The Federal Patent Court of Germany has issued a lead decision on how to file an appeal against a decision of the DPMA Trade Mark Office if several oppositions of the same opponent have been assigned. This was triggered by a trade mark dispute concerning the likelihood of confusion between the word marks Eliza and Eliysa AL.
The origin of that decision lies in a trade mark dispute concerning the disputed word mark Eliysa AL versus the earlier marks Eliza and Eliza Hexal for pharmaceutical products (Nice Class 05). A separate opposition procedure against the earlier word mark Eliza (No 303 21 561) was concluded in October 2006. The disputed word mark Eliysa AL was filed in November 2010 and published in the trademark register in April 2011. In June 2011, the opposing party had filed a notice of opposition with reference to the two marks Eliza and Eliza Hexal.
Decision of the DPMA
In June 2015, the German Trade Mark and Patent Office rejected the opposition against the registration of the disputed word mark Eliysa AL as the similarity, even between identical goods, was too low to give rise to a likelihood of confusion. The proprietor of the earlier Eliza marks appealed against that decision. The appeal was substantiated in a separate pleading.
The proprietor of the challenged mark had disputed that the opponent was entitled, at the time of filing the opposition, to file an opposition in its own name against the registration of the challenged mark. For the word mark Eliza Hexal, which had been registered since 2010, N… AG, and not the opponent, was entered in the register as the proprietor. Above all, however, the proprietor of the challenged trade mark denied that the opposing trade mark had been used in such a way as to preserve the rights of the opposing party.
The DPMA had stated: “The opposition based on trade mark Eliza was admissible, but not well-founded, because the opponent had not substantiated a right-preserving use of the opposition trade mark pursuant to § 26 MarkenG on the admissible objection of non-use of the proprietor of the challenged trade mark”.
Relevant period of the objection for non-use
For the objection of non-use, the DPMA had referred to a period of time which covered periods of use pursuant to § 43.1(“relevant period of use”) and 43.2 German Trade Mark Law (“substantially period of use”). And the opposition mark had already been registered for more than five years at the time of publication of the registration of the challenged mark, since it had been registered on 8 July 2003.
In its judgment, the Federal Patent Court (BPatG) contradicted the DPMA decision and clarified: “Contrary to the opinion of the Trade Mark Office, the objection, which is undifferentiated and therefore relates to both relevant periods of use pursuant to § 43, Trade Mark Law, is only admissible in respect of the relevant period of use pursuant to § 43.2, but not in respect of the relevant period of use pursuant to § 43.1, Trade Mark Law. For the beginning of the so-called grace period for use of the opposition mark Eliza was not determined by the date of registration but, pursuant to § 26 MarkenG, by the conclusion of the opposition proceedings against this opposition mark on October 11, 2006.”
Lead decision on appeal against a decision of the DPMA trade mark office
We have summarised the lead decision of the BPatG on the appeal against the decision of the DPMA in the dispute concerning the word mark Eliysa AL:
“If an appeal is lodged without further explanation against a decision of the DPMA Trade Mark Office rejecting several oppositions of the same opponent, it must normally also be assumed that the appeal is directed against the contested decision as a whole if only one of the opposition marks concerned is mentioned in the subject matter of the notice of appeal”.
(Lead principle of the BPatG)
An appeal under §66 Trade Mark Law is filed by filing a notice of appeal. The BPatG clarified, however, that the notice of appeal must only designate the contested decision and contain a statement that an appeal will be filed against it. On the other hand, due to § 66 MarkenG there is neither required an application nor a statement of reasons; without an application or other further specification, the decision is deemed to be contested in its entirety if the appellant is adversely affected by it. This also applies in so far as the contested decision rejected several oppositions of the same opponent from different opposition marks.
In practice, this means that a joint decision on several oppositions must be notified to each party only once in order to become effective. It is true that the individual oppositions of the opponent each form a separate subject matter of proceedings or dispute. However, there is only one and uniform decision regarding the challenged trademark.
In the case of a rejection of several oppositions of the same opponent, it can therefore only be assumed that an appeal is limited to the rejection of an opposition if this is clearly and unambiguously expressed in the notice of appeal. However, that is not the case in the present case.
Ruling in the legal dispute Eliza vs. Eliysa AL
In the legal dispute itself, the BPatG partially reversed the decision of the DPMA. For the period from October 2006 onwards, the opponent had shown with the aforementioned documents that the use of the opposition mark for a contraceptive had been credible in order to preserve rights. The use in the form of “Eliza HEXAL” also constituted a right-preserving use of the opposition mark “Eliza”. And between the challenged mark and the opponent’s opposition mark Eliza there is a direct likelihood of confusion under trademark law within the meaning of § 9 MarkenG, the BPatG clarified with regard to the goods “pharmaceutical and veterinary products; plasters”. However, the further appeal is dismissed. And the parties to the appeal proceedings may also lodge an appeal against this decision.
We suggest in addition our following articles concerning recent rulings about likelihood of confusion between word marks:
- SHERPA versus SHERPA: Word mark identical or similar?
- RUTINI versus RUBINI – and dominance of the components of a trademark
- No likelihood of confusion: POST, INFOPOST and ePOST vs InPost
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