Common element in composite mark held not to have independent distinctive role

The German Federal Supreme Court has held that there was no likelihood of confusion between the mark MIXI and the composite mark KOHLERMIXI, as the common element 'mixi' did not have an independent distinctive role in the composite mark (Case I ZR 142/07, November 19 2009, published only recently).

The claimant owns, among others, a German registration for the following device mark (Registration 437727):

The mark has a priority date of September 1931 and is registered mainly for “kitchenware”. During the relevant period (2002 to 2004), the claimant used its mark as follows - that is, with the additional words 'sensotronic' and 'original' - to sell food processors (it sold 300 to 420 food processors each year for roughly €1,110 each):

The defendant offers high-end kitchen equipment/food processors under the mark KOHLERMIXI:

'Kohler' is the company name of the defendant, while 'mixi', despite having no meaning in German, alludes to the word 'mixen' (to mix).

The court of first instance rejected the claimant’s action for cease and desist. However, on appeal, the Stuttgart Regional Court found that the defendant had infringed the claimant's mark. It held that the MIXI mark had been put to genuine use, as the use of additional elements did not alter its distinctive character. The court further held that MIXI was of average distinctive character and that there was an average degree of similarity between the marks. Finally, it found that the common element 'mixi' had an independent distinctive role in the KOHLERMIXI mark: the relevant public would perceive the element 'mixi' as referring to the product, while the additional element 'Kohler' would be perceived as indicating the manufacturer.

The Federal Supreme Court overturned the decision of the Regional Court. The Supreme Court agreed with the Regional Court on the issue of genuine use, but concluded that the common element 'mixi' could not give rise to a likelihood of confusion, as it did not have an independent distinctive role in the composite mark KOHLERMIXI.

With regard to genuine use, the Supreme Court stated that the relatively limited amount of use was in line with established case law, especially as high-end goods were concerned. Interestingly, the Supreme Court concluded that the graphical representation of the mark as used (ie, capital letters with shading and smaller letters without shading) and the additional descriptive elements 'original' and 'sensotronic' did not alter the distinctive character of the registered trademark (see Paragraph 26(3) of the German Trademark Act, corresponding to Article 15(1)(a) of the Community Trademark Regulation (207/2009)), as they represented an acceptable modernisation of the typeface and were only of an ornamental nature.

More importantly, the Supreme Court, disagreeing with the Regional Court, found that MIXI had only a low degree of distinctive character for kitchenware, as it alludes to the potential use of the goods. Moreover, the Supreme Court found that the relevant public would not split the composite mark KOHLERMIXI into two elements and, therefore, the component 'mixi' did not have an independent distinctive role. This was due to the fact that the company name Kohler is not well known among trade circles. Referring to the decision of the Court of Justice of the European Union in THOMSON LIFE (Case C-120/04), the court held that the KOHLERMIXI mark did not consist of the combination of a well-known company name with another element. Therefore, the element 'mixi' did not indicate the origin of the products, and the mark KOHLERMIXI had to be considered as a whole.

The decision is remarkable in that the Supreme Court applied rather generous criteria to the issue of genuine use of the earlier mark, which was not used as registered - especially as the distinctiveness of the mark, and thus its registrability, might be due only to its graphical elements. Moreover, the Supreme Court seemed to take a restrictive approach to the independent distinctive role of an element in a composite mark. Arguably, the court was correct in finding that an element with a weak distinctive character, such as 'mixi', does not have an independent role in a complex mark, and in refusing to find a likelihood of confusion between MIXI and KOHLERMIXI. However, doubts remain as to whether the notoriety of a company name used in a mark is the right standard to determine the distinctiveness of the elements of a composite mark (arguably, it is clear that Kohler is recognised as an independent name, irrespective of whether it is well known among the relevant circles).

Florian Schwab, Boehmert & Boehmert, Munich

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