EU and German trademark application
Trademark types, protectability, application strategies - What you need to know about a trademark application
Opposition proceedings before EUIPO and DPMA
What you need to know about opposition procedures before EUIPO and DPMA against the registration of a German trademark or an EU trademark
Declaration of invalidity and cancellation of trademarks at the EUIPO and DPMA
What you need to know about a declaration of invalidity and cancellation of a trademark at the EUIPO and DPMA
What is a trademark infringement?
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.
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).
No trademark infringement: The permitted naming of third-party trademarks in product descriptions
Trademark use for product description
By no means every use of another person's trademark is also a trademark infringement. The use of a trademark (i.e. trademark-like or trademark-identical terms) is permitted under § 23 MarkenG or Art. 14 EUTMR, for example, for the necessary product description.
Example BGH v. 22.1.2009 I ZR 139/07- PCB:
The naming of "pcb" as a common abbreviation for "printed circuit board" is not an infringement of the trademark "PCB-POOL" .
The same applies to customary descriptive statements or in permissible comparative advertising (i.e. if there is no trademark infringement, BGH, judgment of February 4, 2010, I ZR 51/08, para. 41 - Powerball). Trademarks may also be mentioned if this is necessary to describe spare parts. Prerequisite: Such use is not contrary to honest practices in industrial and commercial matters (ECJ, judgment of 11.9.2007, C-17/06, para. 34 - Céline).
Examples:
- The labeling of a food supplement with the name "Enzymix" infringes the food supplement trademark "Enzymax" because the reference to a mixture of enzymes would not be described as "Enzymix" but as ""Enzym-Mix" (OLG Köln v. 25.9.2009 - 6 U 68/09 - Enzymax/Enzymix).
- The use of the designation "H 15" for a prescription drug is not a trademark infringement. This is because the relevant target public (health professionals and pharmaceutical distributors) sees this as a reference to Boswellia serrata frankincense extract (OLG Stuttgart v. 10.6.2010 - 2 U 87/09 - H 15).
Use of third-party trademarks to describe a compatibility or as a spare part
Third-party trademarks are often used to indicate the suitability of a product as a spare part or compatible product. According to Section 23 I No. 3 MarkenG and Art. 14 I c) EUTMR, such use is only permitted under the following conditions:
The named trademark must be unambiguously recognizable as a third-party trademark. It is not permitted to give the impression that the trade mark of the compatible products is one's own trade mark (OLG Frankfurt a.M. v. 03.11.2016 - 6 U 63/16 - Lube-Shuttle)
Compatibility must necessarily require the naming of the trademark (see ECJ, GRUR 2005, 509 para. 35 - Gillette). If, for example, there are technical standards or norms that describe compatibility, the trademark may not be named (see ECJ, GRUR Int 1999, 438 para. 60 - BMW/Deenik; BGH, GRUR 2011, 1135 para. 20 - GROSSE INSPEKTION FÜR ALLE).
The trademark must be used sparingly. Any advertising effect that goes beyond the necessary brand mention must be avoided. A prohibited promotional use would be, for example, the inclusion of the trademark in the browser title (i.e. use in the "title tag") of a website or in the domain (see BGH, judgment of 28.6.2018 - I ZR 236/16 - keine-vorwerk-vertretung). It would also be prohibited to use the figurative mark instead of describing the mark with words (see BGH of 14.4.2011 - I ZR 33/10 - GROSSE INSPEKTION FÜR ALLE).
Permitted trademark use in advertising after "exhaustion"
Another case in which the trademark owner cannot prohibit the resale of goods bearing the trademark or the advertising of these goods is the principle of exhaustion under trademark law.
"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 European Court of Justice 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).
Descriptive terms in advertising as trademark use?
The use of names or words that are perceived as a description of a product is also not a trademark infringement. This is particularly true in advertising.
