The opponent has been selling sparkling wines under the sign “Rotkäppchen” since the middle of the 19th century. The trade mark “Rotkäppchen” was first applied for in respect of sparkling wines on 20 February 1895 and registered on 15 July 1985 under number 8311.
In the present proceedings, the opponent did not rely on this mark, but on the word/figurative mark
(picture shown in the Newsletter)
applied for on 09.06.2011 and registered on 22.07.2011 for goods in classes 30, 32 (in particular non-alcoholic beverages) and 33 (alcoholic beverages (except beers)), opposition mark No 1). Furthermore, the opponent based the opposition on the word mark “Rotkäppchen”, applied for on 12 December 2013 and registered on 25 February 2014 for a variety of goods and services, but not for goods in classes 32 and 33, i.e. in particular not for alcoholic and de-alcoholised sparkling wines, opposition mark No. 2.
The contested mark
(picture shown in the Newsletter)
was also registered for a variety of goods and services, in particular for the broadcasting of radio programmes.
The proprietor of the contested trade mark raised the objection of non-use with regard to the opposition trade mark to 1).
The opponent was able to prove use of the opposed trade mark No. 1) for the goods wines, mixed alcoholic beverages and dealcoholised wines. The Federal Patent Court held that these goods were not similar to the goods and services for which the contested mark was registered. Accordingly, the Federal Patent Court rejected a likelihood of confusion within the meaning of Section 9(1)(2) MarkenG.
When examining the likelihood of confusion between the word mark “Rotkäppchen” (opposition mark No. 2) and the contested mark, the Federal Patent Court concluded that the respective goods and services applied for were partly identical, partly similar and partly dissimilar. For the goods and services claimed, the word mark “Rotkäppchen” had partly average and partly below-average distinctiveness. Above-average distinctiveness for the sign “Rotkäppchen” only exists for sparkling wines. However, the opposing mark No. 2 had not been applied for for this product. When comparing the signs, the Federal Patent Court assumed that the contested sign would maintain a sufficient distance from the word mark “Rotkäppchen”.
Taken as a whole, the comparison marks
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and
(picture shown in the Newsletter)
are very clearly distinguished by the striking graphic design of the younger word/figurative mark and the word element “radio”, which is not present in the opposing mark. The contested mark is not characterised by the element “Rotkäppchen”. The element “Rotkäppchen” is indeed reproduced in red and thus clearly distinguishes itself from the other elements which are reproduced in black. However, this difference was cancelled out by the fact that a frame was drawn around all the word elements, which conveyed a sense of unity, especially as the word element “Radio” was placed above the word element “Rotkäppchen” and was written in a font twice as large. In addition, there was the graphic element at the edge of the picture in the form of a stylised wolf with its mouth wide open. The contested mark is also not characterised phonetically by the word element „Rotkäppchen“. The target public would not limit the contested mark to the word “Rotkäppchen” when naming it, but would always add the word “Radio” as well. The word element “Rotkäppchen” also did not have an independent distinctive position in the contested mark. Although the word element “Rotkäppchen” had been completely incorporated into the younger mark, the combination with the word element “radio” to designate a radio station as well as the graphic linking in connection with the relevant goods and services, which have no relation to sparkling wines, would have the effect that the public would not assume a business, economic or organisational relationship with the opponent.
Due to the lack of likelihood of confusion between the challenged trade mark and the opposition trade marks No. 1 and No. 2, the Federal Patent Court held that the ground for cancellation under Sections 42 (2) no. 1, 9 (1) no. 2 Trade Mark Act, old version, did not exist.
The Federal Patent Court further examined whether the ground for cancellation under Sec. 42 (2) No. 1, 9 (1) No. 3 Trade Mark Law (old version) (special protection of the trade mark with a reputation) existed. As a result, the Federal Patent Court did not consider this ground for cancellation to exist either.
The sign “Rotkäppchen” was indeed a well-known trade mark for alcoholic and de-alcoholised sparkling wines within the meaning of Section 9 (1) No. 3 MarkenG. However, this reputation only extended to these goods and to closely related products such as wines or alcoholic mixed drinks, but not to the goods and services for which the contested mark claimed protection. The relevant public would not associate the younger mark with the one
(picture shown in the Newsletter)
with the trade mark “Rotkäppchen”, which is known for sparkling wines. The mental association required for the protection of reputation under Section 9(1)(3) MarkenG was therefore not present.
Accordingly, the Federal Patent Court rejected the opposition based on opposition marks 1) and 2).
Indeed, the target public will not think of the trade mark “Rotkäppchen” for sparkling wines when they hear the name “Radio Rotkäppchen”, but rather of the well-known fairy tale character, whereby this mental association with the fairy tale character is supported by the addition of the wolf with its mouth wide open.
