FC Bayern München wins Trademark Case against Sky Deutschland

The German Federal Patent Court (BPatG) decided on 8 April 2014, that the word/design mark “München – in Bayern” cannot be registered because there is likelihood of confusion to the older word/design mark “FC Bayern – München”. Also the application was filed in bad faith (Case 27 W (pat) 546/13). Introduction Likelihood of confusion must be assessed on the basis of if there is a high risk that the targeted consumers assume that the relevant goods and services derive from the same or connected companies. Also, an application is filed in bad faith, if the applicant knows and deliberately wants that his trademark is confused with another, older trademark. Background of the Case and Subject Matter In the present case, the well-known trademark “FC Bayern München” (left, below) of the FC Bayern München AG filed an opposition against the trademark application “München- in Bayern” (right, below) of the Sky Deutschland AG. Both designations are word/design marks. FC Bayern München AG is of the opinion that “München - in Bayern” is too similar to their word/design mark. Regarding the essential points, the stylistic elements are highly similar. Therefore, it is not important, that the words “Bayern” and “München” changed their places and that Sky Deutschland AG uses a higher number of rhomboidal diamond shapes for their word/design mark. The likelihood of confusion is also especially given because “FC Bayern München” has gained a high reputation, in the field of soccer. For that reason, they also expect that Sky Deutschland AG knows that there is likelihood of confusion between both word/design marks. As a result, they assume that “München in Bayern” was filed in bad faith and Sky Deutschland AG just wants to participate in their success. Sky Deutschland AG instead argues that their word/design mark is in color whereas, FC Bayern München AG’s mark is just black and white.    vs.  Decision The BPatG compared the signs and came to the result that there is likelihood of confusion. They also assume that Sky Deutschland AG knew at the date of filing the application, that their word/design mark is very similar to the mark of the FC Bayern München AG. Therefore one motivation for the filer was, to disturb the lawful possession of Bayern München AG. In reply to the argumentation of Sky Deutschland AG, the court asserts that black and white word/design marks cover similar third party marks, in color, too.