Direct likelihood of confusion between DOPE vs. BLACKDOPE?

Is there a direct likelihood of confusion between the signs DOPE and BLACKDOPE? No, ruled the Federal Patent Court (BPatG). However, it did establish an indirect likelihood of confusion, as the two marks are mentally associated with each other.

The word/figurative mark BLACKDOPE was registered, inter alia, for certain goods/services in Class 25 (clothing, footwear or headgear). The proprietor of the earlier sign DOPE filed an opposition against the registration of this mark. However, the trade mark office of the DPMA rejected the opposition.

Due to the only slight similarity between the signs, no direct likelihood of confusion existed. By reason of the component "BLACK" contained in the newer mark, the marks to be compared would differ sufficiently clearly from each other both phonetically and visually.

In addition to a direct likelihood of confusion, the DPMA also ruled out the requirements for an indirect conceptual likelihood of confusion. The mere fact that the relevant public made some purely associative mental connections between the marks did not, in itself, establish a likelihood of confusion within the meaning oftrade mark law.

Against this, the proprietor of the earlier sign appealed to the Federal Patent Court (BPatG).

No direct likelihood of confusion

The Federal Patent Court (BPatG) (Decision of 26.10.2020, Case No. 29 W (pat) 535/18) granted the application in part. With regard to the goods in Class 25 of the newer mark, there existed a likelihood of confusion through mental association within the meaning oftrade mark law. Accordingly, the decision of the DPMA was to be set aside and the deletion of the registration of the attacked mark was to be ordered for the goods in Classes 25.

In principle, a likelihood of confusion for the public is, in accordance with settled case-law of both the Court of Justice of the European Union (EuGH) and the Federal Court of Justice (BGH), to be assessed taking into account all relevant circumstances of the individual case. Of decisive importance in this respect are in particular the identity or similarity of the goods and services, the identity or similarity of the marks, and the distinctive character of the earlier mark.

Against this background, the Federal Patent Court (BPatG) ruled out a direct likelihood of confusion with regard to the goods in Class 25. The earlier mark possessed an average distinctive character; however, the similarity of the marks in phonetic, visual or conceptual terms did not lead to a direct likelihood of confusion.

Likelihood of confusion through mental association

However, the court found that a likelihood of confusion through mental association did exist. The relevant public addressed would indeed recognise the differences between the designations. However, the marks to be compared could be attributed to the same commercial origin on account of special circumstances.

The court based this on the sector-specific peculiarity existing in the clothing sector, namely that certain product lines are marked with "Black". These are series of black products, special lines for men or particularly exclusive products. The court cited as examples the secondary mark "BLACK LABEL" under the umbrella mark "S. Oliver". The judges also referred to the mark "Diesel Black Gold" under the umbrella mark "Diesel" and the mark "Boss Black".

Against this background, it should be assumed that the relevant public addressed would see in clothing, headgear and footwear marked with the attacked mark "BLACKDOPE" in Class 25 a special product line of the mark "DOPE" and would attribute it to the applicant. On account of these special circumstances, a likelihood of confusion through mental association should therefore be assumed.

Conclusion

Not only the mere identity or similarity of two marks can trigger a likelihood of confusion. The risk that two marks are mentally associated with each other can also establish a likelihood of confusion.