The German Federal Patent Court recently had to decide whether there was a likelihood of confusion under Article 9 German Trade Mark Act between an earlier word mark registration for the mark “Kit Kat” covering chocolate wafers in class 30 and the later filed word-device mark “KIKA” covering a broad specification of merchandising goods, including confectionary goods.

As regards to visual similarity, the court found that it could not be assumed that the overall visual impression of the later mark was dominated by its word element “KIKA”.  The court found that there was no principle derived from experience that consumers would only pay attention to the word element when perceiving a word-device mark visually, without remembering the device element (see earlier case law by the German Federal Supreme Court (BGH):  BGH GRUR 2005, 419, 423 – Räucherkate; GRUR 2008, 903, 904, No. 24 – SIERRAANTIGUO).

Concerning phonetical similarity, the judges took the view that when assessing the overall phonetical impression of the word-device mark KIKA, there was an assumption of that the word element “KIKA” was the dominant element, since consumers usually regarded the word element as the formative element, being the simplest and shortest type of identification and since consumers generally used the word element when referring to a combined word-device mark  (see earlier case law by the German Federal Supreme Court (BGH):  GRUR 2001, 1158, 1160 – Dorf MÜNSTERLAND; GRUR 2008, 903, 904, No. 25 – SIERRA ANTIGUO).

Overall, the court concluded that even under the assumption of a heightened level of distinctiveness of the earlier mark “Kit Kat”, there was no likelihood of confusion between the device mark “KIKA” and the word mark “Kit Kat” even when used on identical goods, since there was no visual and no conceptual similarity between both marks and only a very remote phonetical similarity, which was not enough to deduce a likelihood of confusion bearing in mind other circumstances of the case.

German Federal Patent Court, order of 15 November 2010, case reference 26 W (pat) 140/09; word mark “Kit Kat” vs. word-device mark ”KIKA”.  The decision can be retrieved from the court’s website by clicking here (PDF).