The case: A manufacturer of egg liqueur advertised five different types of egg liqueur with the illustrated advertisement. Another traditional egg liqueur manufacturer took exception to this. He was the owner of the trademark "Eieiei", registered for spirits. It sent the eggnog producer a warning letter for trademark infringement and demanded that it submit a cease-and-desist declaration with a penalty clause. The egg liqueur manufacturer did so, but did not pay the warning costs that were also demanded. The traditional egg liqueur manufacturer attempted to claim the warning costs in an action before the Düsseldorf Regional Court.
The Düsseldorf Regional Court dismissed the claim. It rejected a claim for reimbursement of warning costs because there was no trademark infringement. The advertising for an egg liqueur with the words "egg, egg, egg, egg, egg" did not infringe the "Eieiei" trademark. The Düsseldorf Higher Regional Court confirmed the decision: The term "Ei, Ei, Ei, Ei, Ei" had not been used to indicate origin: A use indicating origin and thus a use as a trademark was remote. The challenged advertising text "egg, egg, egg, egg, egg" would only describe the product. Eggs are the core ingredient of egg liqueur. The use of descriptive information could not, in principle, constitute trade mark use. The public reading the advertisement would easily recognize that "egg, egg, egg, egg, egg" is a mere factual statement. The fivefold repetition does not change this. In advertising, repetition is a rhetorical stylistic device that has long been known in advertising psychology. The embedding in the advertising also speaks for a mere promotional and non-trademark use: all five liqueurs depicted contain the ingredient "egg". Finally, the name of the own company was also prominently reproduced (made unrecognizable with green color in the above illustration). This also argues against trademark use of "Ei, Ei, Ei, Ei, Ei" (OLG Düsseldorf of 27.04.2023 - 20 U 41/22 - Ei, Ei, Ei, Ei, Ei, Ei).
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 in trademark law.
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 (Euopean General Court, 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).
is not infringed by the use of the figurative sign "PUDEL" (BGH, judgment of 2 April 2015 - I ZR 59/13 - Springender Pudel).
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 (Bundegerichtshof, 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 (Bundespatentgericht, decision of 14. November 2012, 26 W (pat) 503/11 - Vivendi/VIVANDA).
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 European General Court seems to rather assume such a neutralisation here, namely already if the goods are usually also visually perceptible at the time of purchase (European General Court, 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 (European General Court of 18.12.2008, C-16/06 - Éditions Albert René, para. 65) or whether they are marketed together (Bundesgerichtshof, 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).
Exception: likelihood of confusion not required for well-known marks
For the infringement of a trademark with a reputation within the meaning of Sec. 14 (2) No. 3 MarkenG/Art. 9 (2) c) EUTMR, a likelihood of confusion is not necessary, but at least a similarity of signs. Without similarity of signs, there is no trademark infringement even in the case of well-known trademarks. In the case of such marks, it may be sufficient for a trademark infringement if the distinctive character or repute of the mark is impaired. The use of signs that are similar or identical to well-known trademarks is therefore particularly dangerous.
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 (European General Court, 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 (European General Court 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).
Trademark infringement in case of signs with several elements ("combination signs")
Trademarks are often composed of several elements. These can be, for example, several words, words and graphic elements, several graphic elements, several elements of an overall presentation (e.g., butt pocket and "Red Tab" by Levi's, cf. BGH v. 05.11.2008, I ZR 39/06 - Stofffähnchen I) or a combination thereof. A typical example are word and figurative marks. Frequently, trademarks with several elements are also opposed to signs which themselves consist of several elements.
Auch bei Kombinationsmarken zählt Gesamteindruck
Whether such a combination sign is capable of being confused with a trademark or a combination trademark is also assessed according to the overall impression (see European General Court of 12 June 2007 - C 334/05 P - Limoncello; Federal Court of Justice (Bundesgerichtshof) of 26 October 2006 - I ZR 37/04 -Goldhase; BpatG of 25 January 2011, 27 W 533/10 - ROCCO MILES).
Formative (dominant) sign elements of a trademark
If elements of the potentially trademark-infringing sign are dominant, there is a likelihood of confusion between the two overall designations if the respective dominant element is identical (BGH, July 22, 2004 - I ZR 204/01 - Mustang). What is not protectable cannot be distinctive.
