Risk of confusion between LYST and Greenlyst confirmed
Attorney at Law | Certified
Intellectual Property Law Attorney
Decision of the German Federal Patent Court of 18 March 2023, case No.: 29 W (pat) 59/20
This decision was based on the following facts:
The opponent is the proprietor of the EU word mark No 010 840 321 ‘LYST’, which enjoys protection inter alia for the services in Class 35:
- Provision of online advertising space for sellers and buyers to advertise, market and solicit goods and conclude sales transactions; online advertising on the Internet and other global computer network systems; provision of information relating to online shopping for fashion goods.
The EU trade mark is also the opponent’s company name catchword under which it markets a global fashion search engine.
The opponent had filed an opposition with the German Patent and Trade Mark Office (DPMA) based on its EU trade mark ‘LYST’ against the registration of the younger German word/picture mark No. 30 2018 216 616 
. The contested trade mark sought protection for the following services in Class 35:
- Affiliate marketing; provision of an online marketplace fir buyers and sellers of goods and services; arranging commercial transactions, for others, via online shops.
The trade mark section at the DPMA (both the first and second examiner) had found partial identity and otherwise a high degree of similarity between the aforementioned services. However, both examiners denied phonetic, visual and conceptual similarity between LYST and and thus a likelihood of confusion between the marks and rejected the opposition by decisions of 1 November 2019 and 6 July 2020.
In support of its position, the trade mark section argued in particular as follows
- The opponent’s mark ‘LYST’ still has ‘normal distinctive character‘, but the Danish term ‘LYST’, which means ‚lust‘, ‚pleasure‘ in German, has ‚a descriptive effect in the sense of advertising, namely that the services are aimed at a ‘desire directed towards the satisfaction of a wish‘. In addition, ‘LYST’ is a reference to the purely descriptive indication ‘pleasure’, which will be understood by the majority of the public.
- The public will refer the contested word/picture mark as “Greenlyst”. The signs to be compared ‘Greenlyst’ and ‘Lyst’ are ‘clearly’ distinguishable phonetically by the word element ‘Green’ in the contested mark, which is not contained in the opposing mark ‘LYST’ and which also forms the beginning of the word in the contested mark. That follows, in particular, from the fact that, as is well known, the target public generally pays much more attention to the beginnings of words than to their endings.
- Visual similarity can also be ruled out on account of the typical ‘outline characteristic’ of the word element ‘green’ and the graphic element, both of which are present only in the contested mark and not in the opponent’s mark.
- Furthermore, conceptual similarity must also be denied: In the contested mark, one could see a combination of words in the sense of “green desire”, need for environmental friendliness and nature”, which forms an overall conceptual unit and which cannot be broken down into different word parts. The opposing mark could refer to “desire, need or longing” or be perceived as a fanciful term. However, the public would recognise the conceptual differences between the marks.
- It also found that there was no likelihood of association. Although the opponent’s mark is reproduced in its entirety in the contested mark, the word element ‘lyst’ does not occupy a dominant position in the contested mark, but is incorporated into it and combined with the word ‘green’ to form an overall concept. There is no evidence that the opponent’s mark has become a well-known company sign or that the word ‘LYST’ is an integral part of several of the opponent’s series marks.
The appeal against the second examiner’s decision was successful and led to the annulment of the DPMA decisions.
Contrary to the opinion of the DPMA, the 29th Senate of the German Federal Patent Court (BPatG) found that the opponent’s mark “LYST” was of average distinctiveness. However, it left open the question of whether the relevant domestic public would recognise the Danish term “LYST” as meaning “lust”. Even if that were the case, that term was not descriptive of the services covered by the opponent’s trade mark.
The Senate agreed with the trade mark section at the DPMA that the marks to be compared ‘LYST’ and as a whole were clearly distinguishable by the graphic design of the younger mark and the additional word element ‘green’ contained therein, both phonetically, visually and conceptually, so that a direct likelihood of confusion between the marks had to be denied. As regards the services covered by the younger mark, the word ‘green’ would indicate that they concern commercial transactions in, or the promotion and marketing of, sustainable goods. However, the word element ‘green’ in the contested mark, although descriptive and weakly distinctive, contributes to the overall impression of the contested mark. The concrete form of the sequence of letters ‘Greenlyst’, which begins with a capital letter and the other letters are written in lower case, would be read and perceived as a coherent word, even if it did not suggest any meaning. That fact prevents the contested mark from being characterised solely by the element ‘lyst’. Consequently, the word element ‘green’ would not recede into the background of the overall mark to such an extent that the target public would focus exclusively on the other element ‘lyst’.
However, the Senate found that there was an indirect likelihood of confusion between the marks and stated the following
The younger contested mark gives the impression of being a specification of the earlier mark ‘LYST’. The element ‘green’ is a cross-industry indication that goods or services are produced or provided in an environmentally friendly/ecological manner or that they are environmentally friendly/ecological in their application and use.
In the field of affiliate marketing and the provision of online marketplaces at issue here, the term ‘green’ stands for a brand channel used by merchants of environmentally friendly and ecological products. This sustainability trend is also very important in the fashion industry at issue here, even before the filing date (1 June 2018) of the contested mark. Therefore, when the relevant public encounters the compound word ‘Greenlyst’, in particular phonetically, in the context of the abovementioned services, it will assume that the opponent is engaged in ‘eco-social marketing to promote sustainable products’, in addition to its previous services offered under ‘LYST’, and will attribute the mark to the opponent because the term ‘lyst’ stands out with an independent distinctive effect.
The Senate also disagreed with the DPMA’s view that the contested mark formed a conceptual unit because the elements ‘green’ and ‘lyst’ were related in meaning (‘desire for green/environmentally friendly things’). It could not be assumed that the target public would even recognise the word element ‘lyst’ as a Danish word in the specific combination with the English word (green).
Comment
In any case, the Federal Patent Court’s decision is to be welcomed and is correct.
It may well be questionable whether a sign consisting of a purely descriptive English-language term (green) – and this even across goods and services – and a Danish word (lyst) will be perceived by the targeted domestic public as “one coherent word”, with the result that the word element ‘green’ does not recede into the background to such an extent that the overall impression of the mark is characterized solely by the distinctive term ‘lyst’.
Furthermore, it may be questioned whether the green dot in the upper third of the final letter ‘t’ is capable of contributing to the overall impression of the attacked mark, given that it is merely a graphic representation of the descriptive word ‘green’, which, moreover, is simple in design and therefore rather decorative in nature and is frequently used in advertising.
In any event, it is to agree with the view taken by the German Federal Paten Court to the effect that the relevant public, when encountering the marks LYST and in connection with the abovementioned services on the market, will erroneously assume that the services offered under the mark include environmentally friendly services, that is to say, that they will be perceived as the ‘green arm’, so to speak, of the services offered under the mark LYST. It must therefore be assumed that the relevant public will wrongly believe that the services offered under the marks LYST and come from the same undertaking or, at the very least, from undertakings which are economically or organisationally linked.
It is therefore generally not advisable to include trade marks already applied for or registered by third parties in new trade mark applications and to combine them with environmentally friendly terms such as “green”, “eco”, “eco-friendly” or “organic”.