to a merely descriptive meaning in the challenged combination of signs. Therefore, a likelihood of confusion in the broader sense was also excluded.

c) The Federal Patent Court’s assessment that the opposing mark and the contested sign are dissimilar does not stand up to legal scrutiny. The Federal Patent Court’s assumption that the comparison of the signs should be based on the opposing mark “KNEIPP” and the contested sign “Internationale Kneipp-Aktionstage” is influenced by errors of law.

aa) A composite mark is characterized by one or more components if, from the point of view of the relevant public, all other components of the mark largely recede into the background and therefore do not determine the overall impression of the mark, but can be disregarded for that purpose (ECJ, GRUR 2007, 700 para. 42 – OHIM/Shaker [Limoncello/LIMONCHELO]; ECJ, judgment of October 22, 2015 – C-20/14, GRUR 2016, 80 para. 37 – BGW [BGW/BGW Bundesverband der deutschen Gesundheitswirtschaft], mwN; Federal Court of Justice, decision of June 1, 2011 – I ZB 52/09, GRUR 2012, 64 para. 15 = WRP 2012, 83 – Maalox/Melox-GRY). The determination of whether a component has a distinctive character can generally only be made on the basis of the design of the mark itself. Hat jedoch eine nur wenig unterscheidungskräftige Bezeichnung durch ihre (isolierte) Verwendung im Geschäftsverkehr zunehmend eine herkunftshinweisende Funktion erhalten, wirkt sich dieser Wandel nicht nur auf die Kennzeichnungskraft des Zeichens selbst aus, sondern bewirkt gleichzeitig, dass dem Zeichen vom Verkehr auch dann ein stärkerer Herkunftshinweis entnommen wird, wenn es ihm nicht isoliert, sondern als Bestandteil eines anderen Zeichens begegnet (BGH, Urteil vom 13. March 2003 – I ZR 122/00, GRUR 2003, 880, 881 [juris para. 13] = WRP 2003, 1228 – City Plus; judgment of July 19, 2007 – I ZR 137/04, GRUR 2007, 888 para. 24 = WRP 2007, 1193 – Euro-Telekom; BGH, GRUR 2013, 833 para. 48 – Culinaria/Villa Culinaria). If the sign identical to the earlier mark retains an independent distinctive position in the composite sign, the overall impression created by that sign may lead the public to believe that the goods or services in question originate at least from economically-linked undertakings. In this case, the existence of a likelihood of confusion must be affirmed (ECJ, GRUR 2016, 80 para. 38 – BGW [BGW/BGW Bundesverband der deutschen Gesundheitswirtschaft]). On the other hand, a component of a composite sign does not have an independent distinctive character if this component forms a unit with the other component(s) of the sign when considered as a whole, which has a different meaning than these components considered individually (ECJ, GRUR 2016, 80 para. 39 – BGW [BGW/BGW Bundesverband der deutschen Gesundheitswirtschaft]; BGH, GRUR 2009, 484 para. 34 – MET-ROBUS).

bb) The Federal Patent Court has assumed that the distinctiveness of the earlier mark has increased as a result of use. In addition, the earlier mark has been incorporated in identical form into the later combination mark because differences merely in the capitalization or lower case of a sequence of letters do not regularly lead outside the scope of identity (Federal Court of Justice, judgment of 15 February 2018 – I ZR 138/16, GRUR 2018, 924 para. 40 = WRP 2018, 1074 – ORTLIEB, mwN). In such a case, it is obvious that the challenged mark is characterized by the element “Kneipp” or at least has an independent distinctive position therein.

cc) Contrary to the opinion of the Federal Patent Court, there is no reason in the case in dispute to limit the inclusion of the distinctive character of the earlier mark enhanced by use when determining the distinctive elements of the later sign.

(1) The fact that a sign identical with an earlier mark is contained in a composite later mark and is understood by the public as descriptive in this context does not preclude the assumption that this sign characterizes the later mark or has an independent distinctive position therein. A component that is only weakly distinctive may shape the overall impression of a composite mark or occupy an independent distinctive position within that mark, as it may impose itself on the consumer’s perception and imprint itself in his memory due to its position in the sign or its size (ECJ, GRUR 2016, 80 para. 40 – BGW [BGW/BGW Bundesverband der deutschen Gesundheitswirtschaft]). The recognition of a word element as a dominant element in the context of the assessment of the similarity of conflicting signs is not precluded if it is to be regarded as purely descriptive (ECJ, judgment of March 19, 2015 – C-182/14 P, GRUR Int. 2015, 463 para. 34 – MEGA Brandes International v OHIM [MAGNEXT/MAGNET 4]).

(2) Accordingly, it is not excluded to attribute distinctive significance within a composite sign to an originally weakly distinctive sign whose distinctive character can be assumed to be increased by sales of goods and advertising expenses (BGH, GRUR 2013, 833 para. 36 to 41, 48 – Culinaria/Villa Culinaria). Insofar as the Senate also stated in the “Culinaria/Villa Culinaria” decision that it is obvious that a component characterizes a composite sign if the component in the overall sign has enhanced or at least average distinctiveness, it cannot be concluded from this that a sign included in an overall sign always characterizes it if it has enhanced or at least average distinctiveness. Rather, the overall sign in question must be taken into consideration and it must be examined in each individual case whether all other elements of this overall sign largely recede into the background.

dd) The Federal Patent Court cannot be agreed that the signs are dissimilar because the public has no reason to recognize the earlier mark as such in the challenged mark.

(1) It is possible that a sign identical to the earlier mark is not recognized as such in a later sign because it is given a new meaning by the compounding and the addition of a further word element. For example, if the public sees the sign “Metrobus” in connection with the transportation of passengers by bus on scheduled services and with timetable information as a transportation service within the transport network of a large city, it is unlikely that the public will split the overall term into the components “Metro” and “bus” and associate the component “Metro” with the mark “METRO”, which corresponds to the well-known company sign (BGH, GRUR 2009, 484 para. 34 – METROBUS). However, this is not the case in dispute. According to the findings of the Federal Patent Court, the sign or the sign element “Kneipp” is understood in both the earlier and the later mark in an identical manner as a reference to the pastor Kneipp and the teachings and therapies developed by him.

(2) Furthermore, the Federal Patent Court did not take into consideration that the other elements of the challenged sign “Internationale” and “Aktionstage” can designate any event open to an international group of participants and that only the sign element “Kneipp” concretizes this event thematically and in terms of content. Since the sign “KNEIPP” cannot be denied any original distinctiveness according to the findings of the Federal Patent Court made so far and, in addition, a distinctiveness of the earlier mark increased by use is to be assumed in the appeal proceedings, it is therefore obvious to grant the sign element “Kneipp” in the later mark a dominant or at least an independently distinctive position because the other sign elements can be disregarded.

(5) Accordingly, the Federal Patent Court’s assessment that there is no likelihood of confusion because the contested mark is not characterized by the element “Kneipp” cannot be upheld. For the same reasons, the Federal Patent Court’s assumption that there is also no likelihood of confusion in the broader sense and no special protection of the mark with a reputation is also affected by errors of law.

IV. The present proceedings do not raise any questions of interpretation of EU law that require a reference for a preliminary ruling to the Court of Justice of the European Union pursuant to Art. 267 TFEU.

V. The contested decision must therefore be set aside. The case must be referred back to the Federal Patent Court for a different hearing and decision (Section 89 (4) sentence 1 MarkenG).