Recent Case Law
inGerman Trademark Law

2017characterized by IP®

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

Infringement proceedings ................................................................................................................... 3
1. International competence of German courts in cases involving the infringement ofEuropean Union trademarks and German trademarks .............................................................. 3
Federal Court of Justice, judgment of 09.11.2017, I ZR 164/16 – Parfummarken ............................. 3
2. Trademark for checking the production process ........................................................................ 5
European Court of Justice, judgment of 08.06.2017, C-689/15 – Baumwollblüte ............................ 5
3. Interpretation by the market when assessing descriptive elements of a word mark;likelihood of confusion when there is phonetic or visual similarity, but differencesin the conceptual content of the sign ........................................................................................... 7
Federal Court of Justice, judgment of 02.03. 2017, I ZR 30/16 (Hamm Upper District Court) –Medicon-Apotheke/MediCo Apotheke .................................................................................................... 7
4. Perceived use of a sign as a trademark ....................................................................................... 9Federal Court of Justice, judgment of 03.11.2016, I ZR 101/15 – MICRO COTTON ......................... 9
5. Geometric (textile) pattern is usually decorative and not distinctive as a trademark ........... 11Federal Court of Justice, judgment of 10.11.2016, I ZR 191/15 – Sierpinski-Dreieck ..................... 11

II. Eligibility for protection, cancellation proceedings, opposition proceedings .............................. 13
6. Requirements to be met by use so that the trademark is preserved under
Section 26 (1), (3) sentence 1 MarkenG ..................................................................................... 13
Federal Court of Justice, court order of 11.05.2017, I ZB 6/16 – Dorzo-Vision ................................ 13
7. Well-known MEISSEN trademark for porcelain fails to assert itself against MEISSEN
sanitary products ......................................................................................................................... 15
European Court of Justice, judgment of 26.07.2017, C-471/16P – MEISSEN .................................. 15
8. ‘Stadtwerke Bremen’ can be registered as a word mark ......................................................... 17
Federal Court of Justice, court order of 09.11.2016 – I ZB 43/15 – Stadtwerke Bremen ............... 17

FOREWORDAt EISENFÜHR SPEISER, trademark competence isEuropean Union Intellectual Property Office (EUIPO),

pooled across the firm in the trademarks practice group.

now already in its fifth edition.

The attorneys-at-law and patent attorneys regularly exchange information regarding new developments in caseIn this case law review, the trademarks practice group

law and practice. Together, the practice group draws on

has compiled and prepared eight current practice-related

a wealth of experience of over 50 years. And our clientsdecisions from the last couple of months for you.

benefit from this.
The courts dealt primarily with the distinctiveness of
The most up-to-date case law is also taken into accountsigns, their use as trademarks, and uses which maintainin the Commentary on European Trade Mark Regulation

protective rights. Other cases related to the international(Eisenführ/Schennen, UMV, Carl Heymanns Verlag 2017),

competence of German courts.

published by EISENFÜHR SPEISER in cooperation withDetlef Schennen, Chairperson of a Board of Appeal at the2April 2018

EISENFÜHR SPEISER

Foreword

I. INFRINGEMENT PROCEEDINGS

1. International competence of German courts in cases involving the infringementof European Union trademarks and German trademarks
Federal Court of Justice, judgment of 09.11.2017, I ZR 164/16 – Parfummarken
BACKGROUND
In cross-border cases (for example when infringing goods

example to bring an action where its headquarters are lo-

are supplied from one EU Member State to another), thecated, or to utilise the benefits of a particular judicial sys-first step is to establish in which Member State the courtstem). In many cases, the defendant side has an interest

have international competence. A flexible choice of ven-in being sued at its domicile.

ues is interesting from the perspective of the plaintiff (forDECISION
The plaintiff, Coty, is one of the biggest manufacturers

trademark regulation (EUTMR) stipulates that, in princi-of perfume in the world, selling perfumes under trade-

ple, an action must be brought in the country where themarks such as ‘Davidoff’’, ‘Joop!’ ‘Jil Sander’ and ‘Cal-

defendant is domiciled (Article 97 (1) EUTMR). Alterna-

vin Klein’. The defendant trades in cosmetic products

tively, according to Article 97 (5) EUTMR, it is possible

and is domiciled in Italy. Its website is also available in

to bring an action in any Member State in which an act

German. A third, German, company sent an enquiry toof infringement has been committed or threatened.

the defendant about specific products. The defendant
sent the third party an email containing information

The active behaviour of the infringer is the essential cri-about stock levels and prices of the requested products.

terion for an act of infringement. The criterion focuses

The third party placed an order, the products wereon the Member State in which the incident forming thehanded over in Italy to a transport company commis-

basis of the alleged infringement took place, and not thesioned by the third party and were transported to Ger-

place where the consequences of the infringement en-

many.

sue.

