Does 'Coyote Dancers' infringe the mark 'Coyote Ugly'?

In the trade mark dispute arising from an opposition to a trade mark registration at the DPMA, the question at issue was whether the proprietor of the mark 'Coyote Ugly' could prevent the registration of the sign 'Coyote Dancers' upon application for identical goods and services.

The name 'Coyote Ugly' is known to many consumers as the title of a Hollywood film, in which a pretty girl from a small US town seeks her fortune as a songwriter in New York and initially works out of financial necessity as a dancer/bartender in a trendy bar.

The proprietor of the bar of the same name in New York, Ugly Inc., registered the mark 'Coyote Ugly' in Germany in class 41 for the conduct of cultural events, parties and performance shows in discotheques, entertainment centres and other catering establishments. On the basis of this word mark, Ugly Inc. filed an opposition against the trade mark registration of the sign 'Coyote Dancers', which was applied for inter alia in classes 41 and 43 for events and the accommodation of guests. In the view of the mark proprietor, there was a likelihood of confusion between the signs 'Coyote Ugly' and 'Coyote Dancers'.

The German Trade Mark Office (DPMA) took a different view and rejected the opposition and registered the mark 'Coyote Dancers' in the trade mark register.

Court's decision

The Federal Patent Court (Bundespatentgericht) confirmed byDecision of 04.12.2014 – Az. 29 W (pat) 506/12 – the rejection of the opposition to the 'Coyote Dancers' trade mark registration by the DPMA on the grounds that there was no likelihood of confusion between the marks in dispute.

Although in the area of identical services, given the average distinctive character found, a clear distance must be maintained, the later mark 'Coyote Dancers' maintains this distance even in the area of identical services.

Although 'Coyote Dancers' and 'Coyote Ugly' shared the word element 'Coyote', this was not the dominant component of the marks, so that the Federal Patent Court further stated that in a direct comparison of the signs, both word combinations differ precisely by the additional terms 'Dancers' and 'Ugly' respectively. In the overall comparison, the signs thus differed significantly from each other in terms of sound, visual appearance and conceptual meaning.

Conclusion

The sign 'Coyote Dancers' is not liable to be confused with the mark 'Coyote Ugly'. Accordingly, the registration of the mark stood.

The element 'Coyote' is used in various variations as part of a sign and/or motto of an event. This can lead to costly cease-and-desist letters. In view of the density of marks, the risk of possible trade mark infringement should therefore be examined in advance before use.