However, a descriptive element of a trademark that is not protectable per se cannot have a formative influence on the overall impression of a trademark, because otherwise trademark protection could be obtained for descriptive indications (BGH v. 27.3.2013, I ZR 100/11 - AMARULA/Marulablu, para. 59).
Non-descriptive, but "independently distinctive" components (exception).
A sign component may also have an "independently distinctive position".
- Example European General Court v.6. 10. 2005 - C-120/04 - THOMSON LIFE:
The use of the sign "THOMSON LIFE" infringes - in case of product identity - the trademark "LIFE", because the sign element "THOMSON" is recognizably a well-known (!) company sign (company name). "LIFE" in "THOMSON LIFE" is therefore an independently distinctive sign component. Components which are not formative but "independently distinctive" are the following exceptionsen.
- Example German Federal Court of Justice (BGH) v. 3.4.2008, I ZB 61/07 - SIERRA ANTIGUO, para. 34:
The trademark "SIERRA ANTIGUO" is not infringed by "1800 ANTIGUO". Because only the element "ANTIGUO" was taken over from it. Otherwise, one would inadmissibly assume element protection in trademark law instead of the overall impression (BGH v. 03.04.2008, I ZB 61/07 - SIERRA ANTIGUO, para. 34).
For an independently distinctive position of sign components, special circumstances must be present (e.g. the reputation of a company sign). Otherwise, the rule that the signs in question must be compared as a whole when examining the likelihood of confusion would become the exception ( German Federal Court of Justice, BGH,, judgment of December 5, 2012 - I ZR 85/11 - Culinaria/Villa Culinaria, para. 50).
Well-known trademarks - infringement of trademarks known in Germany (Sec. 14 (2) No. 3 MarkenG) or in the European Union (Art. 9 (1) c) EUTMR)
No likelihood of confusion required for infringement of well-known trademarks!
No likelihood of confusion is required for the infringement of a trademark with a reputation (ECJ v. 23.10.2003 - C-408/01 Adidas-Salomon u. Adidas Benelux/Fitnessworld Trading Ltd). For the infringement of a well-known trademark, the origin function of the well-known trademark does not have to be infringed. However, the attacked sign must be at least similar to the well-known mark (so-called "similarity of signs", cf. BGH v. 26.11.2020 - I ZB 6/20 - RETROLYMPICS; BGH v. 28.06.2018 - I ZR 236/16 - keine-Vorwerk-Vertretung.de). A well-known trademark is already infringed if
- one assumes economic or organizational connections to the trademark owner due to the use of the sign or
- this use of the sign is detrimental to the distinctive character of the mark with a reputation (European General Court, judgment of 23.10.2003 - C-408/01 - Adidas-Salomon/Fitnessworld, para. 27) for those goods or services for which the mark is registered (BGH v. 11.4.2013 - I ZR 214/11, para. 60 - VOLKSWAGEN)
Distinctiveness is particularly exploited when someone, by using a sign similar to a mark with a reputation, attempts to take advantage of the "pull" of the mark with a reputation in order to benefit from its power of attraction without any financial consideration and without making any effort of his own (see ECJ, GRUR 2009, 756 para. 49 - L'Oréal/Bellure; BGH v. 31.10.2013 - I ZR 49/12 - OTTO CAP). It is sufficient that there is a risk that an average consumer for the registered goods of the mark with a reputation could behave differently because of the use of the identical or similar sign (European General Court - L'Oréal/Bellure loc. cit.; BGH - VOLKSWAGEN, loc. cit., para. 61). An infringement of the well-known German trademark 1067586 - "OSCAR"- is in any case not excluded because the use of the term "Oscar" is associated with the annual awarding of the "Oscar statuette" in the USA (BGH v. March 8, 2012 - I ZR 75/10, para. 41 - OSCAR).
Examples of well-known trademarks under Sec. 14 (2) No. 3 German Trademark Act (MarkenG) or Art. 9 (2) c) Union Trademark Regulation
- The German word mark 2001632 "PUMA", see above (BGH, judgment of April 2, 2015 - I ZR 59/13 - Springender Pudel).
