Risk of confusion regarding "eiPott" for egg cups?

The Higher Regional Court (OLG) Hamburg had to decide on second instance whether the original designation "eiPott" for egg cups, i.e. the use of the compound term egg (Ei) and pot (Pott) (North German term for pot), constitutes trademark use of the registered Apple trademark "iPod".

The company Koziol distributes design products in the field of household goods. Its range also included an egg cup marked with the humorous designation "eiPott" and sold under this name. The California-based high-tech company Apple, which manufactures and distributes MP3 players under the well-known trademark "iPod", which is also registered for household goods, took exception to this. Apple first issued a cease-and-desist notice against Koziol under threat of penalty and, following the unsuccessful cease-and-desist notice, sued the design company by way of preliminary injunction for injunctive relief.

Court's Decision
In its Order of 09.08.2010 – Az. 5 W 84/10 the Higher Regional Court (OLG) Hamburg upheld Apple's position on second instance and prohibited the company Koziol from marketing and distributing egg cups designated as "eiPott" in commercial trade.

In its trademark assessment, the Higher Regional Court (OLG) Hamburg did take into account the different spelling of the trademark "iPod" and the sign "eiPott", but nevertheless found a phonetic identity of the two terms. Since the trademark "iPod" was also protected for kitchen appliances, there was no way around finding a trademark risk of confusion. The sign "eiPott" was also not required to be kept free, as it does not constitute a customary description for egg cups.

Although the use of the sign "eiPott" for an egg cup in reference to the trademark of the applicant was undoubtedly a witty idea, this alone was not sufficient to justify it by freedom of art. However, the court surprisingly found no humorous or parodistic engagement with the company Apple and its products.
Interestingly, the Higher Regional Court (OLG) also decided that Apple could only prohibit the company Koziol from using the sign "eiPott" for egg cups, as there was no risk that the sign would be used for other containers for household and kitchen purposes.

Conclusion

In the present case, the trademark registration of the trademark "iPod" will have been the decisive factor for success in court. Had the trademark "iPod" not also been registered for household goods with a corresponding service classification, a trademark use would probably have been denied here. This example once again demonstrates how important a solid trademark strategy is for the protection of a trademark.