The Post is booming in the region

If a complex mark coincides with an earlier mark in one component, but that component is perceived in trade merely as descriptive, no likelihood of confusion between the two signs is to be assumed. The Federal Court of Justice (BGH) recently clarified this in a further POST decision. The lower courts were the Regional Court (LG) and the Higher Regional Court (OLG) Stuttgart, whose decisions were upheld.

The plaintiff was Deutsche Post AG, proprietor of the word marks registered by virtue ofestablishment in trade as "DEUTSCHE POST" and "POST", against the Dutch TNT group. The latter uses the designations "tntpost", "TNT Post Deutschland" and "TNT Post" for its postal and dispatch services, which Deutsche Post AG considers to be prejudicial to its POST marks. The Regional Court (LG) and the Higher Regional Court (OLG) Stuttgart both dismissed the action and refused leave to appeal. In the context of the petition against refusal to grant leave to appeal, the Federal Court of Justice (BGH) took a position on the lower courts' decisions.

The court's decision

The court dismissed the petition against refusal to grant leave to appeal by order of 23.10.2104 (Az. I ZR 37/14). In the court's view, the lower courts correctly recognised that the relevant trade circles understand the component "POST" in the disputed designations merely as a factual description and not as a reference to the marks of Deutsche Post AG. It is therefore a purely descriptive use, which excludes trademark infringement.

Conclusion

The judgment is logical in its consequence. As a general rule, it is true that a mark which is used as a component of a later mark retains an independent distinctive character. However, this regularly does not apply to a component with originally descriptive significance – and indeed not even if it is registered in the trade mark register by virtue of establishment in trade. Ultimately, however, this is always a matter for the individual case and depends on the actual perception of the component in question.