Confusion Risk under Trade Mark Law 'YO' vs. 'YOOFOOD'

How is confusion risk under trade mark law determined in the case of composite word marks? It depends on the distinctive and dominant word elements, as decided by the Federal Court of Justice (BGH) in the case 'YO' vs. 'YOOFOOD'.

A retailer filed the word mark 'YOOFOOD' for registration in two goods classes in the field of foodstuffs in 2015. A competitor raised an opposition against this. The competitor had a registered word mark 'YO'. The German Patent and Trade Mark Office (DPMA) rejected the opposition.

The appeal against this before the Federal Patent Court (BPatG) was unsuccessful (BPatG, Beschl. v. 10.8.2019, Az. 28 W (pat) 591/17). With the legal appeal allowed by the BPatG, the competitor pursued his application for deletion further.

Decision of the Federal Court of Justice (BGH)

The Federal Court of Justice (BGH) (Beschl. v. 09.07.2020, Az. I ZB 80/19) came to the conclusion that a confusion risk under trade mark law exists between 'YOOFOOD' and 'YO'. The BPatG had unlawfully rejected a direct confusion risk.

The Federal Court of Justice (BGH) stated that the question of confusion risk under trade mark law must be assessed comprehensively taking into account all relevant circumstances of the individual case. In doing so, one must proceed on the basis of an interaction between the identity or similarity of the goods or services, the degree of similarity of the marks and the distinctive character of the earlier mark. There are mutual influences: 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 enhanced distinctive character of the earlier mark and vice versa.

Confusion Risk under Trade Mark Law

The central point of the decision was the assessment of the first instance court that there was no sufficient similarity between the signs 'YOOFOOD' and 'YO'. The Federal Court of Justice (BGH) took a different view.

The similarity of opposing signs must in principle be assessed in the context of their overall impression. In particular, similarity in sound, in (written) image and in meaning or sense are to be assessed here. In particular, distinctive and dominant elements are to be taken into account.

The BPatG had assumed that the first syllable 'YOO' did not shape the overall impression of the contested mark. The Federal Court of Justice (BGH) disagreed with this: descriptive, non-distinctive components of a composite mark generally had less weight in examining similarity of signs than components with greater distinctive character.

The word mark 'YOOFOOD' consists of a distinctive element ('YOO') and a purely descriptive word element ('FOOD'). The compound word 'YOOFOOD' should not be regarded as an overall concept with an identifiable (new) meaning.

Rather, it did not appear to be excluded that in the case of a single-word sign composed of a distinctive ('YOO') and a purely descriptive ('FOOD') word element, which does not form an overall concept with an identifiable (new) meaning, the distinctive word element could shape the sign, because the other sign component in the specific case could be disregarded as merely a factual reference.

Between the distinctive element ('YOO') of the contested mark and the mark of the competitor 'YO', the Federal Court of Justice (BGH) ultimately saw a confusion risk under trade mark law.

Conclusion

In assessing the confusion risk of composite word marks, particular importance attaches to the distinctive and dominant word elements.