Take it e@sy

In a recent judgment the Austrian Supreme IP Tribunal had to decide on the likelihood of confusion between the older figurative mark "e@sybank" and the younger Austrian figurative mark "e@syCredit".

Whether "e@sybank" is distinctive with respect to banking services and to what extent was already under dispute before the General Court (T-87/00), which found in the affirmative. Additionally, these signs were under dispute before the Austrian Supreme Court in a trade mark infringement action, which however found that "e@sy" as part of the "e@sybank" trade mark for banking services was void of any distinctive character. Accordingly the trade mark owner was unsuccessful with its claim for injunctive relief against "e@syCredit" based on the "e@sybank" trade mark.

In the corresponding revocation action the Austrian Supreme IP Tribunal now had the choice to follow either the assessment of the Austrian Supreme Court or the one of the General Court, and it followed the latter. In view of the Austrian Supreme IP Tribunal, "e@sy" must be considered as a word element as the figurative element of the trade marks in question is negligible as opposed to the distinctive character of the words.

Following the judgment of the General Court, in view of Supreme IP Tribunal the part "e@sy" of the opposing marks is not void of any distinctive character. Additionally, the Supreme IP Tribunal found that the second parts of the marks "bank" and "Credit" were not apt to avoid likelihood of confusion. Therefore, the Austrian Supreme IP Tribunal found that there is likelihood of confusion between "e@sybank" and "e@syCredit" for banking services and declared the trade mark in dispute null and void.

This judgment highlights the unfortunate risk of diverging final decisions in a court system like that presently available in Austria, where the final instances in infringement action and in revocation actions are not identical. However, this up to the top bifurcated system will cease to exist at the end of this year, when the specialized Austrian Supreme IP Tribunal will be dissolved and the Austrian Supreme Court will also have the final say in revocation actions.

Dr Rainer Beetz, LL.M.