An additional ‘E’ does not provide sufficient distinctiveness in trademark law. This was made clear by the Regional Court of Munich with its judgment on January 19, 2023 (Case No. 1 HK O 13543/21).
Trademarks are a valuable asset for companies. Therefore, it is all the more important to register and comprehensively protect them. The law firm MTR Legal Rechtsanwälte has focused its advisory services on intellectual property rights and advises its clients, among others, on trademark law.
To be registered as a trademark, a sign must have sufficient distinctiveness from the products or services of other companies. Additionally, there must be no risk of confusion with already registered trademarks. An additional ‘E’ in the name does not provide the necessary distinctiveness, as the Regional Court of Munich decided 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 launch the models designated in this way in Germany. Another car manufacturer saw its trademark rights for its registered ‘S 6’ and ‘S 8’ trademarks violated, as there was a risk of confusion. It filed for an injunction and damages.
The lawsuit was successful. The Regional Court of Munich made it clear that the signs could be mentally associated, and therefore there was a risk of confusion. It further reasoned that especially in the automotive sector, the manufacturer’s name often takes a backseat to the model designation and is therefore not legally decisive for assessing the risk of confusion. By contrast, model designations often develop into independent brands in terms of sub-brands.
Although the additional ‘E’ deviates from the registered trademark in its written form, it does not ensure sufficient distinctiveness, because at least phonetically, the signs could be mentally associated, creating a risk of confusion, according to the court. Moreover, the ‘E’ is associated with ‘electric’ or ‘electrical’. There is thus a risk that the consumer assumes that the ‘es 6’ is merely the electric version of the ‘S 6’.
Experienced attorneys in intellectual property protection at MTR Legal advise on trademark law.
