Trademark Infringement

When is there a trade mark infringement?

Summary

Principles

Trade mark infringement is the use of signs which are identical or similar to a trade mark and for the same or similar products for which the trade mark enjoys protection.

As a general rule, the more similar the sign used is to the protected trade mark and the more similar the goods or services (products) for which the sign is used and the products for which the trade mark is registered are, the more likely the trade mark infringement is. One must also take into account the distinctive character of the mark and whether the sign has been "used as a trade mark" at all.

 

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Infringing uses

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).

"Use as a trademark"

Prerequisites for any trade mark infringement

The first prerequisite for a trade mark infringement is always the "use as a trade mark" of the respective sign: The potentially trade mark infringing sign must also be perceived as an "indication of origin", i.e. as a trade mark. This is often doubtful, for example, if this sign is regarded as a product design or model designation.

 

Is the sign perceived as a trade mark at all?

The main function of a trade mark is to identify the origin of a product from a particular business. The ECJ also regularly emphasises this "origin function" of the trade mark (e.g. ECJ, Judg. of 8 JUNE 2017 - C-689/15 - W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v. Verein Bremer Baumwollbörse). The viewer of a print affixed to clothing must therefore see it as an indication of the origin of the clothing from a particular undertaking and not merely as a decorative element. In other words, a designation must also be perceived as a trade mark in order for there to be any trade mark infringement at all. This is the so-called "use as a trade mark". If a sign or designation is not perceived as a trade mark, but only as a product decoration, for example, there is no use as a trade mark and thus no trade mark infringement.

The Federal Supreme Court therefore denied a trademark infringement in the "CCCP" case: "CCCP" was the abbreviation for "USSR" in Cyrillic characters.  The BGH assumed that the inscription "CCCP" affixed to the front of T-shirts was to be understood as a symbol of the former Eastern Bloc states and was to be regarded exclusively as a decorative element and not, for example, as an indication of the origin of a particular company. Therefore, the defendant did not infringe the trade mark "CCCP" because "CCCP" was not used as a trade mark at all, but as a decoration (BGH v. 14.01.2010, I ZR 82/08 - CCCP).

The ECJ also clarifies that the mere affixing of an EU trade mark to towels as a quality mark ("cotton flower") is not to be regarded as use as a trade mark (ECJ, judgement of. 8 June 2017 - C-689/15, para. 51 - W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v Verein Bremer Baumwollbörse).

Both for the application procedure and in the case of infringement, the following applies: The more original and "artificial" a designation is, i.e. the less it describes the product in question and its respective field of application, the more likely it is to be registrable as a trade mark and the stronger it is also in the subsequent infringement proceedings.

Examples of "use as a trademark" from case law

Trademark or design?

Anyone who wants to use their trademark to take action against a trademark infringement must jump over an important hurdle: "trademark use." This is a prerequisite for any trademark infringement. This is particularly doubtful in the case of the use of a sign as a decorative element or as a model name.

Example BGH decision of 14 January 2010 - I ZR 82/08 – CCCP

Is the "CCCP" imprint on the T-shirt considered a trademark or design? The plaintiff was a licensee of the action word mark "CCCP" and sold logo shirts with the imprint "CCCP". The trademark was registered for, among other things, "T-shirts." The defendant sold the pictured logo shirt with the sign "CCCP" in its online store.

Example BGH decision of 24 November 2011 - I ZR 175/09 - Medusa (Versace)

Another ruling deals with the use of a sign similar to Versace's "Medusa" marks on a tabletop. The question here was also: Is the sign considered a trademark, i.e., an indication of the table's origin from a particular company, or simply a decoration?

The plaintiff, Gianni Versace S.p.A., is the owner of the internationally registered figurative mark No. 626654 registered for "meubles".

The defendant sold marble mosaics on the Internet, including the motif shown.

The plaintiff claimed that the defendant infringed the rights to its figurative mark by selling the mosaics with the images of Medusa. The defendant, on the other hand, claimed that the figure of the Medusa by Phidias from the Rondanini collection exhibited in the Glyptothek in Munich had served as the model for the mosaics it distributed.

Here, too, the BGH denied trademark use and trademark infringement. This is because the image motifs of the Medusa are only seen as the decoration of the goods. The motif has an exclusively decorative character and is not regarded as an indication of origin from a specific company.

Trademark use in the case of well-known trademarks

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).

Use of colour marks as trade marks

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).

Trademark use of model names - "SAM", "MO" and "FRIDA"

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


Likelihood of confusion

Interaction of distinctiveness, similarity of signs and similarity of products

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).

The role of distinctiveness in trademark infringement

High distinctiveness increases the scope of protection of a trademark and makes likelihood of confusion more likely.


