Prerequisites and consequences of a trademark infringement

A trade mark proprietor may have the use of identical or similar signs for identical or similar products (goods or services) prohibited by a court if there is at least a likelihood of confusion on the part of the public as a result of the use. The law lists examples of potentially infringing uses in § 14 III and IV MarkenG and Art. 9 III and IV UMV. The most important ones are offering and marketing. However, even the use of a sign identical with or similar to a trade mark in advertising may constitute a trade mark infringement (§ 14 III No. 6 or Art. 9 III e) UMV). Accordingly, the use of a trademark-protected designation for a lottery can already infringe a trademark.

Examples:

The application of a beverage manufacturer for a raffle with the designation

"MKG - Mega-Kasten-Gewinnspiel" (Mega Crate Raffle)

was an infringement of the trade mark "MKG", registered for advertising and catering for guests (BGH, decision of 14 October 2010 - I ZR 212/08 - Mega-Kasten-Gewinnspiel).

Well-known trademarks have a broader scope of protection. Use as a trademark is also required for the infringement of trademarks with a reputation. However, according to the case law of the ECJ, it is sufficient for the infringement of a trademark with a reputation (Art. 5 II MRRL, Sec. 14 II No. 3 MarkenG) that the collision sign is perceived as an ornament, but that it is mentally linked to the trademark with a reputation due to the high degree of similarity (BGH, judgment of February 3, 2005 - I ZR 159/02 - Lila-Postkarte; ECJ of October 23, 2003 - C-408/01 - Adidas/Fitnessworld).

The use of a colour in advertising or on goods or their packaging will only exceptionally be construed as a trade mark. In an infringement case brought by the Sparkassen-Finanzgruppe against Santander, the BGH pointed out various shoals: On the one hand, an infringement of Santander's red colour mark depends on whether Santander is "using the colour in a trademark-like manner": the red colour shade would therefore also have to be regarded as an "indication of origin", i.e. it must be regarded as a trademark and not merely as an ornament. The Federal Court of Justice considers use as a trade mark to be conceivable if the retail banking public is used to colours being regarded as indications of origin in isolation (i.e. independently of, for example, a word element "Santander") (Federal Court of Justice, Judgment of 23.9.2015 - I ZR 78/14, para. 94 - Sparkassen Rot/Santander Rot).

However, there are exceptions: For example, the distribution of language learning software in yellow packaging infringed the German colour mark 39612858 "Gelb" for bilingual dictionaries of the Langenscheidt publisher, which was registered by virtue of passing off. The BGH assumed use as a trade mark: On the domestic market of bilingual dictionaries, colours would prevail over the labelling habits. This would radiate to the market of neighbouring products, which included language learning software. Therefore, the colour "yellow" used in this product area would also be understood as a product mark, i.e. as use as a trade mark (BGH, judgment of 18 September 2014 - I ZR 228/12 - Gelbe Wörterbücher).

Numerous terms popular as model names are protected as trademarks. In the fashion sector, female and male first names are popular as model names. However, model names such as "MO" or "SAM" or "FRIDA KAHLO" are extensively pursued with warnings and preliminary injunctions. Use as a trade mark is often doubtful here.

Read here: When exactly is the use of a trademarked term as a model designation a trademark infringement: Trademark infringement by model designation

Whether there is a likelihood of confusion within the meaning of Section 14 (2) No. 2 MarkenG - as is the case with Article 9 (1) No. 2 of the EU Trade Mark Regulation - is to be examined on the basis of the interaction between

•     the distinctive character of the trade mark,
  so that a lower product similarity can be compensated by a higher sign similarity or a higher distinctive character (distinctiveness) of the earlier mark and vice versa (BGH: judgement of 02.02.2012 - I ZR 50/11, para. 22 - Bogner B/Barbie B)
•     the similarity of the signs and
•     the similarity of the products marked with them (similarity of goods or services).

However, if the opposing products are absolutely dissimilar, even a strong sign cannot give rise to a likelihood of confusion (BGH, judgement of 20 January 2011, I ZR 10/09 - BCC).

Likelihood of confusion means,

    visual,
    phonetic or
    conceptual similarity

of the opposing signs. Similarity in only one of these categories may be sufficient for a likelihood of confusion (ECJ judgment of 22 June 1999, C-342/97 - Lloyd/Klijsen, para. 28).

Product similarity - Which goods or services are opposed to each other?

Whether there is product similarity must be examined on the basis of several factors: The nature of the goods, their intended purpose and use, whether the products compete with each other (substitutability) or complement each other (ECJ v. 18.12.2008, C-16/06 - Éditions Albert René, para. 65) or whether they are marketed together (BGH decision of 30 March 2006, I ZR 96/03 - TOSCA BLU, para. 13).

   Ex: For example, "wholesale and retail services for clothing" (meaning the selection of the product range) and clothing itself are similar (BGH judgement of 31 October 2013 - I ZR 49/12 - OTTO CAP).