Coty sought an injunction against the Italian company

The European Court of Justice had ruled shortly before

due to infringement of its trademark rights.

this judgment that when an offer is published on theseller’s website, the place of infringement is the place

The Federal Court of Justice ruled that the action was

where the process of putting the offer for sale online

inadmissible insofar as it was based on rights deriving

was initiated by the seller (ECJ, GRUR 2017, 1120 –from European Union trademarks. On the other hand,Nintendo/Big Ben).

the action was admissible in respect of the rights deriving from an international trademark that extended to

The Federal Court of Justice ruled accordingly that, inGermany (but not to the entire EU).

the case under consideration, the offering of a website
in German, also with an integrated online shop targeting

On the question as to whether the courts of a particularcommercial customers in Germany, occurs at the place

Member State have ‘international competence’, the EU

where the defendant initiated said publication, which in

I. Infringement proceedings / 1. International competence of German courts in cases involving theinfringement of European Union trademarks and German trademarks

3this case is Italy. By the same token, the sending of

the latter, a person domiciled in an EU Member State may

price lists to Germany was also initiated in Italy.

be sued in another Member State if a ‘harmful event occurred’ there (Article 7 (2) of the Regulation). This in-What makes the decision particularly interesting, how-cludes, according to established case law, not only theever, is that the competence of the courts is assessed

place where the damage occurred, but also the place

differently where the infringement of a German trade-

where the event causing the damage occurred.

mark is involved (or in the present case, an international
registration that has been extended to Germany) – be-

In the present case, the place of the event causing thecause in this case, it is not the special rules in the EUTMR

damage is in Italy, but the place where the damage oc-

governing international jurisdiction that apply, but thecurred is in Germany. This means it is possible to sue ingeneral rules of the Brussels Ia Regulation. According toGermany for infringement of the national trademark.

ASSESSMENT
The decision limits the choice of venue for claims underalso consider how trademark rights can be asserted. It

trademark law in cross-border disputes, in accordance

may therefore make sense to have national Germanwith ECJ case law. The case also shows clearly that, duetrademarks in addition and parallel to a European Union

to the divergent rules applying to EU trademark and na-

trademark, in order to have a place of jurisdiction that is

tional trademarks, corporate trademark strategies should

more likely to be in Germany. (Brecht)

4

I. Infringement proceedings / 1. International competence of German courts in cases involving theinfringement of European Union trademarks and German trademarks

2. Trademark for checking the production process
European Court of Justice, judgment of 08.06.2017, C-689/15 – Baumwollblüte
BACKGROUND
According to Section 26 MarkenG [German Trademark

for which they are registered. In the ‘Baumwollblüte’ de-Act] and Article 15 EUTMR, trademarks are subject to an

cision, the courts of instance had to consider under which

obligation to use the mark, and they must have been put

conditions a registered trademark is being used specifi-

to genuine use by their proprietor, or by a third party withcally as a trademark, and therefore maintaining trademark

the consent of the proprietor, for the goods or services

rights, and not merely as (some other) label of quality.

DECISION
These proceedings concerned the picture markused as a trademark, or whether it merely functions as
a label of quality.
The core issue of the case is whether the plaintiff andthe defendant used the ‘cotton flower’ picture mark as
a trademark and/or as an indicator of quality. The Düs-

which had been used by various undertakings, before its

seldorf Upper District Court considers use as a label ofregistration as a trademark, as an indication of the goodquality to be a possibility, so it stayed the proceedings

quality of cotton products. After the Bremen Cotton

and referred the following question, inter alia, to the Eu-

Exchange Association (Verein Bremer Baumwollbörse –ropean Court of Justice:

VBB) had registered the trademark, it concluded various
licensing agreements with its members. These allowed

Did the plaintiff use the mark as a trademark at all –the licensees to use the cotton flower sign as awhich is the requirement to be met if the trademark is

guarantee of the quality of their goods, subject to

not to be cancelled in accordance with the counter-occasional checks by the trademark proprietor.

claim – and not merely as a label of quality?

The defendant, W.F Gözze Frottierweberei, marked its

The European Court of Justice answered that question

products with a similar sign likewise representing a cot-

as follows:

ton flower, but without having acquired a licence beforehand from VBB. For this reason, VBB brought an in-

The essential function of an individual EU trademark (likefringement action against W.F. Gözze Frottierweberei,

the ‘cotton flower’ mark) is to guarantee to the market

which responded with a counterclaim for revocation ofthat the goods are produced under the control of a sin-

the trademark. It argued that the trademark is purely de-gle undertaking which is responsible for the quality. Alt-

scriptive for the product being marketed, is not an indi-hough the trademark may have other functions, namely

cation of origin and for that reason has not been put tocommunication, investment and advertising functions,“genuine” use. After the counterclaim had been dis-for example, it can also be used as an indication of qual-

missed, W.F. Gözze Frottierweberei lodged an appeal atity. However, use which preserves the right to use a

the Düsseldorf Upper District Court, which affirmed that

trademark is only proven when the essential function ofthere is a likelihood of confusion between the twoan individual EU trademark is still being performed. If

marks. However, the Düsseldorf Upper District Court

that is not the case, the trademark is revoked unless

was uncertain whether the cotton flower is (also) being

there are proper reasons for non-use. In the case underI. Infringement proceedings / 2. Trademark for checking the production process5consideration, the market sees the ‘cotton flower’ trade-

According to a further question referred by the Düssel-

mark merely as a sign which guarantees the high quality

dorf Upper District Court, the European Court of Justiceof the goods. However, no conclusions about the origin

had also to examine whether the ‘cotton flower’ trade-of the product are made. The only function of the ‘cotton

mark had to be revoked on the grounds that the licensor

flower’ is that of a quality label, whereas the essential

had only rarely carried out quality controls, since thisfunction of a trademark, namely the guarantee of origin

meant that quality could not be fully guaranteed by VBB

for a product, is not fulfilled. The trademark was not be-

and thus that the essential function of the trademark,ing used by VBB in a way that ensured that rights werenamely the guarantee that the goods are produced un-

maintained.

der the control of a single undertaking, is performed only
to a qualified extent. The European Court of Justice

Following dismissal of the case by the Düsseldorf Upper

commented that the management and use of the trade-

District Court, it was therefore necessary to clarify themark is irrelevant for its revocation, because only a risk

further-reaching question of whether the VBB is seen byof deception or a breach of the regulations at the time

the public as the producer of all the cotton productsof registration is sufficient to revoke a trademark appli-

made by its members and bearing the ‘cotton flower’cation because of the risk of deception it causes.

quality label. If this is not the case, the trademark must
be revoked.

