NEWS

There is a likelihood of association between the figurative mark “Greenlyst” and the word mark “LYST”

Federal Patent Court judgement of 18/03/2023, 29 W (pat) 59/20 – “Lyst/Greenlyst”

 Contents

Lyst or Lust?

“LYST” means “desire” in Danish and is very similar to the German term “Lust”. The Federal Patent Court doubted that consumers would understand this conceptual content and found that the opposing trade mark had a normal distinctive character, in particular in relation to the services “provision of online advertising space for sellers and buyers for advertising” and “online advertising on the Internet and other worldwide computer networks” or “provision of information relating to the online purchase of fashion goods; marketing and trade in goods and for the conclusion of sales promotions”.

Green is ecological

The word “green” is understood both by the average consumer and by experts primarily in the sense of “ecological, environmentally conscious, environmentally friendly, environmentally compatible, sustainable” for a wide variety of products and services.

Lyst not directly similar to Greenlyst

Even if the specific spelling of the later trademark (capital letters at the beginning, followed by lower case letters) suggests a coherent word, it is not an overall conceptual unit. With the combination of the English “green” and the Danish “Lyst”, it cannot be assumed that consumers perceive an overall concept. The differences between the signs are perceived by consumers as phonetic, visual and conceptual comparison regards.

However, due to the identical adoption of the opposing trademark, consumers will assume that the opponent also deals with sustainable products in its services and will therefore associate the later trademark with the opponent.

To the point

There is not always a likelihood of confusion if a trademark is identically copied into another trademark. It depends on whether consumers assume the same origin of the relevant goods or services or assume an economic link between the suppliers. The Federal Patent Court affirmed this in this case because “Greenlyst” is perceived as a specification of the earlier trademark “LYST”.

Source: document.py (bundespatentgericht.de)

MORE NEWS
Trademark Law

BGH “Mehmet Efendi”: No exhaustion from placing goods on the market in Turkey – association agreement does not extend the EEA

The BGH confirms: Placing EU trade mark goods on the market in Turkey does not trigger exhaustion within the EEA. The EEC–Turkey association framework does not extend the territorial scope of exhaustion; parallel imports into the EEA can be prohibited without the proprietor’s consent.
Trademark Law

BGH “LA BIOSTHETIQUE”: German courts have jurisdiction for targeted online advertising – supplier disclosure may be disproportionate

The BGH aligns international jurisdiction for online trademark infringement with the target market: what matters is where the addressed consumers/traders are located—not the server location or the advertiser’s seat. It also held that disclosure of suppliers/prior owners may exceptionally be disproportionate where the infringement lies solely in the presentation of exhausted goods.
Trade Secrets

CJEU: Infringing “possession” covers stock held abroad—and also indirect possession

The CJEU clarifies that trade mark owners may prohibit “possession” under Art. 10(3)(b) Directive 2015/2436 even where goods are stocked in another Member State—if intended for offering/placing on the market in the protection state. “Possession” also includes indirect control (supervisory/managerial authority).
Trademark Law

General Court: “Eco” may still shape the overall impression despite being descriptive

The General Court clarifies that descriptive elements can still matter in the comparison of signs—especially when placed at the beginning and drawing attention due to their length/position.
AI / Personality Rights

LG Hamburg: AI-generated X post remains attributable to the account operator

The Regional Court of Hamburg held that a continuing defamatory false statement on X remains unlawful under the law of statements even if the post was generated by AI. The account operator can be held responsible for the published content.
AI

Cologne Higher Regional Court: Meta may provisionally use public Facebook and Instagram data for AI training

The Cologne Higher Regional Court rejected an interim injunction against Meta’s announced use of publicly shared Facebook and Instagram data for AI training. In its summary assessment, the court considered the processing likely lawful, in particular on the basis of Article 6(1)(f) GDPR.

Karin Simon
Lawyer
Certified IP Lawyer

Susanne Graeser
Lawyer
Certified IP Lawyer

Uhlandstr. 2
80336 Munich
Germany

Karin Simon
Rechtsanwältin
Fachanwältin für gewerblichen Rechtsschutz

Susanne Graeser
Rechtsanwältin
Fachanwältin für gewerblichen Rechtsschutz

Uhlandstr. 2
D-80336 München