Recent Case Law
inGerman Trademark Law

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CONTENT
Foreword ..................................................................................................................................................... 2I.

Brexit: What steps do you need to take in the event of a ‘no-deal’ scenario? ................................ 3

II. Infringement proceedings ................................................................................................................... 4
1. Injunction proceedings concerning intellectual property .......................................................... 4
Federal Constitutional Court, decisions of 30.09.2018, 1 BvR 1783/17 & 2421/17 –Waffengleichheit im Verfügungsverfahren ............................................................................................ 4
2. Admissible use of a company name in the Amazon autocomplete function .......................... 6
Federal Court of Justice, judgment of 15.02.2018, I ZR 201/16 – goFit .............................................. 6
3. Recall in a claim to injunctive relief ............................................................................................. 8Federal Court of Justice, court order of 11.10.2017, I ZB 96/16 – Produkte zur
Wundversorgung ........................................................................................................................................ 8
4. Don’t look a gift horse in the mouth – potential trademark infringement by refilling
towel dispensers with third-party goods? ................................................................................. 10
Federal Court of Justice, judgment of 17.10.2018, I ZR 136/17 – TORK............................................ 10
5. Exhaustion of rights, impairment of a trademark’s functions and use in the courseof trade .......................................................................................................................................... 12
ECJ, judgment of 25.07.2018, C-129/17 – Mitsubishi u. a./Duma u. a. ............................................. 12
6. Admissible use of a trademark for the internal search function on the Amazon platform... 15
Federal Court of Justice, judgment of 15.02.2018, I ZR 138/16 – Ortlieb .......................................... 15
III. Eligibility for protection, cancellation proceedings, opposition proceedings .............................. 17
7. Referral to the ECJ of a question concerning the extent to which the potential usesof a sign are to be taken into account when assessing its distinctiveness ............................ 17
Federal Court of Justice, court order of 21.06.2018, I ZB 61/17 (Federal Patent Court) –#darferdas? ................................................................................................................................................. 17
8. Indication of geographical origin, distinctiveness of a mark ................................................... 19
ECJ, judgment of 06.09.2018 – C-488/16P – Neuschwanstein ........................................................... 19

FOREWORDAt EISENFÜHR SPEISER, trademark competence isIn this case law review, the trademarks practice grouppooled across the firm in the trademarks practice group.

has compiled and prepared eight current practice-related

The attorneys-at-law and patent attorneys regularly ex-decisions from the last couple of months for you. In addi-change information regarding new developments in casetion to the question of trademark infringement by various

law and practice. Together, the practice group draws on

forms of use and questions of distinctiveness, the courts

a wealth of experience of over 50 years. And our clients

also dealt with the issue of “parity of arms” in temporary

benefit from this.

injunction proceedings, with two widely-noticed deci-

This year's case law review pays particular attention to

In addition, the review also highlights the latest develop-

the forthcoming “Brexit” and the resulting possible sce-

ments on the subject of “recall obligations in injunctive

narios for EU intellectual property rights. In order to en-relief”.

sions handed down by the Federal Constitutional Court.

sure the protection of, for example, your EU trademarks
and Community designs even after Brexit, you will findApril 2019

EISENFÜHR SPEISER

some useful hints in the following.

2

Foreword

I.

BREXIT: WHAT STEPS DO YOU NEED TO TAKE IN THE EVENT OF A
‘NO-DEAL’ SCENARIO?
At the time of going to press (April 2019), the terms of•

If any applications for European Union trade marks‘Brexit’ are still unclear as regards both its date and theor Community designs are still pending when Brexit

question whether there will be an orderly departure of theoccurs, an application for the equivalent British right

United Kingdom from the EU, or whether there will be amust be filed within nine months (but has the same‘no-deal Brexit’ instead.

filing date as the EU application).

In the following, we provide an overview of the various

For detailed and up-to-date information, please refer toconsequences that a ‘no-deal’ scenario will have for yourthe News section of our website.

intellectual property rights.
The key messages are the following:•If, when Brexit occurs, you hold a registered European Union trade mark or Community design, acorresponding and equivalent British right ensues automatically – without the need to file an application or
pay official fees. You do not have to do anything, inother words.

I. Brexit: What steps do you need to take in the event of a‘no-deal’ scenario?

3II. INFRINGEMENT PROCEEDINGS

1. Injunction proceedings concerning intellectual property
Federal Constitutional Court, decisions of 30.09.2018, 1 BvR 1783/17 & 2421/17 – Waffengleichheit im Verfügungsverfahren

BACKGROUND
In practice (particularly that of the District Court in Co-

Two constitutional complaints opposing this legal prac-logne), temporary injunctions have routinely been granted

tice were filed last year. Although primarily relating toeven when the respondent had neither been warned be-press matters, the decisions that were handed down byforehand nor given an opportunity to state its position dur-the Federal Constitutional Court also have ramifications

ing the injunction proceedings. In injunction proceedings

for injunction proceedings concerning intellectual prop-(particularly as practised by the courts in Hamburg), fur-erty.

thermore, the applicant has often been given information
one-sidedly by telephone.

DECISION
The Federal Constitutional Court establishes in the two

The Constitutional Court then states, however, that thedecisions that the aforesaid practice basically violates theapplicant’s urgent need for a fast decision can also be rec-fundamental right to parity of arms in court proceedings –onciled with the adversary’s right to be given a fair hear-

especially as regards both parties being equally able toing if the respondent is only given an opportunity to pro-present facts and arguments.

vide a written statement of position. A hearing does notalways have to be held, in other words.

Granting a temporary injunction without a warning being
issued beforehand, or without an opportunity to state

Informing the applicant alone by telephone, without tell-

one’s position in the proceedings themselves, is thus al-

ing the respondent, is likewise denounced by the Consti-

lowed only by way of exception when there is a specifictutional Court as basically unconstitutional. The content

reason for doing so. The urgency that is required anyhow

of any guidance given by phone must also be docu-

before any temporary injunction can be granted is no suchmented by the court in the case file. Notes such as “ob-reason, in any case. In those cases in which a warning

jections discussed” do not meet this requirement.

had previously been given, it is essential, if an injunction
is to be granted ex parte, that the warning and the application for injunction do not differ in the stated reasons forthe claim being asserted.