ASSESSMENT
The ECJ judgment has provided further clarification ofdate of filing, it may therefore be necessary to file an

the function of trademarks and has affirmed, in particu-

application for an EU certification mark, to ensure thatlar, that use merely as a label of quality is not sufficient,

use preserving the trademark can also be made after ex-

save for a few exceptions, to show that an EU trade-piry of the protective period allowed for genuine use tomark is being used in a way which preserves the trade-be shown. (Förster)mark rights. If the type of use is still unresolved at the6

I. Infringement proceedings / 2. Trademark for checking the production process3. Interpretation by the market when assessing descriptive elements of a word
mark; likelihood of confusion when there is phonetic or visual similarity, butdifferences in the conceptual content of the sign
Federal Court of Justice, judgment of 02.03. 2017, I ZR 30/16 (Hamm Upper District Court) –Medicon-Apotheke/MediCo ApothekeBACKGROUND
The plaintiff brought an action on the basis of a German
trademark, ‘Medicon-Apotheke’, which is registered for‘services of a pharmacist’. The defendant operates apharmacy, under the name ‘MediCo Apotheke’, in ahealth centre by the name of ‘MediCo’. It also operates a
website under the ‘MediCo-Apotheke’ domain, on which
it uses the ‘MediCo Apotheke’ sign.

Whereas the courts of lower instance ruled out any riskof confusion, the appeal filed by the plaintiff before theFederal Court of Justice was successful. The appeal resulted in the previous appeal judgment being set aside
and referred back to the Upper District Court in Hamm,
which now has to produce further findings of fact to affirm infringement of the trademark.

The plaintiff sought an injunction against the defendant,
mainly due to the likelihood of confusion between the‘Medicon-Apotheke’ and ‘MediCo Apotheke’ signs.

DECISION
In the first part of the judgment, the Federal Court of Jus-

is a reference to ‘consulting’. The ‘con’ element ex-tice addresses the distinctiveness of the ‘MediconApotheke’ trademark.

presses that the services provided by the plaintiff are an‘innovative consulting concept in respect of medical

The Federal Court of Justice complains that the lower court

preparations’, as the plaintiff had presented in thecourse of the proceedings.

of appeal wrongly assumed that the trademark in suit,‘Medicon-Apotheke’, had very little or far below average

The Federal Court of Justice ruled that this is not thedistinctiveness. The reason given by the lower court of appeal was that the market viewed the trademark in suit as a

crucial aspect, even if the plaintiff did offer an innovative
consulting concept. When assessing the distinctivenessconcatenation of descriptive and therefore non-distinctive
elements – ‘Medi’, ‘con’ and ‘Apotheke’.

of an element of a sign, the way in which the publics
confronted with the trademark understand it is the only

The only point of agreement was that the ‘Apotheke’

aspect of relevance, and not what the trademark proprietor was thinking when it created the sign. The averageelement is nothing but descriptive. However, unlike thelower court of appeal, the Federal Court of Justice didconsumer confronted with the services of a pharmacists
does not see any reference to ‘consulting’ in the ‘con’

not view the ‘Medi’ element as being purely descriptive.

element.

Above all, however, the Federal Court of Justice focused on the allegedly descriptive content of the ‘con’

The second part of the judgment focuses on the question of the similarity of the ‘Medicon-Apotheke’ andelement. The appeal court was of the opinion that ‘con’‘MediCo Apotheke’ signs.

I. Infringement proceedings / 3. Interpretation by the market when assessing descriptive elements ofa word mark; likelihood of confusion when there is phonetic or visual similarity, but differences in
the conceptual content of the sign

7

The court of appeal had taken the view that, when assessing the likelihood of confusion, the similarity between

In the third part of the judgment, the Federal Court ofJustice also ruled that, when it re-opened appeal pro-the ‘con’ and ‘Co’ elements is the only relevant aspect, due
to the purely descriptive elements ‘Medi’ and ‘Apotheke’.

ceedings, the lower court of appeal also had to reconsider the question of the ‘MediCo’ sign being used as aSince the ‘Medi’ element is not purely descriptive, in the

trademark. In other words, the court still has to clarify
whether the defendant used the ‘MediCo’ sign to des-opinion of the Federal Court of Justice, it, too, must be
taken into consideration. The Federal Court of Justiceignate its services, or merely as a company name. The
Federal Court of Justice was critical regarding whether,also clarified that the relevant public does not generally
tend to analytically dissect a sign.

on the basis of established case law, the services inquestion were designated with the ‘MediCo’ in a man-

In contrast to the view taken by the lower court of ap-

ner beyond normal business operations, particularly
since ‘MediCo’ is also interpreted as a name for a healthpeal, it was necessary in this case to compare the ‘Medicon’ and ‘MediCo’ elements. These are not only pho-centre.

netically but also visually similar.

