Date: 3 February 2023
The defendant car company advertised two car models that it planned to launch on the German market with the additions "ES6" and "ES8" respectively. According to the plaintiff, there was a likelihood of confusion with the plaintiff's registered trademarks "S6" and "S8", despite the defendant's company name appearing in the advertising. The plaintiff challenged this with an action for injunctive relief, payment of pre-court legal fees and a declaration of damages.
The 1st Chamber for Commercial Matters found that there was a likelihood of confusion between the two signs due to a mental "association" and thus prohibited the defendant from advertising the models "ES6" and "ES8".
The addition "E" as an abbreviation for "electric/electronic" was very common and therefore did not ensure sufficient distinctiveness. The consumer could assume that the model "ES6/8" was the electric version of the model "S6/8" and that both vehicles were manufactured by the applicant car company.
The company name seen in the advertisement was to be disregarded for the legal assessment of the likelihood of confusion, as it was recognisably a motor vehicle type designation. The court argued that motor vehicle type designations in the automotive sector are to be regarded as independent trade marks in the sense of secondary trade marks and must therefore be compared as a whole.
The judgement is not final and a spokesperson for the defendant announced that they are likely to appeal.