Common prefix insufficient to create likelihood of confusion
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The Estonian Board of Appeal has dismissed Demp BV’s opposition against the registration of the trademark BAUHOF by Ehitus Service OÜ on the grounds that there was no likelihood of confusion with the earlier BAUHAUS marks (Decision 1179-o, October 31 2011).
On August 8 2007 Estonian company Ehitus Service OÜ (part of the Bauhof Group AS) applied to register the figurative mark BAUHOF in Classes 8, 19, 31 and 35 of the Nice Classification (Application M200701194):
Dutch company Demp opposed the application based on its prior word and figurative marks BAUHAUS (CTM Registrations 005145545 (pictured below) and 002676799).
Demp stated that the trademarks BAUHOF and BAUHAUS were visually similar due to their angular font and similar shades of colour.
Moreover, the marks covered goods and services relating to household and gardening goods. Therefore, they were conceptually similar, as ‘Bau’ means ‘building’ or ‘construction’, ‘Haus’ means ‘house’and ‘Hof’ means ‘yard’ in German. Demp contended that the application should be refused under Article 10(1)(2) of the Estonian Trademark Act because BAUHOF was highly similar to earlier marks which were registered for similar goods and, therefore, there was a likelihood of confusion.
Demp also claimed that the registration of the BAUHOF mark would be detrimental to, and would take unfair advantage of, the distinctive character and reputation of the BAUHAUS marks. Demp alleged that the application to register BAUHOF had been filed in bad faith with the intention of exploiting its investment in the BAUHAUS mark, as well as the goodwill in the mark.
The applicant argued that there was no likelihood of confusion, since BAUHOF and BAUHAUS have a different meaning and, therefore, there was no conceptual similarity. The applicant also pointed out that the prefix ‘bau’ had lost its distinctive character since there were over 600 trademarks starting with ‘bau’. Therefore, Demp should not be allowed to monopolise the word ‘Bau’.
The applicant further stated that Demp’s decision to enter the Estonian market only in 2008 meant that the BAUHAUS mark was not well known and did not have a reputation in Estonia at the time of filing the application for BAUHOF. The applicant also emphasised that bad-faith filing could not be assumed, but should be demonstrated with at least indirect evidence.
The Board of Appeal dismissed the opposition, finding that the trademarks at issue were dissimilar. In particular, the board found that the fact that the marks shared the prefix ‘bau’ (which is not distinctive) was not sufficient to find that they were confusingly similar. The board stated that Demp had not submitted any relevant evidence during the proceedings in order to prove that:
- BAUHAUS was well known in Estonia at the time of the application;
- the applicant had filed the application in bad faith; or
- the applicant sought to take unfair advantage of the reputation of the BAUHAUS marks.
Demp’s claims of unfair competition and misleading advertising were not reviewed by the board because these issues did not fall within its competence.
Anneli Kapp, Käosaar & Co, Tartu
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