Another issue to be clarified is the applicability of theprotective barrier imposed by Section 23 No. 1 of theContrary to what the court of appeal had assumed, the‘con’ element could not be ascribed a specific, clearly

Trademark Act (MarkenG), according to which a third
party is allowed to continue using its own name in spite

discernible meaning (in this case, ‘consulting’). So although the Federal Court of Justice reaffirmed onceof it being protected as a trademark. It remains to be
seen whether this rule will still apply to trade names fol-again its established legal practice regarding the exception where a likelihood of confusion may have to be de-lowing implementation in German trademark law of thecurrent Trademarks Directive of the European Parlia-

nied, despite phonetic or visual similarity, due to a clear
and readily discernible difference in the conceptual con-ment. The Directive stipulates that use is limited to thenames of natural persons, because these cannot betent of the signs, it nevertheless ruled that this case did
not constitute such an exception. The rule still applies

freely chosen, in contrast to trade names.

that visual, phonetic or conceptual similarity is sufficient
to affirm a similarity of signs.

ASSESSMENT
Although the judgment does not contain anything new

protection cannot usually create a likelihood of confusionand surprising in its headnotes and associated com-(in this case the ‘Apotheke’ element, but not the purely

ments, it does re-state in a convincing manner the basic

descriptive ‘Medi’ element).

principles by which the distinctiveness of a sign is to beestablished. One of those principles is that the perception

An interesting question to be clarified by the court of ap-of the relevant publics is what counts, and not what thepeal concerns use of the ‘MediCo’ as a trademark, as op-

user of a trademark sees in the sign.

posed to use of a sign as a mere reference to a company.

The Federal Court of Justice also reaffirmed that the clear

As regards the applicability of the protective barrier im-

meaning of a particular element of a sign may neutralise

posed by Section 23 No. 1 of the Trademark Act, we refer

the similarity of marks in exceptional cases, but rightly

to further forthcoming changes to the Act. The adaptation

denied that such an exception existed in the case underof national trademark law in accordance to the EU Trade-consideration.

marks Directive (2015/2436) must be completed by theMember States by 14 January 2019, for all but one of theIt was also reaffirmed by the Federal Court of Justice that

Articles. (Overhage)elements in compound names which are ineligible for8

I. Infringement proceedings / 3. Interpretation by the market when assessing descriptive elements ofa word mark; likelihood of confusion when there is phonetic or visual similarity, but differences in
the conceptual content of the sign

4. Perceived use of a sign as a trademark
Federal Court of Justice, judgment of 03.11.2016, I ZR 101/15 – MICRO COTTONBACKGROUND
A precondition for trademark infringement is that the ac-

is whether the sign is used in such a way that the relevant

cused sign is used ‘as a trademark’. According to what is

public sees it as an indication that the designated productnow established case law, this requires that use of theoriginates from a specific undertaking. In the case of reg-sign entails infringement of one of the protected func-

istered trademarks comprising artificial words with a de-tions of a trademark. The primary issue is generally

scriptive ring, the question raised is whether and in which

whether the function of the trademark as an indicator of

circumstances third parties are using a sign as a trade-origin is infringed. Put another way, the crucial question

mark when they adopt it for their own goods.

DECISION
The plaintiff is suing primarily on the basis of a registered

back to the court of appeal. Contrary to the view taken by

EU trademark, ‘MICRO COTTON’ (a word mark). Saidthe Upper District Court, use as a trademark is not ruled

trademark is registered, inter alia, for textile towels andout by the fact that the word ‘Microcotton’ is embedded

bath towels. The defendants trade in towels with the fol-between the number ‘2’ and the word ‘Handtücher’ (tow-lowing get-up:els) in the accused get-up. Given its size and placement,‘2 Microcotton Handtücher’ is designed as a heading. The
relevant public generally sees such headings as an indication of origin.
The Federal Court of Justice also disagrees with the view
taken by the Upper District Court that ‘Microcotton’ ispurely descriptive. The court of appeal had establishedthat, although ‘Microcotton’ is an artificial word, the meaning that it is a particularly fluffy and voluminous cotton towels is evident to the relevant public, according to the courtof appeal, from the parallels with the well-known expression ‘microfibre’. In the view of the Federal Court of Justice, ‘Microcotton’ may have a descriptive ring, but it is an
artificial word with creative content of its own that cannot

The Upper District Court in Hamburg, as the court of ap-

be denied any distinctiveness whatsoever.

peal, had dismissed the trademark infringement action
mainly with the argument that the defendants were not

The court of appeal had also based its judgment on the ar-using ‘Microcotton’ as a trademark. The court of appeal

gument that ‘Microcotton’ had been used as a descriptive

also granted a counterclaim to revocation of the trade-term by third parties before the actions sued against in thismarks being sued upon, due to lack of distinctiveness,case. As a result, the relevant public understood the ex-among other reasons.

pression as a descriptive one. The Federal Court of Justicedisagreed with that view and referred to the fact that the

However, the Federal Court of Justice has set aside theplaintiff had successfully taken action against such third-

appeal judgment as erroneous and referred the matter

party use.

I. Infringement proceedings / 4. Perceived use of a sign as a trademark

9The conclusion drawn by the Federal Court of Justice

A procedural that the Federal Court of Justice had to deal

in that respect was that the sign was used as a trade-with was that, in the course of the appeal proceedings,

mark. It was also wrong of the Upper District Court toinsolvency proceedings had been opened against the as-

grant the counterclaim for revocation of the trademark

sets of defendant 2), the supplier of defendant 1). This

sued upon, because for the reasons stated, the trade-caused the proceedings against defendant 2) to be inter-mark did not lack distinctiveness. Given that the Upper

rupted. Irrespective of that aspect, the Federal Court ofDistrict Court (as a logical consequence, in its own

Justice considers a partial judgment in infringement pro-view) had not yet addressed issues of importance forceedings to be admissible in respect of defendant 1), be-the decision, in particular the likelihood of confusion, it

cause the two defendants could also have been sued

was therefore necessary to refer the matter back toseparately and individually and therefore were not ‘man-the court of appeal.

datory joined parties’ under the Code of Civil Procedure.

