THOMSON LIFE decision approved by Federal Supreme Court

The German Federal Supreme Court has issued a decision in which it expressly applied the THOMSON LIFE doctrine of the European Court of Justice (ECJ) (I ZB 28/04, May 11 2006).

Lazarus-Hilfswerk in Deutschland eV filed an application for a word and device mark which consists of the word 'LAZARUS' and a picture of an eight-pointed star which looks very similar to the relatively well-known MALTESERKREUZ (Maltese Cross) device mark. The owner of the mark MALTESERKREUZ, Malteser Hilfsdienst eV, filed an opposition and was successful before the German Patent and Trademark Office.

On appeal, the Federal Patent Court denied a likelihood of confusion, holding that according to the German Prägetheorie the word and device mark is governed by the word LAZARUS as the device element is of minor importance. (The Prägetheorie calls for an assessment of the similarity of trademarks where individual components of conflicting marks are similar. There is no likelihood of confusion where the common component merely contributes to the overall impression.) The German Federal Supreme Court has now overruled this decision.

After outlining the general principles, the Federal Supreme Court stated that according to the THOMSON LIFE decision it is sufficient that the device element in the LAZARUS mark retains an independent distinctive role within the composite mark. It is no longer necessary for a device element to dominate the overall impression as required by the German Prägetheorie. The Federal Supreme Court stated that LAZARUS could be a trade name or company name. It also stated that the different parts of the device element in the LAZARUS mark formed a unit and that the relevant consumers are aware that cross designs in combination with word elements are commonly used, meaning that the cross design in the LAZARUS device mark could have an independent distinctive role in the composite mark. This being the case, the court held that it was likely to be confused with the relatively well-known MALTESERKREUZ device mark. The court gave some guidelines to the Federal Patent Court and remanded the case for a further decision.

At the end of its ruling, the Federal Supreme Court also applied the German Prägetheorie. Whereas the court agreed that there might not be a likelihood of confusion in sound as the word 'LAZARUS' dominates the phonetic appearance of the LAZARUS (and device) mark, the court stated that this is not necessarily the case with respect to the appearance of the composite mark. Such a word and device mark could also be governed by the device element as far as the appearance is concerned, and the Federal Supreme Court further explained that the Federal Patent Court has to determine whether the MALTESERKREUZ device mark has an extended scope of protection.

Hence, the Federal Supreme Court adopted both the doctrine of the ECJ in THOMSON LIFE and the German Prägetheorie and came to the conclusion that a likelihood of confusion could be given under both doctrines in this case.

For discussion of the ECJ's decision in the THOMSON LIFE Case, see LIFE Case allows ECJ to clear up confusion over composite marks.

Carsten Albrecht, Lovells, Hamburg