Read here everything you need to know about distinctiveness.

Likelihood of confusion: visual, phonetic or conceptual similarity of the signs.

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).

Image similarity

BUT: The use of the figurative sign "PUDEL" nevertheless infringes the well-known(!) trade mark "PUMA", because a likelihood of confusion is irrelevant in the case of well-known trade marks (see above) and the reputation of the well-known trade mark is exploited here (BGH, judgement of 2. April 2015 - I ZR 59/13 - Springender Pudel).

(copy 16)

is not infringed by the use of the figurative sign "PUDEL" (BGH, judgment of 2 April 2015 - I ZR 59/13 - Springender Pudel).

Likelihood of confusion due to phonetic similarity

- Characters made up of the same letters usually create a similar overall impression. The signs "IPS" and "ISP" are therefore phonetically similar (BGH v. 5.3.2015 - I ZR
161/13 - IPS/ISP).

- Because a possibly unclear pronunciation must also be taken into account, "combit" and "Commit" are phonetically similar.
"Commit" are phonetically similar (BGH v. 12.7.2018 - I ZR 74/17 - combit/Commit).

Ex: No phonetic similarity

- Mainly because of the different vowels there is no likelihood of confusion
between the trade marks "Vivendi" and "VIVANDA" (BPatG v. 14.11.2012 - 26 W (pat) 503/11 -
Vivendi/VIVANDA ).

- Because of the two consonants "n", there is no likelihood of confusion between "Anson's"
and "ASOS" (OLG Hamburg v. 11.12.2014 - 3 U 108/12 - Anson's/ASOS).
Neutralisation of sound similarity by the figurative elements?

The Federal Court of Justice (BGH) only assumes a neutralisation of phonetic similarity or phonetic identity by the figurative elements of the opposing sign if the goods concerned are only(!) bought "on sight" and not also on demand (BGH, judgement of 20.01.2011 ref. I ZR 31/09 - Kappa). This will rarely ever be the case. The ECJ seems to rather assume such a neutralisation here, namely already if the goods are usually also visually perceptible at the time of purchase (ECJ, judgment of 13 September 2007 - C-234/06 P - Muelhens GmbH & Co. KG v OHIM).

Example:
The Beck brewery had a registered figurative mark for beer from 1993 to 1999, in which an upside-down key was depicted:

This trade mark infringed the earlier word and figurative mark "Original Schlüssel Obergärige Handwerkliche Hausbrauerei" of Brauerei Schlüssel. This trade mark was also registered for beer. The signs had the same meaning. The trade mark of Brauerei Beck was therefore cancelled again (BGH, decision of 18.03.1999 - I ZB 24/96 - Schlüssel).

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).

BUT: The use of the figurative sign "PUDEL" nevertheless infringes the well-known(!) trade mark "PUMA", because a likelihood of confusion is irrelevant in the case of well-known trade marks (see above) and the reputation of the well-known trade mark is exploited here (BGH, judgement of 2. April 2015 - I ZR 59/13 - Springender Pudel).

Further example: Mainly because of the different vowels, there is no likelihood of confusion between the marks Vivendi and VIVANDA (BPatG decsion of 14. November 2012, 26 W (pat) 503/11 - Vivendi/VIVANDA).

Ausnahme: Verwechslungsfahr bei bekannten Marken nicht erforderlich (copy 1)

Für die Verletzung einer bekannten Marke i.S.d. § 14 Abs. 2 Nr. 3 MarkenG/Art. 9 Abs. 2 c) UMV ist eine Verwechslungsgefahr zwar nicht nötig, wohl aber mindestens eine Zeichenähnlichkeit. Ohne Zeichenähnlichkeit liegt auch bei bekannten Marken keine Markenrechtsverletzung vor. Für eine Markenverletzung kann es bei solchen Marken schon ausreichen, wenn die Unterscheidungskraft oder Wertschätzung dieser Marke beeinträchtigt wird. Die Benutzung von Zeichen, die mit bekannten Marken ähnlich oder identisch sind, ist also besonders gefährlich.

Mehr Informationen zur bekannten Marke

Trade mark infringement through trademark application

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).

Trademark infringement through offers of original goods

Trademark infringement does not only apply to offers of counterfeit goods. Offering original goods can also be a trade mark infringement if the goods were put on the market without the consent of the trade mark owner. Since the principle of exhaustion applies in trade mark law, it is, for example, a trade mark infringement if goods of a US trade mark owner are offered in Europe without his consent.

Trademark infringement by repackaging and by removing statutory mandatory information

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".

Trademark infringements on the Amazon Marketplace - "attaching" to third-party offers

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).