- The German word mark 1019711 "VORWERK" (see BGH, judgment of June 28, 2018 - I ZR 236/16 - keine-Vorwerk-Vertretung.de).
- The German word mark No. 30126772 "Otto" (BGH, judgment of Oct. 31, 2013 - I ZR 49/12 - OTTO CAP)
- The German word mark 1067586 - "OSCAR" (BGH, judgment of March 8, 2012 - I ZR 75/10, para. 41 - OSCAR)
- The European Union word mark "VOLKSWAGEN" 703702 (BGH, judgment of April 11, 2013 - I ZR 214/11 - VOLKSWAGEN/Volks.Inspektion)
- The German word mark 1080850 "Swirl" (BGH, , judgment of April 2, 2015 - I ZR 167/13 - Staubsaugerbeutel im Internet)
- "Fisherman's Friend" (LG Frankfurt a.M. v. 28. 4. 2000 - 3/12 O 13/00 - FISHERMAN'S FRIEND)
Example: Infringement of the well-known trademark "Volkswagen
Advertising for a "VolksInspektion" infringes the well-known Union trademark 703702 "Volkswagen". German Federal Court (Bundesgerichtshof): A trademark infringement in the form of a "likelihood of confusion in the broader sense" is possible here if the public assumes economic and organizational links between the parties or if the distinctive character of the well-known trademark is impaired (BGH v. 11.04.2013 - I ZR 214/11 - Volkswagen).
Example of infringement of a well-known German trademark: German Federal Court (BGH) of 31.10.2013 - I ZR 49/12 - OTTO CAP
The distribution of baseball caps with sewn-in label "OTTO" infringes the well-known trademark "OTTO" (German word mark 30126772, registered inter alia for "wholesale and retail services for clothing"). It is sufficient to assume that the goods and services originate from the same company. Large retail companies would also offer their own brands.
Trademark infringement through trademark application
According to settled case law, the filing of a trademark application already creates a first risk of infringing use in relation to the goods and services applied for (Bundesgerichtshof of January 22, 2014 - I ZR 71/12 - REAL-Chips). The initial risk of infringement is eliminated by an "actus contrarius". Therefore, in the case of a first risk of trademark infringement caused by a trademark application, only a surrender of the trademark leads to an elimination of the first risk (Bundesgerichtshof of 23 September 2015 - I ZR 78/14, para. 56 - Sparkassen-Rot/Santander-Rot). The application for a trademark that collides with another's trademark can therefore not only result in (comparatively favorable) opposition proceedings before the Trademark Office. Such a trademark application may already lead to court proceedings for trademark infringement, for example in proceedings for the issuance of an interim injunction.
Trademark infringement through search engine optimization (SEO)
The browser title - defined in the title tag
The browser title of a web page is defined in the HTML title tag and is read by every search engine. It is considered an important factor in search engine optimization. Google often takes the title tag as part of the title in the search result short texts ("snippets").
Keywords are therefore popular in the title tag for search engine optimization. Third-party brands or company logos (e.g. company names) are often placed there, especially if these terms are well-known and popular or if the brands are sold by the company itself. Portals and platforms thrive on attracting traffic for popular brands and companies. They also regularly do this by including these terms in the title tags. This is dangerous.
The starting point of case law for the question of trademark infringement is the snippet itself, not the linked website!
The question of whether an infringement is to be judged on the basis of the short snippet - the case law refers to this as the "hit list" - or whether it is only the complete website to be clicked on under a link that is decisive, has long been decided. In principle, case law has focused on the snippets in cases involving infringing metatags. The fact that the content of the website to be clicked on eliminates the risk of confusion under trademark law is irrelevant (BGH ruling dated May 18, 2006 - I ZR 183/03 - Impuls; BGH ruling dated February 8, 2007 - I ZR 77/04 - AIDOL). This is also assumed to be the case with title tags (OLG Frankfurt am Main, decision dated March 3, 2009 - 6 W 29/09; OLG Frankfurt am Main, decision dated January 10, 2008 - 6 U 177/07). The search result snippet is therefore decisive for the question of infringing use of trademarks and company logos. The case law considers the content of the linked website itself to be irrelevant.