ASSESSMENT
The decision shows that the Federal Court of Justice is

it is still applicable, and specifically ruled that the fact

relatively generous regarding the question of the distinc-that a sign is an artificial word is not sufficient for dis-

tiveness of artificial words with a descriptive ring –tinctiveness if at least one of its possible meanings canwhich acquired relevance in this case also for the ques-

be designated by the relevant public as a descriptive fea-tion of use as a trademark. It is generous, in any case,ture of the goods concerned. Even though the Federal

when the present case is viewed in relation, for exam-

Court of Justice does not address the ‘Doublemint’ de-ple, to the ‘Doublemint’- judgment of the European

cision in ‘MICRO COTTON’, it apparently takes a more

Court of Justice (judgment dated 23.10.2003, C-191/01

generous perspective in favour of the trademark propri-

P). Although the latter ECJ judgment is somewhat older,

etor, as noted above. (Eberhardt)

10

I. Infringement proceedings / 4. Perceived use of a sign as a trademark

5. Geometric (textile) pattern is usually decorative and not distinctive as a trademark
Federal Court of Justice, judgment of 10.11.2016, I ZR 191/15 – Sierpinski-Dreieck
BACKGROUND
Infringement of a trademark requires that the sign iswhich related to symbols from former Warsaw Pact coun-‘used as a trademark’, i.e. as a designation of a producttries applied to the front sides of clothing items. For thelabel, so the question that is often raised in the fashion‘DDR’ sign with the emblem of the former GDR, andindustry, especially, is whether a sign on the article of‘CCCP’ (the Cyrillic abbreviation for the former USSR)

clothing is understood as a product label or merely as awith a hammer and sickle, the Federal Court of Justicedecorative element. In addition to stitching designs on

had ruled that such symbols are generally perceived byjeans pockets, stripes as ornaments on sports clothing,

the targeted public not as a product label, but as a purely

and bone patterns on the soles of shoes, the courts havedecorative element instead. However, the situation may

also been concerned in this context with words and se-

be different if a particular sign is known to the relevant

quences of words printed on outer garments. In 2010, forpublic as an indication of origin for certain products; inexample, the Federal Court of Justice addressed this is-such cases, it is seen as a mark on articles of clothing.

sue in two judgments handed down on the same day

DECISION
In the present ‘Sierpinski-Dreieck’ judgment, the ‘DDR’

The latter design is also protected by two EU pictureand ‘CCCP’ decisions dating from 2010 were explicitly af-

marks and an international registration, effective in Ger-

firmed by the Federal Court of Justice for symbols as

many, for an affiliate of the defendant, with the result thatwell. The parties were in dispute over whether or not use

the respondent is able to assert claims against third par-of the ‘Sierpinski triangle’ on clothing constituted use as

ties in its own name. In winter 2012/2013, the plaintiff

a trademark. The defendant was a producer of winteroffered the following hooded sweaters for sale, mainly insports articles and clothing, particularly ski clothing,

the western and southern areas of Germany:

which operated in the course of trade under the sign(‘Sierpinski triangle’), with the firm’s slogan arranged under the triangle.
The defendant is also the proprietor of two picture marks
which likewise have this basic shape:

I. Infringement proceedings / 5. Geometric (textile) pattern is usually decorative and not distinctive asa trademark

11

An injunction initially obtained by the respondent against

judgment was granted by the Federal Court of Justice,

the plaintiff was set aside by the Cologne Upper District

which annulled the judgment and referred the matter

Court on the grounds that the respondent’s trademarks

back to the court of appeal. The main reasons given by

were not used as a trademark on the articles of clothing

the Federal Court of Justice, in line with its ‘DDR’ andsold by the plaintiff. The plaintiff then brought an action‘CCCP’ judgments, were that the repetition of a common

before the Düsseldorf District Court for a negative decla-geometric shape, like the ‘Sierpinski triangle’ in this case,ration that the respondent had no entitlement to injunc-

which is not known as a mark to the relevant public andtive relief. In a cross-action, the respondent filed a cross-which extends like a pattern over the entire garment, isaction against infringement of its trademarks by the arti-

generally viewed by the relevant market as a decorativecles of clothing sold by the plaintiff. The Düsseldorf Dis-element only, and not as a product label. Even if such pat-

trict Court initially assumed that the mark was not used

terns are viewed differently by the relevant public in theas a trademark, but only as a decorative element. The

luxury segment, this is not readily transferable to theplaintiff lost its appeal before the Düsseldorf Upper Dis-

‘everyday clothes’ involved in the present case. A differ-

trict Court, which considered such use to be ‘use as a

ent assessment can only be considered in this context if

trademark’, because in the segment for luxury fashion,

the sign being used has a special notoriety, not only in theleather goods and jewellery – made by the likes of Yves

field of ski clothing, but also in respect of everyday

Saint Laurent, Gucci, Moschino and Hermès –, a constantclothes. The court of appeal did not reach any findings inand uniform repetition of the same symbol on the sweat-that regard, so the Federal Court of Justice referred theers made by the plaintiff was held to be an indication ofmatter back to the Upper District Court.

origin. The plaintiff’s appeal on points of law against that

ASSESSMENT
This judgment develops the established case law of thequivocally clear from the Federal Court of Justice judg-

