Mirrored slogans are not confusing, court rules

The Cologne Court of Appeals has reversed a decision which held that the marks OHNE DICH IST ALLES DOOF (which means 'Without you everything is dull') and MIT DIR IST ALLES TOLL ('With you everything is awesome') are confusingly similar (Case 6 U 214/06, March 2 2007).

Both trademarks also contain devices. The plaintiff's mark features the device of a stylized sheep and some other elements such as the sun, trees and a butterfly. The plaintiff uses its sign for various products, including cushions and bed linen. It alleged to have a very successful brand with a multi-million Euro turnover. The defendant uses the picture of a hedgehog (in the same central position where the plaintiff places the sheep device) as well a football, a worm and a mole where the plaintiff places the tree, the sun and the butterfly. The junior mark is used for bed linen.

The Civil Court in Cologne issued an interim injunction holding that the two signs are extremely similar. However, the Court of Appeals reversed the decision and rejected the motion for an interim injunction. The appellate court was of the opinion that there was no confusing similarity between the marks.

The court noted that all circumstances should be taken into account when assessing the likelihood of confusion, including:

• the interdependence between the similarity of the signs;
  
  
• the identity or similarity of the goods and services; and
  
  
• the distinctiveness of the senior mark.

It also noted that the overall impression produced by the marks should be taken into account.

The court found that there are no phonetic similarities between the signs, with the exception of the words "ist alles", which the court held was not sufficient to find any phonetic similarity. The court agreed with the lower court's conclusion that "Mit Dir ist alles toll" is an inversion of the senior slogan "Ohne Dich ist alles doof". However, the court found that it is a step too far to affirm a similarity in meaning where the junior sign says the opposite of the senior sign. With respect to appearance, the Court of Appeals conceded that the junior sign uses slightly similar elements in a similar arrangement to the senior mark. However, the court came to the conclusion that a sheep and a hedgehog have nothing in common and that all the other elements also differ. Even though both signs have the same structure and are based on the same design idea, the Court of Appeals was of the opinion that this is not sufficient to make a finding of similarity.

The court furthermore denied protection to the senior mark under the claim that it is well known. The court held that this would require that the respective signs have some degree of similarity or create some relevant association, which was not the case. The court also denied claims based on unfair competition law, finding that the mere imitation of an idea is not sufficient to be considered an act of unfair competition.

The case shows that, according to the Cologne Court of Appeals, the owner of a very complex mark which contains a slogan and several device elements may have only a limited scope of protection.

The defendant has apparently filed a word mark application for the same slogan with the German Patent and Trademark Office that is still pending.

Carsten Albrecht, Lovells LLP, Hamburg