Differences in spelling may prevent confusion


In a decision that flies in the face of established case law, the Higher Regional Court of Hamburg has ruled that the use of the domain name 'public-com.de' and related email address root '@public-com.de' does not infringe rights in the registered trademark and trade name PUBLIKOM because internet users are able to recognize differences in spelling.

PubliKom owns the German registered trademark PUBLIKOM in the fields of public relations, communication and event-organizing services. It sued the registrant of the domain name 'public-com.de' and email address root '@public-com.de' for trademark and trade name infringement. The registrant uses the domain name in relation to the provision of advertising and related services.

The court held that although 'PubliKom' is a distinctive term and the two parties' areas of interest are essentially identical, there is no likelihood of confusion because internet users are able to make a distinction between the different spellings of the parties' names. They would also take into account the use of hyphens, dots and other symbols.

In addition, the court held that 'PubliKom' is only distinctive due to the specific spelling with the letter 'K'. This associates the phrase with the German term 'publikum' and leads to a German pronunciation of the name and mark. On the other hand, the disputed domain name and email address are associated with the two English terms 'public' and 'com' (derived from communication) and would be pronounced in an English way. The court therefore found that the terms are sufficiently different to refute any likelihood of confusion.

The decision is surprising and has been appealed. The Federal Supreme Court has stated that any confusion relating to the sound, appearance or meaning of a phrase is sufficient to establish a likelihood of confusion. Even though it may be possible to distinguish the terms 'PubliKom' and 'public-com' in appearance and in meaning, it would be almost impossible to distinguish them phonetically. Hence, the regional court's line of reasoning is in conflict with well-established rules and it is highly unlikely that an appellate court will allow this to become established in German law.

Carsten Albrecht, Lovells, Hamburg

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