“FELIX” is a Community wordmark of Felix Austria GmbH (CTM 4.222.105). This trademark inter alia is registered for “vinegar”, “mustard” and “sauces (condiments)”.
In Austria, this trademark may be qualified as renowned with regard to preserved food and auxiliaries intended for the improvement of the flavour of food. This particularly applies in view of the massive and long lasting (TV-) advertisings for “FELIX” ketchups and other “FELIX” sauces using the slogan “Your name does not have to be Felix in order to love Felix” (see, e.g., Online Standard of 10 October 2005).
An entrepreneur who has been using his pseudonym “Felix Weinstock” for around 20 years now wanted to register his pseudonym as an Austrian trademark inter alia for “vinegar”, “mustard” and “chutneys (condiments)”. Felix Austria GmbH lodged an opposition against this trademark.
The Patent Office and the Vienna Appellate Court (shortly “VAC”) granted the opposition with regard to the above-mentioned goods (VAC, 16 June 2015, 34 R 52/15i). VAC particularly came to the conclusion that “FELIX” and “Felix Weinstock” are confusingly similar because “Weinstock” (which translates to “grapevine”) might not only be understood as a surname, but also as a winegrowing-related addendum to “FELIX”. Pursuant to VAC, this particularly applies with a view to vinegar which, as it is known, is also available as wine vinegar. In summary and in light of the ECJ case law relating to “Thomson life” (C-120/04 as pdf-download), VAC ruled that “Felix” still has an independent distinctive role in “Felix Weinstock”.
This is totally acceptable, even though section 10 para 3 fig 1 of the Austrian Trademark Protection Act (shortly “TMA”) does not grant any trademark-owner the right to prevent others from using (even as a trademark!) his/her name, provided that such use is in line with the fair commercial practice.
Since the above statutory exception, however, only concerns the trademark infringement proceeding, the present FELIX case illustrates a major difference between trademark registration and infringement proceedings. In summary, the present FELIX decision also perfectly fits to the “Leaping Poodle” decision that was just recently handed down by the German Supreme Court.
In a possible subsequent Austrian trademark infringement proceeding, however, the question remains whether “Felix Weinstock” may rely on his pseudonym in order to benefit from section 10 para 3 fig 1 TMA: Namely, and in contrast to “real” names, previous case law basically would require Felix Weinstock to establish that his pseudonym enjoys prior brand-name recognition in Austria (“Verkehrsbekanntheit“).