Federal Court of Justice in a consistent manner and clari-ment whether a distinction must always be drawn be-

fies that the principles elaborated in ‘DDR’ and ‘CCCP’

tween the luxury segment and everyday clothing in thisapply also and in particular to geometrical figures, espe-

regard, such that use as a trademark is negated in the

cially when these are distributed over the entire garment.

latter case, or whether this aspect is relevant only in the

The trademark proprietor against which the action wascase of geometric shapes which are very common. How-

brought was not helped, either, by the trademark

ever, the reference to the possible notoriety of the signfor clothing in general, as a question of importance for the
judgment, can be interpreted to mean that (more) distinctive signs may serve as product labels in specific cases,
even when they are distributed over the entire garment.
In the case of simple geometric figures such as triangles

which covers such repetition. Another interesting aspect

or stripes, use as a trademark would only be seen, athere is that such product labelling is common practice in

most, if those figures enjoy a certain notoriety as an indi-

the luxury segment, which then led the Düsseldorf Upper

cation of a specific producer, regardless of whether theDistrict Court in the appeal instance to assume that suchtargeted public correctly ascribes that indication to therepetition constituted use as a trademark. It is not une-right producer. (Dekker)

12

I. Infringement proceedings / 5. Geometric (textile) pattern is usually decorative and not distinctive asa trademark

II. ELIGIBILITY FOR PROTECTION, CANCELLATION PROCEEDINGS,OPPOSITION PROCEEDINGS

6. Requirements to be met by use so that the trademark is preserved under
Section 26 (1), (3) sentence 1 MarkenG
Federal Court of Justice, court order of 11.05.2017, I ZB 6/16 – Dorzo-Vision
BACKGROUNDThis court order handed down by the Federal Court ofused, with the consequence that the currently used

Justice addresses the requirements to be met if use ofform rules out any use which preserves the rights, isa registered trademark, albeit with additions, is to pre-specifically discussed in this court order to dismiss anserve the trademark rights. The question of whether andappeal.

in which circumstances the distinctive nature of a registered trademark is modified by the form in which it is

DECISION
The decision is based on an opposition in which the pro-

The Federal Court of Justice confirms the view taken byprietor of the senior trademark, ‘Dorzo’, opposed the ap-

the Federal Patent Court, namely that ‘Dorzo-Vision®’

plication of the trademark ‘Dorzo plus T STADA’.

and ‘DorzoComp-Vision®’ forms of use coming closest to
the registered form are not split by the relevant public into

Following successful opposition proceedings before thetheir ‘Dorzo’, ‘DorzoComp’ and ‘Vision’ elements, respec-

German Patent and Trademark Office, the Federal Patenttively, but are perceived in their composite form as a uni-

Court set aside the initial decisions. It was assumed nottary indication of origin.

only that there was no likelihood of confusion between
the opposing marks, but also that the contested trade-

If the trademark is used in any form which departs frommark had not been used in a way that preserved thethe registered form, there is genuine use preserving trade-

trademark rights.

mark rights, pursuant to Section 26 (3) sentence 1 of theTrademark Act, only if the divergence does not alter the

The contested trade mark, ‘Dorzo’, had not been used in

distinctive character of the trademark. A change in the dis-the registered form, in any case, but exclusively with ad-

tinctive character of the mark must be negated when the

ditions, as in ‘Dorzo-Vision®’, ‘DorzoComp-Vision®’ andrelevant public still equates the different sign with the reg-

‘DorzoComp-Vision® sine’, as shown below:

istered trademark on the basis of the overall impression,
particularly when the differences are perceived, i.e. when
the public still sees the same trademark in its used form.
The Federal Court of Justice based its decision in thiscase on the relevant criteria being the size and design ofthe individual elements, and the use of a hyphen to link
them. Another indication of unitary marking is that the ®
symbol is not placed after the ‘Dorzo’ element, but after
the designations ‘Dorzo-Vision’ and ‘DorzoComp-Vision’,II. Eligibility for protection, cancellation proceedings, opposition proceedings / 6. Requirements to be
met by use so that the trademark is preserved under Section 26 (1), (3) sentence 1 MarkenG

13because the market generally perceives the ® symbol asrights was that the ‘Dorzo’ element has a separate, dis-meaning that the trademark is shown in its specific, reg-tinguishing position in the product designations ‘Dorzo-

istered form.

Vision®’ and ‘DorzoComp-Vision®’. The Federal Patent
Court and the Federal Court of Justice correctly estab-

The fact that the two elements ‘Dorzo’ and ‘Vision’ mu-lished in this regard that an independent and distinguish-

tually refer to each other, from the conceptual perspec-

ing position is a criterion that has no relevance for thetive, was brought into the Federal Patent Court judgment

question of whether a trademark has been used in a way

without legal error, in the view of the Federal Court ofwhich preserves the trademark rights. The only relevant

Justice. ‘Dorzo’ is a reference to the active agent, ‘Dor-

aspect, in contrast, is whether the distinctiveness of thezolamid’, which is recognised by the general public – par-trademark in its registered form has been changed as aticularly since it is stated on the packages. The English

result of the specific way in which it is used. However, if

expression ‘Vision’ means ‘sight’, ‘the power of seeing’

the targeted public no longer sees the autonomous markand ‘visual acuity’ and thus refers likewise to the field ofthat was registered in the composite mark actually being

application. Since both these expressions refer to each

used, then this precludes any genuine use preserving theother’s content, this is further evidence that the compo-

rights. It is wrong here to take the criterion of a separate,site mark is viewed as unitary.

distinguishing position into consideration, which is reserved for the examination for confusing similarity.

