Tuesday, 8 March 2011

Notoriety for general use: Trade Marks

The excellent Class 46 posted (per Robert Börner) a summary of a decision of The German Federal Patent Court rejecting an application of the term "TELFEXAN" for "industrial chemicals" in Class 1 due to an opposition based on the earlier trademark "TEFLON" being registered for identical goods.

The relevance of the decision to readers of this blog is that it shows the importance of evidence of use (not evidence to get protection under passing off or famous marks type legislation but evidence to show that a mark with a high degree of distinctiveness gets wider protection) in trademark oppositions, infringement cases and for overcoming citations not only in RSA but in all African countries that use the European tests (Sabel v Puma, Cannon etc). For RSA, see for instance the Cowbell AD decision adopting these tests.  

The African decisions that Afro Leo has read indicate that attorneys very rarely rely on evidence of use in this way.

"The German Federal Patent Court (Bundespatentgericht) recently rejected an application of the term "TELFEXAN" for "industrial chemicals" in Class 1 due to an opposition based on the earlier trademark "TEFLON" being registered for identical goods.  

Despite the (according to the opinion of this class 46 member rather strong) differences between the signs, the court stated an overall risk of confusion due to the very high distinctiveness of the earlier sign. 

The sign  "TEFLON" allegedly forms a traditional trademark of the opponent being strongly used over the last decades (which had apparently been sufficiently substantiated by the opponent).  Interestingly the court explicitly stated that the decision with respect to a risk of confusion would have been different if  - the goods had not been identical or  - the earlier sign did only have an average distinctiveness."

1 comment:

Pierre-Antoine said...

Of course a high degree of distinctiveness enlarges the protection of a trademark, but in this case, the German Federal Patent Court rejected the application because the earlier trademark was registered for identical goods.

Otherwise, we cannot be sure the application would have been rejected. Indeed, I am a French lawyer settled in China and some recent cases about Starbucks or Bausch & Lomb were dismissed because there were disparities in the use and functions, so that the second trademark could be registered. If you want IP News about China, you can also check out: !