Patentanwalt Dr. Betram Rapp

by Dipl.-Phys. Dr. Bertram Rapp

Patent attorney Dr. Bertram Rapp, Charrier Rapp & Liebau

Trademark protection: Are two brand names allowed to sound similar?

B4B readers ask, our industry experts from the region answer: “Can it also lead to the rejection of a trademark application if a brand name sounds so similar to another when pronounced – especially in other languages (for example ‘Dreier’ and ‘Dryer’)?” Our expert on patent issues, Dr. Bertram Rapp of CHARRIER RAPP & LIEBAU, knows the answer. Both the German Patent and Trademark Office, which is responsible for registering German trademarks, and the European Intellectual Property Office, which registers European Union trademarks, examine only the so-called absolute grounds for refusal when a trademark application is filed, in particular whether the trademark is distinctive and whether it is subject to a need to keep competitors free. For example, a trademark “Apple” can be registered for computers, but not for fruit, because it is descriptive for this purpose and the use of this free designation may not be prohibited to competitors by trademark protection. Opposition proceedings for older third-party trademarks However, the aforementioned offices do not examine whether there are already older trademarks of third parties, i.e. the so-called relative grounds for refusal. For this purpose, there is the so-called opposition procedure. If the owner of an older trademark identifies a younger trademark that is likely to be confused, he can file an opposition against it within a period of three months and the office will then examine whether there is a likelihood of confusion. If the answer is in the affirmative, the Office will cancel the younger trademark in whole or in part or refuse to register it. When are trademarks likely to be confused? There can be a likelihood of confusion both in terms of the written image and in terms of phonetic and conceptual aspects. Phonetic likelihood of confusion plays a special role here, i.e., when two trademarks are intrinsically different but pronounced identically or similarly, such as the words “Dreier” and “Dryer” mentioned in the question. In the case of identical goods or services for which the trademark is registered, there is a likelihood of confusion. The question under which circumstances two trademarks are likely to be confused and which role the absolute grounds for refusal as well as verbal and graphic additions to the trademarks play in this context is highly complex and can only be assessed on a case-by-case basis with reference to the relevant case law. Do you have any questions for patent expert Dr. Bertram Rapp, or would you like more in-depth advice?
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