4

II. Infringement proceedings / 1. Injunction proceedings concerning intellectual property

ASSESSMENT
The decisions do not mean that a warning must invariably

to avoid situations in which the seised court is prompted

be issued before any application for injunction can beby the Constitutional Court decisions to give the adver-

filed.

sary an opportunity to state its position – for example because of divergence between the stated reasons for the

In the intellectual property field, prior warnings may beclaim in the warning letter and in the application for in-dispensed with in product piracy matters, especially,

junction, or because the court deems it necessary towhere sequestration (seizure of the infringing goods) isdraw attention to the need for further facts and argu-

requested in addition to injunctive relief. Issuing a priorments to be presented.

warning would otherwise alert the party engaged in product piracy and engender the risk of the claim being frus-

However, as regards old cases that were conducted in a

trated by the infringing products being hidden away. Dueway that would now be deemed unconstitutional accord-

to the special urgency in trade fair matters, warnings

ing to the recent decisions of the Constitutional Court, it

might only be possible within the hour (and only verbally

is not possible to challenge temporary injunctions ob-

in some cases).

tained in a such a way by arguing that they were conducted in an unconstitutional manner. This is because the

The main point to be learned for other cases from the de-Constitutional Court also rules that the procedural defi-

cisions of the Constitutional Court, however, is that theciency is basically remedied by opposition proceedings

required warning and the application for injunction mustagainst the temporary injunction. (Eberhardt)

both be drafted very meticulously. Only then is it possible

II. Infringement proceedings / 1. Injunction proceedings concerning intellectual property

5

2. Admissible use of a company name in the Amazon autocomplete function
Federal Court of Justice, judgment of 15.02.2018, I ZR 201/16 – goFit

BACKGROUND
The present case involves goFit Gesundheit GmbH, a lim-

have nothing to do with the plaintiff’s company or the matited company domiciled in Austria, which sells a foot re-it sells, but which instead show similar acupressure or re-flexology mat in Germany under the name ‘goFit Gesund-laxation mats sold by competitors.

heitsmatte’. The mat was developed and designed in
Switzerland and was not sold on the www.amazon.de

The object of dispute in the present case was solely thewebsite either by the plaintiff or by Amazon directly.

use of ‘goFit’ as a company keyword when autocompleting search terms. The further-reaching use of the ‘goFit’

Nevertheless, the autocomplete function used in thesign that resulted in competitor products being included

search box on www.amazon.de suggests ‘goFit Gesund-in the hit list was not attacked (surprisingly), either underheitsmatte’ as soon as the first few letters, e.g. ‘gof’ ortrademark law or competition law, or with any auxiliary‘gofi’, are typed. After clicking on these suggested searchrequest in that regard.

terms, results lists are shown that include offers which

DECISION
The Federal Court of Justice firstly affirms that protection

However, this use of a mark is not inadmissible, and thederived from protection of the full company name under

Federal Court of Justice ruled that there is no infringe-

Section 5 (2) of the Trademark Act (MarkenG) can also bement of the company name, because use of the company

asserted for a part of a company name, if said part is aname in the autocomplete function does not detract fromdistinctive element of the company name, compared tothe company name’s function as an indicator of origin.

the other elements, that is able by nature to establish it-

This is because the keyword suggestions generated byself on the market as a keyword referring to the under-

Amazon point to the plaintiff and to the foot reflexology

taking. The crucial aspect is not whether the short namemat sold by it. Given the absence of any risk of confusion,is actually used on its own as a keyword referring to theno claims can be asserted under trademark law. It is un-company, or whether it has established itself on the mar-important, in the view of the Federal Court of Justice, thatket.

no product originating from the plaintiff is displayed when
one of the keywords in the hit list is selected, because

The ‘goFit’ decision also affirms the established prece-even if the user mistakenly believed, due to the keyword

dent that the computerised analysis of user behaviour

suggestions, that he could purchase the plaintiff’s prod-

and the generation of keyword suggestions on the basis

uct on Amazon, the plaintiff cannot prohibit this underof such analysis are imputed to the search engine opera-

trademark law, in any case not by arguing that there is ator. By disseminating automatic suggestions for searchrisk of confusion. Producing such a misapprehension may

terms, Amazon is thus making use of a mark.

only be impugned under competition law, at most.

6

II. Infringement proceedings / 2. Admissible use of a company namein the Amazon autocomplete functionASSESSMENT
The decision is one of various decisions relating to Inter-

Due to the absence of any request to that effect, the Fed-net search engines, in which trademark proprietors haveeral Court of Justice was unable to examine the real issue

tried to stop Google, Amazon, eBay, etc. using their trade-at the heart of the ‘goFit’ case, namely whether suchmarks and company names as search terms, by arguing‘special circumstances’ existed or not, i.e. whether thethat the notoriety and attributional function of company

selection of hits, or at least the presentation of the hit list,

names and trademarks are being exploited in this way.

constitutes infringing use of a mark. As a basic principle,
however, it is possible to assert claims under trademark

Even after the ‘goFit’ decision, trademark proprietors arelaw in such special circumstances, if it is difficult or im-

still unable to prevent their company names and trade-possible for the user to tell from the hit list whether themarks from being used in searches or in keyword sugges-

goods or services advertised there originate from thetions on the Internet, even when the trademark proprie-

trademark proprietor or from a third party. However, if the

tor’s products are not sold on the respective platform.

other offers are clearly marked as coming from a third
party, then this must preclude any claims under trade-

The ‘goFit’ decision is thus consistent with the estab-mark law based on a risk of confusion, even in such situ-

lished legal practice of the ECJ, according to which trade-

ations (on this point, see the Ortlieb decision that is like-marks are an important element of the system for de-wise discussed in this case law review).

fending undistorted competition, but are not meant toprotect their proprietors from competitive practices. Ad-

Claims under competition law that may exist in a given

vertising on the Internet on the basis of keywords corre-case thus appear to be crucially important in situations

sponding to specific trademarks is one such practice, be-such as the one in the ‘goFit’ case, if a trademark or com-cause its purpose in general is merely to give Internet us-

pany name is entered, and offers by competitors of theers an alternative to the goods or services of that particu-

sign’s proprietor are exclusively or predominantly dis-lar trademark proprietor. If, on the basis of a keyword

played. Unfortunately, the Federal Court of Justice waswhich is similar or identical to a trademark, advertising is

unable to hand down a ruling on this aspect, due to theshown for goods or services that are identical to theabsence of any request to that effect. When well-known

goods or services for which the trademark claims protec-

company names and trademarks are used, it might alsotion, the proprietor of the trademark cannot take action

be possible to assert further claims under trademark law,against such advertising unless special circumstances are

due to impermissible exploitation of another’s reputation.

involved.

