2012/8/28 - 23 Cdo 462/2012 (summary)

Czech Republic – Supreme Court – Decision No. 23 Cdo 4628/208 – August 28, 2012

(infringement of trademark rights)

The Plaintiff, University of Prague, sought before the court of first instance that the Defendant be ordered to refrain from using the name “AMERICAN UNIVERSITY OF PRAGUE”, since it claimed that the Defendant, by using that name, was infringing the Plaintiff’s trademark rights. The first-instance court and the appellate court agreed with each other in their legal conclusions and ruled that no infringement was committed on those trademark rights by the Defendant.

The appellate court held that the essence of assessment of a conflict of a designation with a trademark is a matter of similarity, where the likelihood of confusion must be assessed in general with account taken of all the material circumstances of the case. The crucial perspective is that of an average consumer and his assessment of visual, phonetic and semantic similarity of the designation in respect of its general impression. The appellate court assessed the dominant visual elements of the Plaintiff’s trademark as compared to the use of the designation by the Defendant, and it arrived at the conclusion that the designations used by the Defendant were not, as a whole, capable of confusing an average consumer whatsoever in regard to the origin of the services or to induce an impression of similarity between them and the protected designation of the Plaintiff.

The Supreme Court found the Plaintiff’s extraordinary appeal inadmissible, since in the case in question, the admissibility could only be based on a question of significant legal importance, which was not found in the case.

According to an earlier decision of the Supreme Court of the Czech Republic, the danger of confusion with a similar designation is essential for cases of infringement of trademark rights. A number of factors are relevant for the assessment of the infringement, and such factors must be examined on a case-by-case basis. The danger of confusion is then assessed from the perspective of an “average consumer”, for whom in particular designations that are identical in respect of a significant element of the dominant part of the designation are capable of being confusing.