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April 1, 2016 Vol. 71 No. 6 Back to Bulletin Main Page

GERMANY: Dominant Element within a Challenged Mark May Establish a Conflict, Even if Incapable of Distinguishing

The Federal Patent Court upheld an opposition against the German word and figurative mark DSA DEUTSCHE SPORTMANAGEMENTAKADEMIE, filed by the owner of the wordmark BSA, Johannes Marx, and affirmed aural similarity between DSA and BSA. It refused registration for a majority of the goods and services in Classes 16, 35, 38 and 41. An appeal against this decision was filed with the Federal Court of Justice (decision of July 9, 2015 - I ZB 16/14).

The company DGBB Deutsche Gesellschaft für berufliche Bildung GmbH applied for the mark pictured below, which was registered on November 25, 2011, for goods in Classes 16 (paper), 35 (business management and advertisement services), 38 (telecommunication services), and 41 (training services). Mr. Marx initially filed a notice of opposition against the later mark before the German Patent and Trade Mark Office (DPMA) and the DPMA rejected the opposition.

It is interesting to note that the Federal Court of Justice considered the acronym DSA to be the dominant element within the sign as a whole. The Federal Court of Justice held that an element of a mark has dominant character if the other elements of the mark are largely secondary to the overall impression. The relevant public would be guided specifically by the dominant elements of a mark. The Federal Court of Justice stated that both the word sequence “Deutsche Sportmanagementakademie” (“German Sports Management Academy”) and the acronym DSA were descriptive for services in Classes 38 and 41. Both would indicate services of a German academic institution with educational offerings in the field of sports management. On the other hand, for the goods and services in Classes 16 and 35, both elements would not have descriptive content. The Federal Court of Justice thereby made clear that both elements were equally distinctive or not distinctive of the various goods and services.

However, the Court said that the relevant public would see the acronym DSA as the dominant element within the sign as a whole because of its graphical emphasis, size and typeface design. It would therefore not use the contested mark’s full name, but shorten it to DSA. Thus, only the letter sequences DSA and BSA had to be considered when comparing the signs.

The Federal Court of Justice also made general comments on the principle that the mere fact that an element, which is incapable of protection in itself, is contained in both signs cannot alone establish a danger of confusion. The reason for that is that a sign, which solely consists of elements which are incapable of protection in itself, should not be granted an unjustified scope of protection.

The Federal Court of Justice stated that this principle was not applicable in every constellation. There were cases where the element incapable of protection could potentially create a conflict when it is adopted in a later sign, namely when the contested sign has no other distinctive elements. This was the case here. As explained above, the contested mark consisted of the element “DSA” and “Deutsche Sportmanagementakademie” (“German Sports Management Academy”). Both elements are merely descriptive for the services in Classes 38 and 41 and as such incapable of protection. In such a case, there is no risk of granting a mark unjustified scope of protection due to elements that are incapable of protection.

Finally, the Federal Court of Justice held that the marks DSA and BSA showed above-average aural similarity. The court therefore affirmed likelihood of confusion.

The Court’s decision has become final.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2016 International Trademark Association