The appellant argued that a relevant aspect in assessing
whether there was genuine use preserving trademark

ASSESSMENT
Using a registered word mark in a different, composite

The ® symbol that many companies like to use to referform with additional words, pictures and/or word/picture

to their trademark rights must always be placed immedi-

elements, is widespread in practice. Such additions are

ately beside the registered trademark and not at the end

mostly unproblematic when they are purely descriptive orof the composite sign which is used, but not registered,of simple graphic design. Nevertheless, in this regard alsoso as to prevent the wrong impression being conveyed

the details of the specific case are what matter, so it isabout the protective scope of the mark.

necessary to examine meticulously beforehand whether
supposedly simply or descriptive additions might alter the

Any licensees must be instructed about how the trade-

distinctiveness of the registered trademark after all, on

mark may be used, so as to rule out any legal disad-account of their specific form.

vantages for the proprietor. (Holderied)

14

II. Eligibility for protection, cancellation proceedings, opposition proceedings / 6. Requirements to be
met by use so that the trademark is preserved under Section 26 (1), (3) sentence 1 MarkenG

7. Well-known MEISSEN trademark for porcelain fails to assert itself against
MEISSEN sanitary products
European Court of Justice, judgment of 26.07.2017, C-471/16P – MEISSENBACKGROUNDThe Staatliche Porzellan-Manufaktur Meissen GmbH

Meissen Keramik have been brought to the European(Meissen Porzellan), famous for its prestigious porcelain

Court of Justice. Just after the European Court of Justiceware, and the firm of Meissen Keramik GmbH (Meissen

handed down its judgment on 26 July 2017, the parties

Keramik), likewise domiciled in Meißen, have beenreached a settlement before the Upper District Court inlocked in legal combat for many years over the use of theDresden, in which they agreed on the coexistence of theword MEISSEN on sanitary products made by Meissen

signs. The decision of the European Court of Justice nev-

Keramik. Parallel to this civil dispute, opposition proceed-

ertheless provides some important legal pointers for prac-ings against a word/picture mark MEISSEN registered bytitioners.

DECISION
Meissen Porzellan filed an opposition against a word/pic-

mentally associate the trademarks with each other. Meis-

ture mark MEISSEN, filed by Meissen Keramik for the en-sen Porzellan continued to pursue its case with actions be-tire EU, for goods in the sanitary field, as well as for wallfore the Court of Justice of the European Union and thetiles, furniture and mirrors. The opposition was based on

European Court of Justice. The courts did not accept its

several senior trademarks, each of which contained thearguments and upheld the decision handed down by the

MEISSEN element. The crucial aspects for the decision

Board of Appeal.

were above all the HAUS MEISSEN trademark, use ofwhich could not yet be proved, and the MEISSEN trade-

The European Court of Justice clarified that the evi-mark for porcelain ware, registered on the basis of its ac-

dence which was not presented by Meissen Porzellan

quired distinctiveness. Meissen Porzellan argued that theuntil the proceedings before the Court of Justice of thepre-eminent reputation of the MEISSEN trademark can be

European Union were not to be taken into consideration.

assumed as being familiar to the Trademark Office. After

Review by the European Courts of Justice is confined,

the opposition was partly granted by the European Union

namely, to issues of lawfulness. The argument that theIntellectual Property Office, both parties filed appeals. The

new evidence presented merely added to the facts pre-Board of Appeal found that the opposing goods were dis-sented in previous instances was dismissed. The ac-

similar on the whole. Porcelain ware, especially, has noquired distinctiveness noted in the register for thesimilarity with goods in the sanitary field, since these dif-

MEISSEN trademark was not transferable to the HAUS

ferent products were sold in different shops and there was

MEISSEN trademark. Each protective right must be sep-

also no way in which they complemented each other. The

arately assessed, and in the case of the HAUS MEISSEN

distinctiveness of the HAUS MEISSEN trademark was also

trademark, acquired distinctiveness had not been

weakened by inclusion of the place name ‘Meißen’. Alt-

claimed during the application procedure. In that re-hough it could be assumed, to the benefit of Meissen Por-

spect, it could also be assumed that the distinctivenesszellan, that the MEISSEN trademark is notorious for high-of the ‘MEISSEN’ element was weakened due to its ref-quality porcelain ware, entitlement pursuant to Article 8 (5)erence to the place name ‘Meißen’. Finally, it was af-of the EU Trademark Regulation (EUTMR) did not accrue,firmed with regard to protection based on reputation

however, because the respective targeted publics did notthat the type of goods in question and the degree of

II. Eligibility for protection, cancellation proceedings, opposition proceedings / 7. Well-known MEISSEN
trademark for porcelain fails to assert itself against MEISSEN sanitary products

15their dissimilarity is one of several factors to be taken

and sanitary goods, furniture and mirrors, on the otherinto consideration when examining whether the marks

hand, are so dissimilar that the relevant publics do not

are mentally associated with each other by the targeted

mentally associate the trademarks with each other.

publics. High-quality porcelain ware, on the one hand,

ASSESSMENT
The decision of the European Court of Justice hands prac-

Thirdly, the European Court of Justice clearly states, intitioners three key aspects to consider. These have lessaffirmation of its case law to date, that the protection af-

to do with legal innovations, but more with clear-cut prac-

forded on the basis of an established reputation, pursuant

tical ‘instructions’ which need to be given careful consid-

to Article 8, (5) EUTMR, the type of goods and the degree

eration as early as opposition proceedings, but not laterof dissimilarity is an important factor when examining

than in the appeal instance.