(Förster)II. Infringement proceedings / 2. Admissible use of a company namein the Amazon autocomplete function

7

3. Recall in a claim to injunctive relief
Federal Court of Justice, court order of 11.10.2017, I ZB 96/16 – Produkte zur Wundversorgung

BACKGROUND
The First Civil Division of the Federal Court of Justice, re-Many lawyers have voiced serious criticism of those de-sponsible for matters concerning trademarks and compe-

cisions. The competition and trademark law committee oftition law, has conclusively ruled in several decisions on

GRUR (Gesellschaft für Gewerblichen Rechtsschutz undcompetition law that the obligor is also under an obliga-

Urheberrecht e.V.), for example, the most important spe-tion to take active steps to remove the products from thecialist association for IP, published an ‘interjection’ (GRUR

channels of distribution when a prohibitory injunction is2017, 885) in which many of the points were directed

imposed on it. Such steps include measures up to andspecifically against implementing this case law in tempo-

including recall (decisions on Hot Sox (GRUR 2016, 720),

rary injunction proceedings.

RESCUE-Tropfen (GRUR 2017, 208), Piadina-Rückruf(GRUR-Prax 2016, 107) and Luftentfeuchter (GRUR
2017, 823)).

DECISION
This is the first time that a decision on this issue has been

was whether the same principle applied in temporary in-handed down in the field of trademark law.

junction proceedings, in particular. As the injunction is ameans of provisional judicial relief, temporary injunction

The respondent sold wound treatment products throughproceedings may not anticipate the decision in main pro-pharmacies. The applicant obtained a temporary injunction

ceedings, so as not to curtail the legal protection enjoyedfrom the Frankfurt am Main District Court against sales ofby the respondent.

these products, due to infringement of trademark rights. In
the relevant order processing system for pharmacies

Prior to that decision, it had been argued in the legal liter-(‘Lauer-Taxe’), the defendant then marked these trade-ature, above all, that a recall of products – as opposed tomark-infringing products as ‘withdrawn from sale’ andmerely ceasing and desisting – certainly does anticipate astopped selling them. However, it neither recalled thefinal decision in main judicial proceedings, because theproducts nor informed its customers (wholesalers) about

customer of the (alleged) infringer has already been called

the temporary injunction that was granted against it.

upon to return the products, and because the products
have therefore ‘turned to ash’ on the market.

The applicant then made a test purchase from the wholesaler, which then delivered the goods. The applicant

The Federal Court of Justice firstly affirmed the line it had

therefore applied for an administrative penalty to be im-

adopted in the decisions cited above, namely that a claim

posed, due to breach of the temporary injunction. The

to injunctive relief may also include the removal of products

District Court granted the request.

from the channels of distribution, i.e. recall measures. This
also applies when the obligation to cease and desist was

The question, therefore, was whether the order to cease

imposed in temporary injunction proceedings. All that is re-and desist that was imposed on the respondent also in-quired in temporary injunction proceedings, however, iscluded the obligation to recall the trademark-infringing

that feasible and reasonable action be taken to remedy thegoods from the channels of distribution. Another question

disturbance – which means the specific action to be taken

8

II. Infringement proceedings / 3. Recall in a claim to injunctive relief

is subject to a review of proportionality. Thus, the obligor

selling the retained goods for the time being in view ofdoes not have to take any action that is disproportionate,

the temporary injunction. In other words, it must inform

due to such a temporary injunction.

its customers that they should stop selling the goods inquestion, for the time being at least (e.g. until a decision

However, the Federal Court of Justice departed from its

has been handed down in the main judicial proceedings).

previous decisions regarding the question as to what is

The argument is that it is not unreasonable to expect thisreasonable and proportionate when a temporary injunc-from the obligor, because it has a secondary obligation,

tion is imposed. It emphasised that generally there is nounder the purchase agreement concluded with the cus-

anticipation of the main issue, which is basically not per-tomer, to tell the customer that it must likewise expect a

mitted, when the obligor does not recall the goods it sells

temporary injunction against it if it continues to sell thefrom its customers on account of the temporary injunc-

goods.

tion granted against it, but merely requests them to stop

ASSESSMENT
The decision provides further detail on the basic stance

All in all, the precedents set by the Federal Court of Jus-of the Federal Court of Justice in respect of temporary

tice provide a degree of latitude, in practice, as to which

injunction proceedings – it is necessary that action beparticular actions are necessary in a given case if the or-

taken vis-à-vis commercial customers, but informing the

der to cease and desist is to be complied with. It is im-

customers about the temporary injunction, rather than re-portant, therefore, when advising not only the trademark

calling the goods, is all that is required in most cases. The

proprietor, but also the trademark infringer, to consider

fact that customers will often be unwilling in practice tothe action necessary to eliminate the infringement, andstore the potentially infringing goods until the proceed-

to weigh up what exactly must be done in the specificings on the main issue have been completed, and thatcase to conform to the requirements of established legal

telling them to stop selling the goods is tantamount to apractice. (Brecht)

recall, is a different matter entirely.

II. Infringement proceedings / 3. Recall in a claim to injunctive relief94. Don’t look a gift horse in the mouth – potential trademark infringement by refilling towel dispensers with third-party goods?
Federal Court of Justice, judgment of 17.10.2018, I ZR 136/17 – TORKBACKGROUND
The Federal Court of Justice had to rule on whether refill-

The Federal Court of Justice referred the matter back to

ing TORK refill dispensers with paper towels made by athe court of appeal in Munich. In the grounds for the de-different company constitutes trademark infringement.

cision, however, some important principles were set out

The plaintiff was Essity Professional Hygiene Germany

for assessing, under trademark law, the extent to whichGmbH, as holder of the European Union trademark TORK

refilling containers bearing a trademark may involve an in-(word/picture). The defendant was a wholesale company

fringement.

selling paper towel rolls as refills for dispensers andwhich were marked ‘also suitable for TORK dispensers’.
The refill product itself does not bear a trademark (‘noname’).

