An additional “E” does not provide sufficient distinctiveness in trademark law. This was clearly demonstrated by the Munich Regional Court in its ruling of January 19, 2023 (Case No.: 1 HK O 13543/21).
Trademarks are of high value to companies. Therefore, it is all the more important to register and comprehensively protect them. The commercial law firm MTR Legal Rechtsanwälte specializes in advising on intellectual property protection and advises its clients among others in trademark law.
For a sign to be registered as a trademark, it must have sufficient distinctiveness from the products or services of other companies. Likewise, there must be no risk of confusion with already registered trademarks. An additional “E” in the name does not provide the necessary distinctiveness, as decided by the Munich Regional Court in a trademark dispute between two car manufacturers.
In the underlying case, the defendant car manufacturer advertised two of its models on its website with the company name and the addition “es 6” or “es 8” and planned to market the models so designated in Germany. Another car manufacturer saw its trademark rights for its registered trademarks “S 6” and “S 8” violated because of the risk of confusion. It sued for injunction and damages.
The lawsuit was successful. The Munich Regional Court made it clear that the signs could be associated in thought, and therefore there was a risk of confusion. It further reasoned that especially in the automotive field, the manufacturer’s name often recedes behind the model designation and thus is not legally relevant for assessing the risk of confusion. In contrast, model designations often develop into independent brands in the sense of secondary brands.
Although the additional “E” visually distinguishes the sign from the registered trademark, it does not provide sufficient distinctiveness, as at least phonetically the signs could be mentally associated, thereby posing a risk of confusion, according to the court. Furthermore, the “E” is associated with the term “electric” or “electric”. Therefore, there is a risk that the consumer assumes that the “es 6” is merely the electric version of the “S 6”.
Experienced attorneys in commercial intellectual property protection advise at MTR Legal in trademark law.
