In opposition proceedings against our client’s registered trademark “HeyGo”, the German Patent and Trademark Office (DPMA) ruled in our favor in its entirety and rejected the opposition against our client’s registered trademark. The opposition of the opponent was based on his registered trademark “hyco”. The opposition was directed against all registered goods in class 7. The German Trademark Office had decided that there was no likelihood of confusion among the trademarks at issue.
Why was an opposition filed against our client’s trademark?
The opponent was concerned that some of the goods protected by each of the trademarks were confusingly similar. Since the opposing trademark only protects goods and services in classes 7, 37, 42, whereas our client’s trademark protects goods and services in classes 7, 12, 28, according to the opponent’s assessment there was a similarity of goods only with regard to the goods in class 7. Therefore, only in this respect the opponent had challenged our client’s trademark with his opposition.
The following goods, among others, were protected for our client’s trademark in class 7:
Compressors, pumps, vacuum pumps, measuring gas pumps, laboratory pumps, pressure pumps, piston pumps, diaphragm pumps, in each case except for elevators and other lifting devices.
The opponent was concerned that the aforementioned goods in class 7 were highly similar to the goods in class 7 protected for his opposition mark. This was quite true. Therefore, from a trademark law perspective, it was necessary that the two trademarks in dispute maintain a discernible and significant distance from each other in order to avoid a potential likelihood of confusion.
Decision of the German Trademark Office (DPMA)
In this case, the German Patent and Trademark Office (DPMA) decided that this requirement was met and that our client’s younger trademark maintained the required distance from the opposition trademark.
In order to justify the rejection of the opposition and to be able to explain the sufficient distance of our client’s challenged trademark from the opposition trademark, the DPMA stated in its decision that it was essential to consider the two trademarks as a whole. Customers and buyers, the target groups of the two trademarks, would also consider the trademarks in their overall impression. They would not dissect the products in an analytical manner but would rather allow each of them to have an effect on them as a whole. Consequently, the factors relating to the similarity of the goods cannot be considered in isolation from one another, as this would not be close to reality. Against this background, factors would have to be considered which can assess the similarity of the goods individually, but which can also determine the legal concept of likelihood of confusion in a reciprocal manner. For example, the identity and similarity of the relevant comparison products, i.e. goods and services, the identity or similarity of the trademarks, as well as the distinctiveness of the trademarks and the associated scope of protection of the opposition trademark must be considered. Furthermore, factors such as the target public, i.e. customers and clientele of buyers, the expected impact of the product, the ability of the public to differentiate when perceiving the trademarks and the specific nature of the goods and services as competing or complementary products are relevant for the decision.
Against this background, the DPMA found that the opposition trademark had an average distinctiveness. Overall, it could not be assumed that there was too much similarity between the trademarks at issue in the specific case.
Reasons for the rejection of the opposition
The German Trademark Office based its decision of insufficient trademark similarity on various factors.
Overall visual impression
In terms of typeface, it could first be established that our client’s younger trademark is distinguished from the first syllable of the opposition trademark by the “e” in the first syllable. Thus, “hey-” could be well differentiated from “hy-“.
The second syllable is also sufficiently distinguishable by the use of the “c” in “hyco” and the “G” in “HeyGo”. In addition, the internal capitalization of our client’s younger trademark, which has no equivalent in the opposition trademark, is distinctive.
Therefore, there was a sufficiently large distance between our client’s younger trademark and the opposing trademark in terms of typeface.
From a phonetic point of view, the German Trademark Office noted that the trademarks in dispute would have the same number of syllables, the same accentuation, and the same speech rhythm. However, we countered this view by stating that the public would usually pronounce our client’s trademark [hei:go], whereas the opponent’s trademark would more likely be pronounced [hü:ko]. This could be derived, for example, from the usual manner of articulation, such as of the German words “Hydrant”, “Hypothese” or “Hypothek”. With these comparisons, we were able to refute the argument of the alleged same emphasis.
Moreover, the German Trademark Office noted that the sound pattern of the respective last syllables also differed considerably. The second syllable of the opposition trademark [ko] would be emphasized much harder than that of our client’s trademark [go].
Thus, the public would be able to distinguish between the phonetic images of the trademarks at issue. Therefore, there is no likelihood of confusion in this respect.
Also, from a conceptual point of view, there was no likelihood of confusion. Thus, no relevant similarity can be found in the essential characteristics of two wordmarks.
No indirect likelihood of confusion
In the opinion of the German Trademark Office, an indirect likelihood of confusion, which could be created by mental association of the two trademarks or in case the two trademarks at issue are perceived as serial trademarks, was also not present.
Result of the opposition proceedings
For the above reasons, which speak against the similarity of the trademarks in dispute, the German Trademark Office decided that the opposition could not succeed on the merits. There was insufficient evidence of a likelihood of confusion between the conflicting trademarks. “HeyGo” and “hyco” were sufficiently different and the younger trademark of our client showed the necessary distance to the prior trademark of the opponent. The fact that the disputed goods in class 7 were largely identical did not alone lead to the success of the opposition.
Overall, the German Trademark Office accepted our argumentation in favor of our client.
What are your concerns?
Do you have any questions concerning trademark opposition proceedings, trademark application proceedings or the German Patent and Trademark Office in general? We will be happy to answer your questions!