DECISION
The Munich District Court ruled at first instance that there

determine whether a distinction was made between thewas no trademark infringement. Given the variety ofmarking on the device for dispensing the product and thetowel dispensers in public places, consumers do not infer

marking on the product itself. There is no cause, on thethe origin of refills from the origin indicated on the dis-other hand, to refer the matter to the European Court ofpensers, but view the container and the refill as two sep-

Justice, because the question of the relevant public’s un-arate things. The court of appeal accepted that argument

derstanding is a matter for the courts of the Member

on the whole and likewise ruled that there was no use ofStates to assess.

the trademark. This ruling ran counter to an older decisionof the Federal Court of Justice relating to towel dispens-

The Court clarifies, first of all, that the defendant’s offer-ers (GRUR 1987, 438 – Handtuchspender). The relevant

ing of refills stating ‘also suitable for TORK’ does not con-public had changed its understanding of the matter in re-stitute an infringement of the trademark and is permitted

cent years, and due to other categories of goods, such as

under Section 23 (1) No. 2 of the Trademark Act. How-

printer cartridges, vacuum cleaner bags, coffee capsules

ever, the objective reference to compatibility is an act thatand razor blades, it was now used to the fact that material

objectively aids infringement. To that extent, it is irrele-needed for basic devices no longer had to come from thevant that the defendant does not refill the dispensers it-

original manufacturer (referring, inter alia, to BGH GRUR

self, but only supplies the refills to third parties. Supplying

2015, 1136 – Staubsaugerbeutel im Internet).

the product is sufficient to constitute contributory infringement, also in trademark law, due to the principle of

The Federal Court of Justice disagreed with the reasons

vicarious liability that is taken from criminal law. Refilling

given for negating trademark infringement. It could not be

the dispensers marked with the TORK trademark in suitassumed, without further ado, that the average consum-

is also subjectively consistent with the defendant’s willers in question did not understand the TORK trademark

and serves to promote its sales.

in suit applied to the towel dispensers as an indication of
the origin of the product inside the container. In the case

The Federal Court of Justice then emphasises once again

under consideration, further clarification was required tothe principal function of a trademark as an indication of

10

II. Infringement proceedings / 4. Don’t look a gift horse in the mouth – potential trademark infringement
by refilling towel dispensers with third-party goods?

origin. That function is compromised when it is difficult

did not bear any marks of the defendant, for example, but

for the relevant public to tell whether the product being

was a ‘no-name’ product, instead. Unlike other products

offered originates from the proprietor of the trademark,such as printer cartridges, vacuum cleaner bags or coffee

or from a third party instead. Use of the trademark is as-

capsules, the consumers do not replace the product, ei-sessed on the basis of the presumed expectations of pre-ther, which means that no conclusions about the origin ofcisely that relevant public. The crucial aspect, therefore,

the refill product can be drawn from the refilling process.

is whether the TORK trademark on the dispensers is seen
as an indicator of origin not only for the containers them-This is followed in the Federal Court of Justice judgment

selves, but also for the paper towels inside them.

by points to be taken into consideration in the re-opened
appeal proceedings. It might be the case, for example,

The criteria for determining the supposed understandingthat trademarks play less of a role in everyday ‘away-of consumers are a possible secondary mark on the re-from-home’ products. The diversity of towel dispenser

fills, the conditions in which the refills are replaced, andsystems (e.g. paper towels, cotton towel rolls or jet air

the question as to whether refilling is done by third par-dryers), and the fact that these products are provided freeties or by the consumers themselves.

of charge, could affect the public’s understanding. It will
be necessary to clarify, therefore, whether the public

In this particular case, the court of appeal did not takepays attention to trademarks at all, or to a lesser degree,these criteria sufficiently into account. The refill productwhen using paper towels in public washrooms.

ASSESSMENT
The Federal Court of Justice decision makes it clear, first

In practice, manufacturers of refill products can easilyof all, that the old Handtuchspender decision from theavoid trademark infringement by applying their own sec-

year 1987 is outdated. In future, trademark infringement

ondary trademarks to refill products. The mental link es-

would seem to be the exception rather than the rule. The

tablished between the trademark applied to the con-following criteria are relevant when assessing whether

tainer, and the product inside it, is thus deprived of any

the assumed consumer draws any conclusions from theforce. Use of the refill product free of charge in publictrademark on a dispenser container about the refill prod-

spaces is also an indication that there is no trademark in-

uct inside that container:

fringement. The comments by the Federal Court of Justice suggest that, in such cases, it is unimportant to the•weakened function of the trademark on the con-average consumer from whom the refill product comes.

tainer as an indicator of origin, due to a second-

As the saying goes, ‘don’t look a gift horse in the mouth’.

ary trademark on the refill productconditions and practice of refilling, in the specific

Whether that is always the case must be doubted, how-sector of industry

ever. People get annoyed when they are unable to pull a•refilling by third parties or by consumers

paper towel out of the dispenser, for example, or when•

product diversity in respect of the dispenser con-•tainers•

use in private space or in public space (‘awayfrom-home’)•use free of charge

In this specific case, the guidance given by the Federal
Court of Justice suggests that a trademark infringement
will ultimately be negated.

they end up holding a whole stack of paper towels. In addition to refilling not being done properly, this may also
be a sign that the paper towels are of lower quality. Unsightly soap dispensers covered in liquid soap may resultin dissatisfaction among the public and allow undesirable
conclusions to be drawn about the mark shown on thedispenser. Beside indication of origin, assessment must
therefore take account of the other trademark functions
acknowledged by the supreme court precedents, especially the function as an indication of quality. (Ehlers)II. Infringement proceedings / 4. Don’t look a gift horse in the mouth – potential trademark infringement
by refilling towel dispensers with third-party goods?

115. Exhaustion of rights, impairment of a trademark’s functions and use in thecourse of trade
ECJ, judgment of 25.07.2018, C-129/17 – Mitsubishi u. a./Duma u. a.

