For the assessment of trade mark conflicts, parts of signs with little distinctive character can, as a general rule, normally not cause signs to be similar. If, for instance, an earlier mark consists of a descriptive word ineligible for registration and a graphical device, a similarity of the word with a younger word cannot lead to a collision (e.g. Federal Court of Justice, judgment of 6/12/2001 – I ZR 136/99 – Festspielhaus, judgment of 25/3/2004 – I ZR 130/01 – EURO 2000, judgment of 20/9/2007 – I ZR 94/04 – Kinderzeit).
This rule does not apply in the opposite direction, i.e. the owner of younger trade mark cannot argue that the part of his trade mark, which is similar to an earlier mark, shall not be taken into account due to its descriptiveness, if this very part dominates the sign’s overall impression). This has been recognized long ago as so-called “Fläminger practice” for cases in which the part is embedded in such a way in the sign that the average consumer would not perceive the descriptive character (order of 28/5/1998 – I ZB 33/95 – FLÄMINGER, see also order of 28/1/1988 – I ZB 2/87 – ROYALE). Now, the Federal Court of Justice extended this practice by order of July 9, 2015 to cases in which the descriptive character of the part of the sign is perceived (I ZB 16/14 – BSA/DSA DEUTSCHE SPORTMANAGEMENTAKADEMIE).
This new decision is one more reason to select only such marks which have an undoubtedly distinctive part as a dominating element.