Risk of confusion between the marks 'Post' and 'Morgenpost'?

Deutsche Post AG and Morgenpost Briefservice GmbH have been in dispute over the existence of a risk of confusion between their registered marks 'Post' and 'Morgenpost Briefservice GmbH'. The Federal Patent Court (Bundespatentgericht) in Munich has now ruled on this legal question.

Deutsche Post AG filed an opposition against the word/figurative mark 301 35 230 'Morgenpost Briefservice GmbH' registered for identical goods and services in class 39. According to Post AG's view, the opposed mark collided with its own registered word mark 300 12 966 'Post'. The Trade Mark Office for Class 39 of the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt) upheld Deutsche Post's objection and justified the collision based on the central position and the prominent size of the word element 'POST', which it found to have an independent function in creating a risk of confusion, so that in the view of the public, given a high degree of similarity in the phonetic aspect, there would be a danger of confusion.

The proprietor of the opposed mark challenged this decision before the Federal Patent Court (Bundespatentgericht).

Court's Decision
In its decision of 07.04.2011 – Az. 26 W (pat) 50/04 the Federal Patent Court (Bundespatentgericht) upheld the claim, as the word/figurative mark 'Morgenpost Briefservice GmbH' posed no risk of confusion in relation to the mark 'Post'.

There is no direct risk of confusion between the two marks, according to the Munich judges, notwithstanding their use for identical services, since the marks are dissimilar to each other. When assessing the similarity of signs, the overall impression of the signs in question must be taken into account, as the average consumer regularly perceives a mark as a whole, even if it is complex. Applying this standard, however, the marks in question do not exhibit any similarity in terms of visual appearance, phonetic characteristics or conceptual meaning that could give rise to a risk of direct confusion between the marks.

The sign at issue, contrary to the view held by Deutsche Post AG, is not characterised by the element 'POST', because its other components do not recede into the background. Consumers are well informed, due to years of extensive reporting in German media on the gradual dismantling of the postal monopoly, that there are now, in addition to Post AG, a considerable number of other providers of postal services in the country.

Conclusion

When assessing the risk of confusion between two marks, the overall impression of the marks must always be evaluated. Therefore, in some cases it may be strategically better to file a word/figurative mark instead of a word mark in order to set oneself apart from already registered marks. In such cases, consultation with a lawyer specialising in trade mark law is regularly advisable.