BACKGROUND
The plaintiffs are companies in the Mitsubishi Group that

The actions brought before the Commercial Court in Brus-

manufacture and sell forklift trucks, inter alia. They are thesels against such behaviour were dismissed, with the

proprietors of several ‘MITSUBISHI’ word marks and pic-

plaintiffs then lodging appeals. The court of appeal thenture marks registered as European Union trademarks andreferred the following questions, presented in simplified

Benelux trademarks, each for forklift trucks, with which

form below, to the European Court of Justice (ECJ):

they brand their respective forklifts (referred to collectively as the ‘Mitsubishi trademarks’).

(1) Can the proprietor of a trademark forbid a third party
to import its goods without its consent into the EEA,

The defendants, which are undertakings domiciled in Bel-where they have never been traded before, and place

gium, are mainly involved in buying and selling forklift

them on the market there, if, in the customs warehousetrucks, but also sell their own forklift trucks under theirprior to import, the third party has removed all the trade-own marks.

marks applied to the goods (debranding)?

Since 2009, the defendants have bought Mitsubishi fork-(2) Does the decision depend on whether the goods are

lifts from outside the European Economic Area (‘EEA’),

imported under a different sign that is applied by the third

which they bring into the territory of the EEA, where they

party (rebranding)?

are initially placed in a customs warehousing procedure.
Non-Union goods can be stored in customs warehouses(3) Does it make any difference to the answer to these

without having to pay customs duties. In the customs

questions whether the goods can still be identified as

warehouse, the defendants then remove all theoriginating from the trademark proprietor, even after de-

Mitsubishi marks, perform the necessary modifications

branding and rebranding?

of the goods so that they conform to the standards applying in the EU, and apply their own trademarks to thegoods. Only then do they import the goods into the EEA
and place them on the market there.

DECISION
The ECJ answered the first two questions together in thethe goods on the market outside the EEA does not ex-

affirmative.

haust the rights deriving from the European Union trademark. The trademark proprietor has the right to control

It firstly explains the purpose and extent of the exhaus-

the first placement on the market of the goods bearing

tion of rights. A trademark proprietor’s right to prohibit

the trademark.

third parties from using an identical or similar sign for
identical or similar goods is exhausted (i.e. can no longer

In the view of the ECJ, removal of the trademarks pre-be asserted) if the specific goods are placed on the mar-vents the goods from being marked with that trademark

ket in the EEA by the trademark proprietor or with its con-when they are placed on the market in the EEA for the

sent. The ECJ explicitly clarifies at the outset that placing

first time. This thwarts the trademark proprietor’s right to12

II. Infringement proceedings / 5. Exhaustion of rights, impairment of a
trademark’s functions and use in the course of tradecontrol the first placement on the market in the EEA ofmark’s functions of investment and advertising. The in-

the goods bearing the trademark.

vestment function means that the proprietor of the trade
mark has the opportunity to use the mark to acquire or

Furthermore, the various ‘functions of the mark’ are also

keep a reputation that is likely to attract and retain con-affected adversely, in the view of the ECJ, by the de-sumers. The advertising function of the mark consists inbranding and rebranding.

using a mark for advertising purposes in order to informor convince the consumer. The debranding and rebrand-

The main function of the mark is to indicate the origin of

ing performed by the defendants made it more difficult

the goods, and consists in guaranteeing to the consumer

for the plaintiffs to use the mark to acquire a reputationor final customer the origin of the goods bearing theand to tie consumers, and deprived the proprietor of its

mark, in that it allows the consumer to distinguish thoseopportunity to generate a return on its investments.

goods from goods of different origin.
With regard to the requisite use of the mark in the course
Since any action which prevents the proprietor from con-of trade, the ECJ refers to its previous rulings. The con-trolling the first placing of goods on the EEA market nat-

cept of ‘use’ thus includes active conduct only. Action in

urally has an adverse effect on the function of guarantee-

the course of trade requires that the action involves a

ing origin, according to the ECJ, the same also holds truecommercial activity for economic advantage, and not an

for the actions of the defendants.

action performed in the private sphere. The debranding
and rebranding carried out by the defendants is active

With regard to the third question, with which the referring

conduct in the course of trade, because it is aimed at pro-court asks whether it makes any difference to the answer

curing themselves an economic advantage.

to the first two questions, and if so how, if the relevant
average consumer can still identify the goods as

It is irrelevant in this context that the marks are removed

Mitsubishi forklifts, even after debranding, the ECJ states

and new signs are affixed while the goods are still in thein all brevity that that fact is likely to accentuate the harmcustoms warehousing procedure. This is because the de-done to the essential function of the mark as an indicatorfendants were acting with a view to placing the goods onof origin.

the market in the EEA, as is evident from the fact that the
goods were modified by them to comply with EU stand-

The ECJ also rules that removal of the Mitsubishi marks

ards and in fact were also subsequently imported into theand affixing new marks also has an adverse effect on the

EEA.

ASSESSMENT
This ECJ decision comes as rather a surprise. Until now,

According to previous case law, such conduct in a spe-established legal practice in Germany and also in othercific case could merely constitute a breach of rules under

Member States has not deemed the removal of a mark to

the law against unfair competition. In his Opinion on the

be trademark infringement. According to that view, there

referred question, the Advocate General, too, had voted

is no use of the removed mark, because a trademark which

against any trademark infringement and referred to na-

is not applied to goods (any longer) is not being used. The

tional competition law.

argument put forward by the Court of Justice that thetrademark proprietor is deprived of its right to control theThis ECJ decision signifies a major widening of the con-first placing of goods bearing the mark on the EEA market,

cept of use in trademark law, and its significance must

is not quite conclusive for the same reason.

not be underestimated.

