There is an interesting Opinion of the Advocate General:
OPINION OF ADVOCATE GENERAL
JACOBS
delivered on 9 June 2005
Case C-120/04
Medion AG
v
Thomson multimedia Sales Germany & Austria GmbH
1. In the present case, the Oberlandesgericht (Higher Regional Court), Düsseldorf, has referred to the Court a question on the interpretation of Article 5(1)(b) of the Trade Marks Directive.
2. That provision entitles a trade mark proprietor to prevent others from using in the course of trade ?any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public?.
3. The referring court asks essentially whether there is a likelihood of confusion on the part of the public within the meaning of Article 5(1)(b) where a composite word or word/figurative sign (in the present case, THOMSON LIFE) comprises a company name followed by an earlier mark (namely, LIFE) which consists of a single word with ?normal distinctiveness? and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role therein. The referring court's question was prompted in particular by the ?Prägetheorie?, a doctrine of German trade mark law developed by the Bundesgerichtshof (Federal Court of Justice), considered below.
[...]
Conclusion
41. I am accordingly of the view that the question referred by the Oberlandesgericht, Düsseldorf, should be answered as follows:
In determining whether a composite word or word/figurative sign comprising a company name followed by an earlier mark which consists of a single word with ?normal distinctiveness? and which, although it does not shape or mould the overall impression conveyed by the composite sign, has an independent distinctive role therein is sufficiently similar to the earlier mark to give rise to a likelihood of confusion on the part of the public within the meaning of Article 5(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, a national court must base its assessment on the overall impression given by each mark, bearing in mind, in particular, their distinctive and dominant components, the nature of the public concerned, the category of goods or services in question and the circumstances in which they are marketed.
Looks as if German Courts would likely have to re-calibrate their gauge concerning collision of multi-part trade marks. (Link thanks to Mr. Peter Müller)
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
Opinion of the Advocate General:
