No infringement of Tuc cracker mark, says court - again
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The Cologne Appeal Court has considered for the second time whether use of a rectangular perforated shape for salty crackers amounted to infringement of a figurative trademark consisting of the shape of Tuc crackers (Case U 143/04, December 12 2008).
The plaintiff manufactures and distributes salty crackers under the TUC mark. It owns a figurative trademark consisting of the shape of a rectangular perforated cracker and the word element 'tuc'. The mark is registered for, among other things, bakery products. The defendant also manufactures and distributes rectangular perforated crackers. The defendant's product has round edges, whereas Tuc crackers have sharp edges which give the impression of an octagonal shape.
The plaintiff sued the defendant for trademark infringement. While the first instance court ruled in favour of the plaintiff, the Cologne Appeal Court rejected the complaint, holding that:
- the defendant's sign had only a low degree of distinctiveness; and
- the distinctive and dominant elements of the signs were dissimilar.
The plaintiff appealed to the Federal Supreme Court, which reversed and remanded the case to the Cologne Appeal Court. The Federal Supreme Court directed that the Appeal Court reconsider:
- whether the shape of the defendant's product would be perceived as a trademark by the relevant public;
- the degree of distinctiveness of the plaintiff's sign; and
- the likelihood of confusion between the signs at issue.
On remand, the Appeal Court did not clearly decide whether the relevant public would perceive the shape of the defendant's product as a trademark. However, it held that there was no likelihood of confusion among the public due to the lack of similarity between the signs.
In particular, the court stated that the results of a market survey submitted by the plaintiff did not allow conclusions to be drawn as to the public’s perception of the shape of the defendant's product. The market survey focused on the assessment of the degree of distinctiveness of the plaintiff's sign; therefore, the survey implicitly revolved around whether the relevant public perceived the sign as a trademark. In the court’s opinion, the dominant and distinctive elements of the signs at issue (ie, specific shape and number of perforated holes) were dissimilar. With regard to the similarities between the signs (ie, shape, perforated holes and colour), the court found that they were commonly used for salty crackers and were thus not distinctive.
Further, the court held that the results of the market survey did not clearly demonstrate that the relevant public's perception was based on the distinctive elements of the plaintiff's sign. On the contrary, the court found that the relevant public’s perception was likely to be based on the non-distinctive elements of the sign.
In addition, the court held that although the degree of distinctiveness of the plaintiff's sign was low, the sign could have acquired an average degree of distinctiveness through intensive use. However, the court pointed out that the market survey considered only people who eat and/or buy salty crackers (rather than the average consumer), despite the fact that the plaintiff's trademark is also registered for sweets. Therefore, the court concluded that the plaintiff had failed to demonstrate that the sign had acquired distinctiveness.
Based on the finding that the distinctive elements of the signs at issue were dissimilar, the court concluded that there was no likelihood of confusion and rejected the plaintiff’s claims. The court did not grant leave to appeal to the Federal Supreme Court on the grounds that all the relevant points of law had been dealt with in the Supreme Court's earlier decision.
Arguably, the court’s assessment of distinctiveness is unpersuasive. It remains unclear why the court considered that the distinctiveness of the plaintiff's sign was low, as the sign includes a word element that could be found to have, at least, an average degree of distinctiveness. Furthermore, the court’s conclusion that the distinctiveness of the plaintiff's sign had to be assessed based on the general public’s perception - due to the fact that the mark is registered for snacks and sweets - did not seem to take into account the fact that the distinctiveness of the plaintiff’s sign may be low for sweets, but higher for salty crackers.
Philipe Kutschke, Bardehle Pagenberg Dost Altenburg Geissler, Munich
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