II. Infringement proceedings / 5. Exhaustion of rights, impairment of a
trademark’s functions and use in the course of trade13

In some of the legal literature, the view is taken that any

owner of the goods proves in infringement proceedings

removal of the mark anywhere in the world now consti-

that the proprietor does not have the right to prohibit the

tutes trademark infringement if the goods are imported

placement of the goods on the market in the country oflater into the EEA. However, it should be noted that one

final destination. However, given that the ECJ mentions

special aspect of this case is that, when they were de-that rule merely as an aside, it remains to be seenbranded and rebranded, the goods were already in thewhether every case of debranding anywhere in the world

customs warehousing procedure in the territory of thereally will have to be seen now as infringing the rights of

EEA – albeit not yet released for free circulation. Article 9

the proprietor of a European Union trademark when the(4) of the European Trade Mark Regulation applies to pre-goods are subsequently placed on the market in the EU,

cisely such a case and stipulates that the proprietor of aor only in those cases in which the customs warehousing

trade mark may forbid goods being brought into the EUprocedure is conducted on European soil. (Kirschner)

without being released for free circulation, unless the14

II. Infringement proceedings / 5. Exhaustion of rights, impairment of a
trademark’s functions and use in the course of trade6. Admissible use of a trademark for the internal search function on the Amazon
platform
Federal Court of Justice, judgment of 15.02.2018, I ZR 138/16 – Ortlieb

BACKGROUND
The

plaintiff,theFranconian

undertaking

Ortlieb

products made by other manufacturers are also shown inSportartikel GmbH (‘Ortlieb’), is a producer of waterproof

the hit list, in addition to offers for ‘Ortlieb’ products.

bicycle bags, rucksacks and other leisure articles. Ortlieb

These include offers by Amazon directly, as well as offers

has operated a selective distribution system withby third-party suppliers.

selected partners since 2011 and deliberately refrainsfrom selling its products on Internet platforms such as

Ortlieb wants to prevent searches for ‘Ortlieb’ on Amazon

Amazon.

resulting in alternative products also being included in the
hit list, and claims that the registered trademark ‘Ortlieb’

Ortlieb took action against the fact that, when ‘Ortlieb’ isis infringed in such cases.

entered as a keyword in Amazon’s internal search engine,

DECISION
Following rulings by the District Court and Upper District

Amazon used the ‘Ortlieb’ trademark, even if it was not

Court in Munich that the ‘Ortlieb’ trademark was infringed

Amazon but the Internet user who entered the term intoby Amazon, the Federal Court of Justice did not rule on

the search bar. The reason given by the Federal Court ofthe matter but referred it back to the Upper District Court

Justice was that Amazon was responsible for selecting

for a decision.

the keywords used in the algorithm and therefore for the
results as well.

Trademark infringement (Section 14 of the TrademarkAct) exists when a third party uses an identical or similar

Although the Upper District Court has still to concern it-

sign, without the consent of the trademark proprietor, toself with the matter again, the FCJ decision already puts

mark identical or similar goods, thus engendering a risk

Amazon in a stronger position. A trademark infringementof confusion.

need only be affirmed if, when looking at the hit list, thepublic thinks that the products displayed are Ortlieb prod-

According to the Federal Court of Justice, the Upper Dis-ucts, even they actually originate from various othertrict Court did not examine whether the customers could

sellers.

tell from which manufacturers the products offered in the
Amazon hit list originated. Only if they were unable to do

The Federal Court of Justice dismissed the claim that thisso would Ortlieb’s trademark rights be infringed.

constituted comparative advertising under competition
law.

The Federal Court of Justice shared the view, in Ortlieb’s
favour and in line with previous ECJ precedents, that

II. Infringement proceedings / 6. Admissible use of a trademark for the internal search function
on the Amazon platform

15

ASSESSMENT
Amazon may continue to show competing products

transparency to prevent any risk of confusion with alter-

when a visitor to the platform uses the internal searchnative offers, there is no reason to fear any trademark in-function to search specifically for a particular mark. The

fringement.

decisive aspect is that users of the platform can recognise that the products shown are other marks made by

The judgment is all the more annoying for Ortlieb, in con-other manufacturers. The requirements to be met for

trast, because the company operates a selective distribu-

such recognition are not likely to be all that tough.

tion system and does not sell products at all on the Amazon platform, either itself or through specialised dealers.

It would have been interesting to see the outcome if the

The important point for Ortlieb is that it sells high-quality

Federal Court of Justice had to rule on claims based on a

products that need to be explained to consumers, and forwell-known trademark. This might have produced results

which the special customer service and provision of infor-that were more satisfying for the plaintiff.

mation regarding the reparability of the products are of
crucial importance. The decision also shows the limits,

For the Federal Court of Justice, it was irrelevant that thetherefore, to the influence which the proprietor of a trade

function of the trademark as an indicator of origin – themark can exert even in selective distribution systems.

‘navigator’ function of the mark – may be adversely affected even when different suppliers are recognisable (asIt is certainly in the trademark proprietor’s interest, how-the Upper District Court ruled in the previous instance).

ever, that the Federal Court of Justice has clearly ordered

The fact that the products of other manufacturers were

platforms like Amazon to mark alternative offers in suchpresented as real alternatives and as a real search result

a way, when a particular mark name is entered, that they

was deemed by the Upper District Court to be a crucial

are clearly discernible as such.

aspect, and convincingly so. Someone who enters ‘Ortlieb’ when searching for products on a trading platform is

It is interesting to note that, on the same day, the Federal

ultimately searching specifically for that mark, otherwise

Court of Justice ruled in Amazon’s favour in the casehe or she would simply enter ‘bicycle bag’.

brought by goFit, the Austrian producer (case no. I ZR
201/16), which concerned the autocomplete function

This judgment, which makes trademark rights subject toused by Amazon’s search engine. That decision is also

the provisos of competition law, is an ‘all clear’ signal for

discussed in this case law review. (Overhage)

Amazon and other platforms: as long as there is sufficient

16

II. Infringement proceedings / 6. Admissible use of a trademark for the internal search function
on the Amazon platform

III. ELIGIBILITY FOR PROTECTION, CANCELLATION PROCEEDINGS,OPPOSITION PROCEEDINGS

7. Referral to the ECJ of a question concerning the extent to which the potential
uses of a sign are to be taken into account when assessing its distinctivenessFederal Court of Justice, court order of 21.06.2018, I ZB 61/17 (Federal Patent Court) – #darferdas?
Prior instance: Federal Patent Court, decision of 03.05.2017, 27 W(pat) 551/16

