The German Federal Patent Court: Bosch vs. boshi
The German Federal Patent Court clarified with its judgment (Judgment dated 5 August 2014; Case No.: 27 W (pat) 18/14) in the case “BOSCH” vs. “boshi” that likelihood of confusion is only given if various factors are cumulatively applicable: The similarity of the goods and services, script, sound and meaning of both trademarks and the reputation of the older trademark.
Background of the Case and Subject Matter
In April 2011 the German Startup – myboshi GmbH – filed an application for the word mark “boshi” (German TM No. 30 2011 018269) for – among others – clothing and toys. Thereon, the German manufacturer Robert Bosch GmbH filed an opposition based on their word mark “BOSCH” (German TM No.: 300 71 712) for the same goods. The German Patent and Trademark Office decided that “boshi” can be registered because there is no likelihood of confusion to “BOSCH”. Below you can see the signs used in commerce of both companies.
The German Federal Patent Court compared the signs and came to the result that there is no likelihood of confusion.
Likelihood of confusion is assessed on the basis of if there is a high risk that the targeted consumers must assume that the relevant goods and services derive from the same or connected companies. Therefore, various factors need to be taken into account. On the one hand side, the specific goods and services of the applied for mark and the earlier sign need to be evaluated. On the other hand, the script, sound and meaning of the two trademarks have to be compared. Also the reputation of the older trademark can be taken into account.
The court compared the signs and took note of the fact that, both parties use the trademarks for the same goods and services. But the phonetic and visual differences between the two signs are sufficient in order to rule out the similarity of the goods and services. Therefore, the court pointed out, that “boshi” is completely written in lowercases while “BOSCH” is completely written in uppercases. Furthermore, the rare combination “sh” in “boshi” creates an unusual script. Moreover, the sound is not the same because “boshi” ends with “i”. Besides, the word “BOSCH” is a family name and “boshi” is a neologism which is created out of the japanese word „boushi“ for cap. Finally, the court pointed out, that “BOSCH” may have a high reputation for electronics but, not for clothing and toys. Consequently, the court decided that there is no likelihood of confusion between the trademarks.
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