Trademark or design? "Use as a trademark"

If someone wants to take action against a trademark infringement with his trademark, he has to jump over an important hurdle: In the case of infringement, the infringing party will often counter the plaintiff's (or licensee's) lack of "trademark use". This is illustrated by an example:

German Federal Court of Justice, Judgment of 14.01.2010, I ZR 82/08 - CCCP

The plaintiff was a licensee of the trademark "CCCP" and sold logo shirts with the imprint "CCCP". The trademark was registered, among other things, for "T-shirts". In her online shop, the defendant sold the following logo shirts bearing the CCCP logo:

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Use as a trademark as a condition of any trademark infringement

A trademark has the main function of identifying the origin of a product from a particular company. The ECJ also regularly emphasises this "indication of origin" function of the trademark (e.g. ECJ, decision of 8 June 2017 - C-689/15 - W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze / erein Bremer Baumwollbörse). The viewer of an imprint on garments must therefore regard it as an indication of the origin of the garment from a particular company and not just as a decorative element. In other words, a designation must also be regarded as a trademark in order to constitute a trademark infringement at all. This is the so-called " use as a trademark". If a sign or designation is not regarded as a trademark, but only as a product decoration, for example, there is no trademark use and therefore no trademark infringement.

The German Federal Court of Justice has therefore denied a trademark infringement in the "CCCP" case: "CCCP" is the abbreviation for "USSR" in Cyrillic characters.  The BGH has assumed that the inscription "CCCP" on the front of T-shirts is seen as a symbol of the former Eastern Bloc states and is seen exclusively as a decorative element and not as an indication of the origin of a particular company. The defendant has therefore not infringed the mark "CCCP" because "CCCP" is not used here at all as a trademark but as a decoration (BGH of 14. January 2010, I ZR 82/08 - CCCP).

The ECJ also clarifies that the mere affixing of a Union trademark on towels as a quality mark ("cotton blossom") is not to be regarded as trademark use (ECJ, judgment of 8 June 2017 - C-689/15, paragraph 51 - W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze / Association Bremen Cotton Exchange)

TIP: The more original and "artificial" a designation is, i.e. the less it describes the product concerned and its respective field of application, the more likely it is to be registrable as a trademark and the stronger it is in the subsequent infringement proceedings.

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Thomas Seifried, Trademark Attorney (Rechtsanwalt) und Intellectual Property Specialist Lawyer (Fachanwalt fuer gewerblichen Rechtsschutz)

Author: Thomas Seifried, Trademark Attorney (Rechtsanwalt) und Intellectual Property Specialist Lawyer (Fachanwalt fuer gewerblichen Rechtsschutz)