DPMA: Atty. Dr. Seyfert’s successful opposition against the word/figurative mark “LxTek” based on our client’s trademark LxTek (Decision of 03/16/2020)

We filed an opposition with the German Patent and Trade Mark Office (DPMA) on behalf of the opponent against the registration of the German word/figurative mark LxTek (registration number 30 2018 210 232) filed on 31.03.2018. Although our client did not have its own registered trademark with earlier priority, it had been successfully operating on the German market for many years with the help of an Amazon shop of the same name under the company name LxTek.

The word/figurative mark challenged in the opposition proceeding was protected for various goods in classes 2, 9, and 11. In the opposition, we also defined in detail the business sector for our client’s trademark LxTek. Otherwise, it is not possible for the DPMA to determine a collision of the conflicting trademarks/company names at issue.

We argued that there is a likelihood of confusion between the conflicting business name and the contested trademark because there is both the identity of goods/industry and identity of signs. We, therefore, requested that the contested German trademark be deleted from the register of the DPMA on the basis of our opposition.

The DPMA upheld our opposition in its entirety and decided in favor of our client. Our client was entitled to cancellation/injunctive relief pursuant to § 12, 15 (2) and (4) of the Trade Mark Act (MarkenG) in conjunction with § 5 (2), 42 (2) No. 4 MarkenG, because the contested word/figurative mark “LxTek” and the earlier company name “LxTek” of our client were on the market opposed to each other in a manner giving rise to a likelihood of confusion.

Pursuant to § 5 (2) MarkenG, the acquisition of a company name requires that the sign in question has an original distinctive character and that it is actually used as a company name in business dealings (i.e., as a name for a company or as a special designation of a business). According to our submission to DPMA, these requirements were met. In particular, the designation “LxTek” is sufficiently distinctive for the goods in the business sector claimed, since according to the DPMA no descriptive or other weakly distinctive term content is recognizable in this respect. The opposing party (our client), which operates throughout Germany via the internet trading platform Amazon, made use of the designation “LxTek” in the form of the special designation of a business establishment in the course of trade throughout Germany. The opponent had named its Amazon shop “LxTek”.

The opponent is therefore entitled to prohibit the use of the contested trademark in the Federal Republic of Germany on the basis of its corporate trade name, pursuant to § 12 MarkenG in conjunction with § 15 (2) and (4) MarkenG.

According to settled case law, action may be taken based on a company name under the aspect of the likelihood of confusion not only against the use of another company name but also against a registered trademark, because the registered trademark indicates a certain commercial origin of the marked product and thus indirectly also individualizes the company behind the product. The company name must be used in the entire territory of the Federal Republic of Germany in order to be a valid basis for the deletion of a registered trademark.

These requirements were fulfilled in the present case. There was an imminent likelihood of confusion between the contested German trademark and the opponent’s company name used throughout Germany: according to the DPMA, given the average distinctiveness of the opponent’s company name, the signs at issue gave rise to a likelihood of confusion.

The decision of the DPMA is now final. The owner of the canceled German trademark has not filed an appeal against the DPMA’s decision.