BACKGROUND
According to Article 3 (1)(b) of the Trademark Directive

ever, it is not imperative, for distinctiveness to be as-(Directive 2008/95/EC of the European Parliament and of

sumed during the registration procedure, that every con-the Council of 22 October 2008 to approximate the laws

ceivable use is such that the sign is readily understood byof the Member States relating to trade marks), signs

the public as a trademark. It suffices, rather, if there arewhich are devoid of any distinctive character shall not bepractically significant and obvious ways of using the filed

registered as trade marks. This was implemented as na-

sign so that it is readily understood as a trademark by thetional law in Germany, inter alia in Section 8 (2) No. 1 ofpublic (cf. Federal Court of Justice, GRUR 2001, 240, 242,

the Trademark Act. The applicable, largely parallel rule for

SWISS-ARMY; Federal Court of Justice, GRUR 2012,

European trademarks is found in Article 7 (1)(b) of the Eu-

1044, Neuschwanstein). According to ECJ precedents,

ropean Trade Mark Regulation. Lack of distinctiveness ishowever, there is no obligation in the registration proce-assumed in the case of signs which consist of common

dure to extend the examination of distinctiveness to otherwords in the German language or in a well-known foreignuses of the filed trademark besides those that the exam-

language and which are not understood by the relevant

ining office recognises as the most likely, with the help

public as a means of distinction. According to the estab-of its expertise in that field (cf. EuGH (ECJ) GRUR 2013,

lished legal practice of the Federal Court of Justice, how-519, Umsäumter Winkel).

DECISION
In the case under consideration, the German Patent andrelevant publics then understand ‘#darferdas?’ as mean-

Trademark Office (GPTO) had refused registration of theing that the sign wants to provoke thoughts or discussion

word mark application for ‘#darferdas?’, for various kinds

on the topic of ‘Darf er das?’ (Is he allowed to do that?).

of clothing in Class 25, due to lack of distinctiveness. The

Thus, the relevant public see this merely as a design ele-

applicant appealed to the Federal Patent Court (BPatG),

ment and not as an indication of origin, in the sense of awhich then upheld the decision by the GPTO. In the viewtrademark. Similarly conceivable but less probable uses,of the Federal Patent Court, use of the sequence of char-

and also other less significant uses, for example on theacters as clearly visible lettering on the front or back oflabel of a garment, are of no relevance.

clothing items, such as T-shirts, or as recognisable lettering on headwear or footwear, and thus as a motif, is the

The Federal Court of Justice, where the appeal lodged bymost likely way of using the sequence of characters andthe applicant against the Federal Patent Court decision isat the same time a practically significant form of use. The

pending, has now referred the following question to theIII. Eligibility for protection, cancellation proceedings, opposition proceedings / 7. Referral to the ECJ of aquestion concerning the extent to which the potential uses of a sign are to be taken into account whenassessing its distinctiveness

17

ECJ for a preliminary ruling on the interpretation of Arti-

the Federal Court of Justice, this established practice is

cle 3 (1)(b) of the Trademark Directive:

also consistent with the precedents set by the ECJ, according to which there is no obligation during the regis-‘Does a sign have distinctiveness when there are practi-

tration procedure to take into consideration other uses ofcally significant and obvious ways of using it as an indica-

the filed mark, besides the one recognised as the mosttion of origin for the goods and services, even if this is not

likely, when examining for distinctiveness. This is be-

the most likely form in which the sign is used?’cause those statements by the ECJ must be understood,
according to the Federal Court of Justice, as meaning that

The Federal Court of Justice expresses doubts about thewhen assessing distinctiveness, the examination needFederal Patent Court’s assumption that when examining

only be limited to the most likely form of use if the otherfor distinctiveness, it is necessary to consider (only) theforms of use are of no practical importance, or are notform in which the sign is most likely to be used, and that

obvious. There is no justification in refusing registration

any other similarly conceivable, but less likely and practi-

of a trademark due to lack of distinctiveness if there arecally less significant uses are of no relevance. According

practically significant or obvious ways of using the trade-to the established legal practice of the Federal Court ofmark as an indication of origin for the goods or services

Justice, it is not necessary that every conceivable use of

for which trademark protection is claimed. If, however,the sign be that of a trademark, in order for distinctive-the examination for distinctiveness must be based on allness to be assumed during the registration procedure. It

the practically significant or obvious ways in which theis sufficient if there are practically significant and obvious

sign can be used (including use on a garment label, etc.),

ways of using the filed sign in such a way, for goods andthen the filed sign cannot be denied any distinctivenessservices for which it claims protection, that it is readily

at all, according to the rulings hitherto.

understood as a trademark by the public. In the view of

ASSESSMENT
The Federal Court of Justice is referring to the ECJ, for a

Court of Justice, so it can be expected that the question

preliminary ruling, the question whether the examinationreferred will be answered in the negative. The Federal

of distinctiveness must be based on all the practically sig-

Court of Justice has already ruled on several occasions,nificant or obvious ways of using a sign, because if that

however, that signs applied to the front of garments areis the case then the other, less likely, way of using the

not generally perceived as product labels by the relevant

sign as claimed by the applicant, namely on a label, would

public, but only as decorative elements. This type of use,also have to be taken into consideration. If there is such

which the Federal Patent Court then viewed as the one

a use, the consequence is that it cannot be assumed

and only most likely form of use in the ‘#darferdas?’ case,without further ado that the consumer would not see it

might therefore fail to meet the requirements for use as

as an indicator of origin, as with a trademark.

a trademark, also in the sense of genuine use in a waythat preserves trademark rights, with the consequence

That view on the part of the Federal Court of Justice hasthat the applicant would effectively be forced to apply the

not been verified by the ECJ as yet. In the Umsäumter

mark to labels as well, for example, as is indeed common

Winkel decision, the ECJ appears instead to reject thepractice in the clothing industry. When viewed realisti-

Federal Court’s view, but this is not quite clear yet. Duecally, there is no apparent reason, therefore, why thisto the order for referral, the ECJ is now compelled to pro-likely form of use should be totally ignored when examin-vide some clarity in this respect. It is doubtful, however,ing for distinctiveness. (Dekker)

that the ECJ will accept the view taken by the Federal

18

III. Eligibility for protection, cancellation proceedings, opposition proceedings / 7. Referral to the ECJ of aquestion concerning the extent to which the potential uses of a sign are to be taken into account whenassessing its distinctiveness8. Indication of geographical origin, distinctiveness of a mark
ECJ, judgment of 06.09.2018 – C-488/16P – Neuschwanstein

