1 October 2012Jurisdiction reportsJens Künzel

No trademark confusion between 'pjur' and 'pure'

German courts have formed a wide body of case law with respect to the principles governing the ‘likelihood of confusion’ between trademarks.

Of course, many principles directly follow from European law, as interpreted by the Court of Justice of the EU (CJEU), but national case law remains an important body of reference for practitioners and courts alike in all member states.

One recent decision of Germany’s Federal Supreme Court concerns likelihood of confusion in a case where the trademark has a clear descriptive appeal, or arouses clear descriptive associations, and contains some (possibly minor, but sufficiently distinctive) elements that set the mark apart from an entirely descriptive sign, and the attacked mark contains, or is, the descriptive sign (ie, without the distinctive elements of the trademark).

The plaintiff used the registered trademark ‘Pjur’ for massage oils. The defendant used the word ‘Pure’ extensively for a series of massage oils.

In Germany, ‘Pjur’ is pronounced like the English pronunciation of ‘pure’. It was held by the Court of Appeal (Cologne) that although the plaintiff ’s trademark acquired distinctive character through the different spelling of the word ‘pure’ (ie, ‘Pjur’), there was a likelihood of confusion at least with respect to the tonal and allegorical similarities between the marks.

The Federal Supreme Court reversed the judgment and dismissed the action. It held that the tonal and allegorical similarities between ‘Pjur’ and ‘Pure’ did not constitute a likelihood of confusion in the case at hand.

First, it reversed the Court of Appeal’s reasoning that the plaintiff’s trademark ‘Pjur’ had an average distinctive character. Instead, the Federal Supreme Court argued, trademarks with undeniable descriptive appeal are generally of low distinctiveness.

Since the grade of distinctiveness can be a decisive, or at least an important, factor for evaluation of whether the trademarks may be confused, that holding had an immediate effect on the question of whether the plaintiff ’s trademark could be confused with the attacked mark.

Second, the Federal Supreme Court did not share the Court of Appeal’s argument that the undeniable tonal and allegorical similarities between the marks led to a likelihood of confusion.

"Granting protection for tonal similarities with the descriptive sign 'pure' would in effect mean that protection would be granted for the descriptive sign, from which the trademark 'pjur' deliberately deviated."

It referred to earlier German decisions according to which trademarks with descriptive appeal may enjoy protection only for the elements that constitute the distinctive character. Protection beyond these distinctive elements would effectively give rise to protection of descriptive marks (see, among others, the decision AntiVir/AntiVirus). It also referred to decisions of the CJEU (among others, CK Creationes Kennya of 2010) according to which the question of likelihood of confusion hinges, above all, on the distinctive elements of the plaintiff’s trademark.

‘Pjur’ and ‘Pure’ are pronounced identically by German consumers, who must be assumed to know the English word ‘pure’ and its correct English pronunciation. Also, it must be assumed that the average German consumer knows the meaning of the English word ‘pure’. He is also said to recognise the underlying meaning of ‘Pjur’, as the German-spelled version of the ‘original’ word pure.

So although ‘Pjur’ and ‘Pure’ are therefore undeniably similar in two respects (tonally and allegorically), the similarities cannot give rise to the likelihood of confusion, since granting protection for tonal similarities with the descriptive sign ‘Pure’ would in effect mean that protection would be granted for the descriptive sign, from which the trademark ‘Pjur’ deliberately deviated in order to acquire sufficient distinctiveness in the first place.

The Court of Appeal’s judgment was reversed and, since the court could answer all relevant questions of law and fact for itself, the action was dismissed in its entirety.

The result is absolutely correct.

The Court of Appeal’s decision would have meant that trademarks that could be registered only as a result of small deviations in the spelling of descriptive words would have a much wider scope of protection since they would also cover descriptive signs that would never have been able to be registered for lack of distinctive character. So the trademark infringement court has to consider the distinctive elements of the trademark and examine whether the attacked mark makes use of these distinctive elements.

Jens Künzel, LLM, is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de

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