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Trademark “The Dog Face” next to “The North Face”?

No, decided the Higher Regional Court (OLG) Frankfurt am Main (decision of 28.6.2022, AZ. 6 W 32/22), and prohibited a manufacturer of animal clothing from labelling its products “The Dog Face”.

What exactly was at stake?

It was about the enforcement of trademark rights. The trademark owner of “The North Face” filed an emergency application to enforce injunctive relief and thus prevent the use of “The Dog Face” for animal clothing.

The well-known trademark “The North Face” is registered primarily for clothing. The opponent in the case is an online retailer and also sells clothing, but specifically for animals. “The Dog Face” was to serve as a trademark for the products here.

The District Court initially rejected the application in the summary proceedings. But “The North Face” did not want to let it rest and filed an appeal against this at the next instance – the Higher Regional Court – with success. They can now demand that the retailer of the animal clothing refrain from labelling its products with “The Dog Face”, because this would otherwise infringe on trademark rights.

What were the reasons for the OLG’s decision?

As always, the view of the relevant public is decisive. The court argues that in this case, they – e.g. buyers of products under the trademark “The North Face” – would link both designations. This is primarily due to the high profile of the “The North Face” trademark through its intensive use.

When examining a trade mark infringement under Section 14 (2) No. 2 MarkenG, the existence of a likelihood of confusion must be established. There are three types of likelihood of confusion: the direct likelihood of confusion (when the signs themselves could be directly confused with each other), the indirect likelihood of confusion (the signs are perceived as different, but are attributed to the same undertaking due to the common formation of the signs) and the likelihood of confusion in the broader sense (the signs are neither directly confused nor attributed to the same undertaking, but other special circumstances falsely create the impression that the goods come from an economically related undertaking).

The court denied the (direct) likelihood of confusion with regard to the signs of “The North Face” and “The Dog Face” – after all, the wording is not identical. However, a similarity of signs is also sufficient for the assumption of a trade mark infringement, which we clearly have here. The phrase “The Dog Face” is visibly similar to the trademark “The North Face”. Despite the different meanings of the words “dog” and “north”, one would mentally associate the signs – and thus also, in a broader sense, the companies – with each other.

Why can’t that be?

Because this would already impair two important functions that a trade mark has: the function of origin and the function of distinction. A trademark guarantees the origin of the products, i.e. the affiliation to a certain company. In addition, trade marks also serve to distinguish: With their help, companies can identify their goods, in particular to distinguish them from the goods of their competitors.

And here we come to another crucial point of the OLG’s judgement: The similarity of the goods is also taken into account in the assessment. In this case, outdoor clothing and animal clothing are opposed to each other and again one has to consider whether the public would see any connection here. One might think that there is a clear dividing line between goods for humans and animals. However, the court ruled that it was likely that the relevant public would think that the applicant had expanded its product range to include animal clothing, for example “in order to make it possible for the sporting dog owner to practise his outdoor sport in a partner look with his animal”.

The similarity of the sign “The Dog Face” to the applicant’s well-known trade mark cannot be tolerated either because it exploits the reputation of the trade mark “The North Face” for its own sales. The hard work of having consistently positioned one’s brand in the market should not, of course, be able to benefit other companies just like that. This is what we call reputation exploitation.

This decision has once again shown us how strongly trade mark rights can protect, and that in trade mark conflicts it is not only the similarity of the signs that counts, but also other factors such as the similarity of the goods. All this has to be considered from the perspective of the relevant public to which the goods designated by the marks are addressed.

Author: Olivia Wykretowicz