BACKGROUNDThis case related to the eligibility for registration of the

Whereas the German trademark was subsequently de-word mark ‘Neuschwanstein’. Application for the German

nied any distinctiveness for most of the goods and ser-trademark was initially filed by the Free State of Bavaria

vices, in all instances up to the Federal Court of Justicein 2005, with the mark being subsequently registered. In(Federal Court of Justice, court order of 08.03.2012, I ZB

2011, the mark was then filed and registered as a Euro-

13/11 – Neuschwanstein), the EUIPO deemed thepean Union trademark for a large number of goods and‘Neuschwanstein’ mark to be eligible for trademark pro-services, including ones that usually serve as souvenirs.

tection. Both the Cancellation Division of EUIPO and theApplications for cancellation or nullification were thensubsequent instances, namely the Board of Appeal, thefiled against the German and also against the European

CJEU and the ECJ, accepted that decision and dismissed

Union trademark, on the grounds that there were abso-

the application for a declaration of invalidity, and the sub-lute reasons why the word mark ‘Neuschwanstein’ could

sequent appeals filed by the applicant.

not be registered.

DECISION
In its decision, the ECJ agrees with those handed down

‘Neuschwanstein’ is not an essential characteristic of thein the preceding instances and affirms that the

goods and services covered by the mark.

‘Neuschwanstein’ mark is neither a descriptive indication
within the meaning of Article 7 (1)(c) EUTMR, nor does it

Nor, finally, does the name ‘Neuschwanstein’ describe

lack the necessary distinctiveness within the meaning of

the geographical origin of the goods and services in ques-

Article 7 (1)(b) EUTMR.

tion. The fact that goods and services are offered for sale
at a specific location is not a descriptive indication of their

It argues that Neuschwanstein Castle is a museum loca-

geographical origin, because the place where they aretion and not a place which is associated with the manu-

sold is unsuitable as an indicator of the product’s charac-

facture of goods or the provision of services. Nor is thatteristics, qualities or distinctive features of the goods andaltered by the fact that some of the goods can be classi-

services.

fied as souvenir items, because a product’s function as a‘souvenir’, according to the ECJ, is not an objective char-

The ECJ also affirmed the comments made by the CJEU

acteristic that is inherent to the nature of that product.

with regard to distinctiveness, according to which merely

Rather, the buyer will decide on the basis of his or her

associating the trademark ‘Neuschwanstein’ with the rel-respective intentions whether or not to buy a particularevant goods and services allows them to be distinguishedproduct as a souvenir. The ECJ also notes that the merefrom goods and services sold or provided at other com-recollection prompted among the public by the namemercial or tourist locations.

III. Eligibility for protection, cancellation proceedings, opposition proceedings / 8. Indication of geographicalorigin, distinctiveness of a mark19

ASSESSMENT
The decision is primarily concerned with the question as

ECJ with the argument that there is no separate category

to whether a trademark which exhausts itself in the namefor ‘souvenir items’ and that the function ascribed to theof a well-known work of architecture, in this casegoods depends on the customers buying them. Although

Neuschwanstein (Castle), is merely an indication of thethe goods themselves could serve as souvenir items, af-

geographical origin of (specific) goods and services, andfixing the name ‘Neuschwanstein’ to such goods is not

for that reason is excluded from registration.

an essential characteristic describing the goods, according to the ECJ. Furthermore, the castle is not known for

In its ‘Neuschwanstein’ decision (Federal Court of Jus-

its souvenir items, but for its unique architecture. The

tice, court order of 08.03.2012, I ZB 13/11 – Neuschwan-

ECJ acknowledged the distinctiveness of the mark on thestein), the Federal Court of Justice had affirmed that prin-grounds that it is easy for the relevant public, when the

ciple, stating that the name ‘Neuschwanstein’ did notname ‘Neuschwanstein’ is affixed, to distinguish thehave distinctive character for most of the goods and ser-goods from those sold or provided by other commercial

vices covered by the mark, because they are typical sou-and tourist locations.

venirs and are marketed in order to satisfy tourists’ needs
for food, drink and other items offered at tourist sightsee-

The decision means, first of all, that the Free State of Ba-

ing spots. The Federal Court of Justice concluded, ac-varia may continue to use the ‘Neuschwanstein’ mark forcordingly, that in connection with souvenirs and travel

the many goods and services for which it is registered,requisites, the relevant public associated the namenamely for souvenir items as well. All other traders, in‘Neuschwanstein’ only with the building itself, due to thecontrast, must exercise a degree of care, at least, be-fame of the castle.

cause depending on the product get-up, they must be
anxious about committing trademark infringement if they

In contrast, the ECJ bases its judgment solely on the fact

use the ‘Neuschwanstein’ mark. On the other hand, if

that the goods and services in question are everyday con-they merely sell ‘normal’ souvenirs that only depict thesumer goods first and foremost – and in purely dogmatic

castle and are marked with its proper name, ‘Schloss

terms is perfectly correct in that regard. The applicant’s

Neuschwanstein’, then this cannot constitute trademark

objection that the goods are souvenir items that are auto-

infringement. (Holderied)

matically associated with the building is countered by the20

III. Eligibility for protection, cancellation proceedings, opposition proceedings / 8. Indication of geographicalorigin, distinctiveness of a markAUTHORS
Dr. jur. Constantin Brecht. LL.B.
Nicole Dekker
Dr. jur. Julian Eberhardt, LL.M.
Nicol Ehlers, LL.M.
Harald Förster
Yvonne Holderied
Dominik KirschnerDr. jur. Stefanie Overhage

EDITING & LAYOUT
Katrin Hellmann

Further members of our team can be found atwww.eisenfuhr.com/en/findPhoto credits
Title page
Registered trademark symbol,
fotolia.com/jules,
File: #66109180
Trademark word cloud,fotolia.com/ijdema,
File: #47035951
Justitia with blue sky,
iStock.com /liveostockimages,
Stock photo ID: 114161816

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