When formulating a new brand, developers often modify the terms of certain significant features of a product or ingredient, with this modification resulting in a new word. It is no longer simply descriptive, as would be the case if the original word was used, and it can therefore be registered as a trade mark. Problems arise when competitors have already had the same idea! Especially if they have a prior trade mark using the same or similar content. So what can one do, in this situation, to avoid getting into trouble later on? An unpublished decision of the Oberlandesgericht München (Munich Higher Regional Court), obtained by the author, provides important guidance.
In practice, trademark development is often carried out without due regard to the legally relevant criteria used to judge the likelihood of confusion with prior marks. This frequently leads to great disappointment and not infrequently to considerable damage. This is reason enough to take a brief look at some of these aspects.
Eco-brands often consist of several elements that are immediately recognisable. However, one should be wary of relying solely on such a combination. Further steps may well be necessary so the brand does not hit the rocks at a later date.
Under what conditions can descriptive elements such as FAIR in a composite sustainability brand give rise to a likelihood of confusion?
Don’t be lulled into a false sense of security when forming a brand, just because ‘everyone else’ is using the same descriptive terms. What’s important here?
Your trade marks should not, if possible, share similarities with earlier signs. The Court of Justice of the European Union now has set a high benchmark in this regard. They must be strictly observed, otherwise your trade marks may be in great danger and you may inadvertently become an infringer who will be obliged to pay damages.