Facts
Asta Medica AG, a manufacturer of pharmaceutical and cosmetic products, is the owner of the "Kamillosan" trademark registered since 1923. Robugen GmbH, also active in the pharmaceutical and cosmetic field, filed the trademarks "KAMILLAN" and "KAMILLON" in 1993. Asta Medica then requested the cancellation of these two trademarks on the grounds that they were likely to be confused with its own "Kamillosan" trademark. The Commercial Court of the Canton of Bern partially granted Asta Medica's request, declaring the "KAMILLAN" trademark null and void, but rejected the request regarding the "KAMILLON" trademark. Both parties appealed. The DFC ultimately cancelled the registration of both the "KAMILLAN" and "KAMILLON" trademarks due to the risk of confusion with the "Kamillosan" trademark.Considerations
1. According to Art. 3(1)(c) TmPA, a trademark cannot be protected if it is similar to a prior trademark and intended for the same or similar products, resulting in a risk of confusion. The DFC examines this question of risk of confusion as a matter of law. 2. The scope of protection of a trademark depends on its distinctive character. Weak trademarks benefit from a more limited scope of protection than strong and well-known trademarks, which deserve broader protection due to their high distinctive character. 3. The closer the products concerned by the conflicting trademarks, the higher the risk of confusion, and the more the subsequent trademark must clearly differ from the prior trademark. A particularly strict criterion applies when the two trademarks are intended for identical products. 5. To compare verbal trademarks, the overall impression, determined in particular…