Foreign trademarks in title tags - the "exhaustion principle" in trademark law
Including third-party trademarks in the title tag without the consent of the trademark owner is generally a trademark infringement if the goods protected by the trademark and the goods offered on the search result snippet are at least similar (BGH judgment dated February 4, 2010 - I ZR 51/08 - POWER BALL).
However, according to the so-called "exhaustion principle", it is permissible to include another's trademark in the title tag if the trademark's goods are actually offered on this very website (cf. BGH judgment of 8.2.2007 - I ZR 77/04 - AIDOL). Then the rights of the trademark owner are "exhausted". Prerequisite: The goods offered there were sold for the first time within the EU with the consent of the trademark owner. If, however, the trademark owner first sold the goods to a gray dealer in the USA, for example, and this dealer then sells the goods to another dealer in the EU without the trademark owner's consent, the further sale is prohibited (e.g. BGH of March 15, 2012 I ZR 137/10 - CONVERSE II). Another requirement for exhaustion: The false impression must not be created that one has a special business relationship with the trademark owner, e.g. as an authorized dealer (cf. BGH judgment of 7.11.2002 - I ZR 202/00 - Mitsubishi). Thus, if the trademark is combined with the term "online store" in the title tag (e.g. "LEVI'S ONLINE SHOP), this would be inadmissible. This would falsely suggest that one is an authorized dealer of the trademark owner or that one has a special business relationship as the operator of the trademark owner's online store.
Permitted trademark naming according to § 23 No. 1 and 2 MarkenG /Art. 12 a) and b) Union Trademark Regulation
The use of brand-similar or brand-identical terms to describe products is also permitted. For example, "pcb" as a common abbreviation for "printed circuit board" is not an infringement of the trademark "PCB-POOL", BGH v. 22.1.2009 I ZR 139/07- pcb. The same applies to descriptive statements customary in the trade or in permissible (i.e., if there is no trademark infringement - BGH v. 4.2.2010 - POWER BALL) comparative advertising. Trademarks may also be mentioned if this is necessary to describe Ersat lines.
Foreign company names ("company trademarks") in the title tag
Including other people's company names (company trademarks) in a title tag is generally a violation of a company trademark if the opposing designations and the opposing industries are at least similar. A designation in itself is only protected as a corporate designation against use for at least similar industries. However, outside the similarity of industries, the designation is protected as a name if it is used identically or "almost identically" and "confusion as to allocation" arises (BGH, judgment of November 9, 2011 - I ZR 150/09 - Basler Haar-Kosmetik). What is meant by this is confusion about the bearer of the name.
According to case law, it is sufficient for the company name to serve as a "pilot," i.e., to direct the Internet user to the website of the party using the third-party company name in the browser title (OLG Hamburg, judgment dated March 2, 2010 - 5 W 17/10). It is therefore sufficient for a company trademark infringement if the same services appear in the snippet of the search engine result as those offered by the owner of the company trademark and the Internet user thereby confuses these offers. The content of the respective website itself is then no longer relevant (BGH judgment dated May 18, 2006 - I ZR 183/03 - Impuls; OLG Frankfurt am Main, judgment dated January 10, 2008 - 6 U 177/07).
Disclaimer does not prevent infringement
In order to assess whether a title tag infringes another person's trademark or a company trademark, case law does not focus on the website in question, but on the search result snippet. A disclaimer (such as: "The owner of this website has no business relationship with the owner of trademark X or company Y") on the website itself can therefore no longer avert an infringement. It is uncertain whether a search engine will accept the title tag unchanged. If such a snippet violates third-party trademarks or company logos, the person who has inserted a disclaimer in the title tag cannot claim that he has no influence on the snippet compiled by Google. If you include certain keywords in the title tag, these keywords are your own information and not that of the search engine. One is liable for this without restriction (BGH judgment of 4.2.2010 - I ZR 51/08 - POWER BALL). The right to cease and desist under trademark law and also the right to information do not require any fault anyway.
Author: Thomas Seifried, trademark lawyer Europe and trademark lawyer Germany
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