RUDOLPH opposition hits red light

The Federal Administrative Court has affirmed the dismissal of the opposition by the owner of the trademark RUDOLPH ROTNASE against the registration of the figurative mark RUDOLPH for goods in Classes 32 and 33 and services in Class 43 of the Nice Classification (Case B-1976/2007 (T 0/2), August 13 2007) based on lack of use.

The opponent relied on its trademark RUDOLPH ROTNASE, which is registered for goods in Class 30. The figurative element of the applicant's trademark consisted of the word 'Rudolph' and the stylized picture of a deer, the letter 'O' being represented by the nose of the deer. Rudolph the red-nosed reindeer is a well-known children's character.

The Federal Institute of Intellectual Property rejected the opposition based on lack of use of the trademark RUDOLPH ROTNASE for goods in Class 30 for a period of at least five years. The institute found that the opponent had instead been using the mark RUDOLPH MIT DER ROTEN NASE, which is German for 'Rudolph with a red nose'. The opponent appealed.

The Federal Administrative Court rejected the appeal and the opposition based on Article 11, Subsection 2 of the Trademark Act, which states that "a trademark shall be deemed to be in use if it is used in a fashion that does not substantially differ from the mark registered".

The decision of the court was based on the fact that the trademark on which the opposition was based (RUDOLPH ROTNASE) consists of two equally distinctive elements (a given or first name and what appears to be a family name). However, the figurative mark actually used by the opponent (RUDOLPH MIT DER ROTEN NASE) consists of two elements of different importance. The first element (Rudolph) is also a given name, but the second element ('mit der roten Nase') appears in lower case and thus has a secondary position. Further, 'mit der roten Nase' does not appear to be a family name, but an epithet. The omission of the second element (ROTNASE) thus gives a different overall impression. Therefore, the trademark used was substantially different from the registered mark which served as a basis for the opposition.

As a consequence, neither the institute nor the court had to examine the issue of the similarity of the marks.

Peter Heinrich, Lenz & Staehelin, Zurich