Deutsche Post AG lost in the trade mark dispute over the well-known figurative mark: a stylised post horn on yellow paint. A very similar figurative mark had been registered from Slovenia – rightly so, the CFI held that a post horn had only a weak distinctive character in the EU.
“Post horn” Deutsche Post: EU figurative trademark since 1998
Since 1998, Deutsche Post AG has held European trademark rights to the well-known figurative sign of a stylised post horn on yellow colour. Nevertheless, Pošta Slovenije d.o.o., (Slovenia) applied for a similar figurative mark as a postal logo in 2017, also a stylised post horn on yellow colour, and designed in a very similar way.
Deutsche Post immediately filed an opposition against the trade mark application with reference to the likelihood of confusion with its own earlier trade mark. However, the opposition was rejected by both the European Trade Mark Office and the Board of Appeal.
Similarity – but no likelihood of confusion
In the contested decision, the Board of Appeal found an average degree of similarity between the conflicting signs. In addition, both marks claimed similar or even identical goods and services. Normally, in such a constellation, a likelihood of confusion is very likely.
Nevertheless, the Board of Appeal found that there was no likelihood of confusion between those signs. The Board of Appeal found that the distinctive character of a stylised post horn, such as the earlier mark, was too weak.
CFI: Posthorn no reference to Deutsche Post
The European Court of First Instance (CFI) confirmed this view of the Board of Appeal.
Deutsche Post referred in vain to other judgments on similar figurative marks, for example in the Marriott and winged griffin case. The Marriott case was not comparable, the CFI found, because there the disputed sign did not represent a sector such as a post horn for the transport of mail.
Similarly, the German Post claimed in vain that the earlier mark had a higher degree of distinctiveness. The CFI also rejected this and explained in detail that a stylised post horn has long been widely used throughout the EU because of its historical link to postal delivery.
The same applies to the signal colour yellow of the post, which has been used by several postal operators in the EU for almost two centuries. After privatisation, their work – with Posthorn logos – was continued by national postal operators. Stylised postal horns in the EU existed quasi in coexistence.
In this context, please read our article: Long coexistence of trademarks in the EU
As examples of this, the Posthorn logos from the Czech Republic, Austria, Spain, Bulgaria, Cyprus and Lithuania were presented.
Therefore, the Court held that the relevant public would not associate the post horn or the colour yellow with Deutsche Post or its services. Instead, consumers would generally associate a stylised post horn with the services of several national postal operators. There is therefore no likelihood of confusion between the Deutsche Post figurative mark and the more recent Post figurative mark from Slovenia, despite similarity.
The CFI dismissed Deutsche Post AG’s action in its entirety.
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