According to settled case law, the filing of a trademark application already gives rise to a likelihood of first infringing use in relation to the goods and services applied for (BGH GRUR 2014, 382 - REAL-Chips). The first likelihood of infringement is eliminated by an "actus contrarius". Therefore, in the case of a risk of first use of a trademark infringement caused by a trademark application, only an abandonment of the trademark leads to an elimination of the risk of first use (BHG GRUR 2015, 1201, para. 56 - Sparkassen-Rot/Santander-Rot).

If goods that are only sold in packaging by the brand manufacturer are offered unpackaged, e.g. via eBay, this may constitute a trade mark infringement if the image of the brand is damaged (ECJ decision of 12 July 2011 - C-324/09 - L'Oreal SA and others / eBay International AG and others).

A trade mark infringement is also assumed if legally required information about the identity of the manufacturer, the intended use and the composition is indicated on the packaging. This is the case, for example, with cosmetic articles. If such articles are offered without packaging, the quality function of the goods is thereby impaired (ECJ of 12.7.2011 - C-324/09 - L'Oreal SA and others / eBay International AG and others).

For more information on trade mark infringements by repackaging and relabelling, see "Exhaustion principle".

OLG Frankfurt of 27. October 2011 - 6 U 179/10: The subsequent insertion of one's own trade mark can be abusive of rights

Sometimes a provider changes a product page by inserting his own trademark himself. In a case decided by the Higher Regional Court of Frankfurt (judgment of 27.10.2011 - 6 U 179/10), such a provider had subsequently sued a competitor for infringement of its trade mark. Wrongly, according to the Higher Regional Court: There was indeed a trademark infringement per se, because the injunctive relief was not based on fault. However, such an action was an abuse of rights. This provider had deliberately allowed its competitor to fall into the trap. The special feature of the case: For more than 1 1/2 years, both suppliers had sold the same glasses side by side under this product page. If he now added his own brand to the offer, he would at least have to inform his competitors of this, said the Frankfurt Higher Regional Court.

LG Frankfurt of 11 May 2011, Ref. 3-08 O 140/10: Subsequent insertion of one's own trademark can even be anti-competitive

The Regional Court of Frankfurt took an even stricter view in a judgement of 11 May 2011 (Ref. 3-08 O 140/10). The parties to the aforementioned proceedings before the Higher Regional Court of Hamm disputed in Frankfurt whether it was not itself anti-competitive for a party to subsequently insert its trademark into the product page in order to subsequently take action against competitors for infringement of this trademark. The Frankfurt Regional Court had assumed exactly this: If the product page had remained unchanged for five months, one could not suddenly insert a trade mark and use it to take action against competitors under trade mark law. That would be an anti-competitive targeted obstruction.

The decision cannot be generalised without further ado. After all, an Amazon seller must regularly check the product pages. The Higher Regional Court of Hamm assumes that an Amazon trader may not let his product pages out of his sight for longer than three days. The Amazon terms and conditions themselves even stipulate a daily obligation to check.

Is attaching an EAN number to an already existing EAN number anti-competitive?

In a case before the Regional Court of Bochum (judgement of 3.11.2011 - Ref. 14 O 151/11), the question was whether such appending is not itself anti-competitive. The Bochum Regional Court denied misleading information about the supplier: potential buyers would not associate the EAN number with a specific supplier, but rather with a specific product.

Amazon Marketplace traders are also liable for the infringement of a trade mark that was only added to the offer page afterwards

BGH of 3 March 2016 - I ZR 140/14 - Offer manipulation at Amazon

he case: The defendant operated a retailer shop on the Amazon Marketplace. He posted a "finger mouse" for notebooks. Originally, the listing page for this product probably contained the manufacturer's name of the finger mouse, namely "Oramics". Later, the page was changed. Now the offer read:

"Trifoo [...] Finger Mouse [...]".

The plaintiff became the proprietor of the trade mark "TRIFOO" after the offer was made for the first time. She claimed infringement of her trade mark. In any case, the defendant would be liable as a "disturber". The argument was that posting on Amazon was "risk-increasing behaviour". Anyone who offered products on Amazon Marketplace had to constantly expect that their rights would be infringed. This is because they must constantly expect that the offer page will be changed. As a consequence, a marketplace trader must regularly check his offer. If he did not do so, he would be liable for infringements at least as a "Stoerer" (interferer).

The Federal Court of Justice upheld the plaintiff's claim: as is well known, anyone who offers goods on the Marketplace must constantly expect that the offer page will be changed and that he will infringe the rights of others as a result. The consequence: According to the BGH, a Marketplace trader must

    "regularly check an offer posted on Amazon Marketplace [...] to see whether infringing changes have been made".

If he fails to do so, he is liable for infringements.

BGH on the beginning and scope of an Amazon trader's duty to check

Unlike service providers (§§ 8 to 10 TMG) who do not have a general duty to check, the duty of a Marketplace trader to check does not begin only after the indication of an infringement but already with the setting of the offer. The Federal Court of Justice (BGH) also commented on the intervals of the inspection: anyone who leaves his offer unobserved for a fortnight is in any case in breach of his duty to inspect (BGH v. 3.3.2016 - I ZR 140/14 - Angebotsmanipulation bei Amazon, para. 30).