General Court: No likelihood of confusion between ‘RED RIDING HOOD’ and ‘ROTKÄPPCHEN'

On 16 December 2015 the General Court of the European Union decided that there is no likelihood of confusion between the trademarks "RED RIDING HOOD" and "ROTKÄPPCHEN" since the signs are not similar.

In the underlying case, an application for the Community word mark "RED RIDING HOOD“ was filed with the Office for Harmonization in the Internal Market (OHIM) for goods in Class 33, i.a. for alcoholic beverages (except beers). In May of 2013 Rotkäppchen-Mumm Sektkellereien GmbH (Rotkäppchen-Mumm) filed a notice of opposition against this application for all goods claimed. Rotkäppchen-Mumm based its opposition on its earlier German word mark "ROTKÄPPCHEN" registered also for alcoholic beverages (except beers), as well as on its identical IR-trademark, also with an earlier priority date. OHIM rejected the opposition as well as the following notice of appeal lodged by Rotkäppchen-Mumm. The General Court now confirmed this decision.

In the proceedings, it was undisputed that there is no visual or phonetic similarity between the signs "RED RIDING HOOD" and "ROTKÄPPCHEN". Rotkäppchen-Mumm argued that the signs in question were conceptually similar as they both referred to the same fairy tale. However, the Court found that there was no conceptual similarity, either. It was rather unlikely that the relevant public, namely both German- and English-speaking consumers, would perceive both marks as referring to the same character. This was also due to the fact that the two signs in question were considerably different. The words "Käppchen" and "hood2 lack a common root. Therefore, the average consumer would not perceive them as having the same meaning.

Additionally, the Court found that the words "red", "riding" and "hood" did not belong to the basic English vocabulary which could be considered as understandable for the German-speaking public. According to the Court, even assuming that these words did belong to the basic English vocabulary, the average consumer would still not immediately understand them as having the same meaning as the earlier mark "RED RIDING HOOD". Likewise, English-speaking consumers would not understand the word "‘Rotkäppchen". As a rule, it cannot be assumed that the average consumer necessarily knows the titles of fairy tales in a foreign language.

Due to the fact that the trademarks are registered for identical goods, it would not be surprising if Rotkäppchen-Mumm filed an appeal to the Court of Justice of the European Union (ECJ) against the General Court’s judgement. Whether or not the ECJ upholds the same position as the previous instances remains to be seen. In any case, trademark owners should consider registering obvious translations of their core German trademarks. Upon expiration of the grace period such trademarks could however be challenged for non-use.