whether the relevant publics mentally associate the opposing trademarks with each other. It is not until thisFirstly, utmost care with regard to necessary evidence

mental association is present that it is then necessary tomust already be exercised in the instances at the Euro-examine whether the appreciation for, and the distinctive-

pean Union Intellectual Property Office. Relevant facts

ness of the older trademark is unfairly exploited or ad-

must be submitted at an early stage in the form of docu-

versely affected by the younger trademark.

mentary evidence of genuine use, distinctiveness or eventhe notoriety of the trademark. This will often require cli-

The ‘hint’ given by the European Court of Justice is aboveents to invest a considerable amount of time. However,that precise analysis and argumentation, based on theit would be wrong to take a wait and see approach in or-

specific facts of the case, is essential even in cases that

der to save one’s own clients the work of compiling theare ostensibly clear-cut. For Eisenführ Speiser, conduct-

documents. What is required is good communication anding this examination at the highest level of quality at all

close cooperation in an atmosphere of trust, which willtimes is an essential element of our daily consultancy

pay off in the end.

work, also in order to keep in mind from the outset any
potential weaknesses that may lurk in a case which atSecondly, it is imperative to distinguish very precisely be-

first glance seems easy to win. This may demand sometween the separate IP rights being asserted in any pro-effort on the part of clients, because when compiling the

ceedings. From their commercial perspective, clientsfacts of the case, we are reliant on information that only

tend to view their own products as a single body, rather

the client can provide, and sometimes have to keep com-than focusing on the individual IP rights behind thoseing back to the client with further questions. However,products. From the legal perspective, in contrast, it is es-

working closely and productively together with a clear

sential to draw very precise distinctions. No conclusions

aim in sight is the best guarantee for successful assertion

may be drawn automatically from one IPR for another.

of intellectual property rights. (Ehlers)

Registration of a trademark on the basis of acquired distinctiveness does not mean, for example, that greater distinctiveness must also be ascribed to other, identicaltrademarks.

16

II. Eligibility for protection, cancellation proceedings, opposition proceedings / 7. Well-known
MEISSEN trademark for porcelain fails to assert itself against MEISSEN sanitary products

8. ‘Stadtwerke Bremen’ can be registered as a word markFederal Court of Justice, court order of 09.11.2016 – I ZB 43/15 – Stadtwerke Bremen
BACKGROUND
For goods in classes 4 and 9 and services in classes 35, 36,

refused registration due to a lack of distinctiveness and the37, 38, 39, 40 and 42, the Trademark Division of the Ger-

need to keep the trademark free. The Federal Patent Court

man Patent and Trademark Office (GPTO) rejected an ap-

took the view that the trademark has distinctiveness, butplication for the word mark ‘Stadtwerke Bremen’ (the mu-that in view of the municipality of Bremen no longer hold-nicipal utilities company in Bremen) due to lack of distinc-

ing a majority interest in the utilities company, there was ativeness and due to a need to keep the trademark free. The

likelihood of deception and therefore an impediment toapplicant appealed the decision and assigned the applica-

protection pursuant to Section 8 (2) No. 4 of the Trademarktion to another undertaking in which the municipality ofAct (MarkenG). The applicant’s appeal was accordingly dis-Bremen only held a minority interest. The appeal instancemissed by the Federal Patent Court, a decision which thealso heard the President of the German Patent and Trade-applicant then contested with a further appeal that was ad-mark Office, who, like the Trademark Division before her,mitted by the Federal Patent Court.

DECISION
The Federal Court of Justice concerned itself firstly withwhich are not self-evident from the content or the mes-

the reason given for refusing registration, namely decep-

sage conveyed by the mark, but ensue only in conjunction

tion or the likelihood of deception. According to Section 8

with the person or the undertaking of the trademark pro-(2) No. 4 MarkenG, trademarks which deceive or are likely

prietor, are unlikely to deceive the consumer within theto deceive the public, in particular with regard to the na-

meaning of Section 8 (2) No. 4 MarkenG, nor can theture, the properties or the geographical origin of theword mark applied for be considered generally capable ofgoods or services, may not be registered. The Federal Pa-

deceiving the public into believing that the provider of thetent Court’s assumption that ‘Stadtwerke Bremen’ isgoods and services covered by the mark is in municipal

likely to deceive the consumer, within the meaning ofownership. The court ruled that use of the ‘Stadtwerke

Section 8 (2) No. 4 MarkenG, into believing that the un-

Bremen’ word mark for the claimed goods and services

dertaking was run by the municipality, given that the mu-

is not misleading, in any case. It seems feasible that thenicipality of Bremen could not ensure a controlling local

municipality of Bremen will gain a controlling influence on

government influence on the corporate policies of the ap-

the business operations of the applicant in the course ofplicant and due to its only having an (indirect) minority in-extensive remunicipalisation. Nor is there any reason why

terest, was wrong, according to the Federal Court of Jus-

the applicant could not license or assign the trademark to

tice. When assessing whether such an impediment toa utilities enterprise managed or controlled by the munic-

protection exists, the question is whether there is any de-ipality of Bremen.

ception by the proprietor itself, rather than examining
whether the sign may be likely to mislead when used in

The Federal Court of Justice also disagreed with the viewa particular way in the course of trade. There is no decep-that the trademark ‘Stadtwerke Bremen’ lacks any dis-tion, as an absolute impediment to protection, when it istinctiveness within the meaning of Section 8 (1) No. 1

possible to use a trademark for the claimed goods andMarkenG. According to its particular semantic content,

services without misleading the relevant public. Mislead-the expression ‘Stadtwerke’ indicates a municipally

ing statements about the claimed goods or services,

owned utilities company. The targeted public sees the

II. Eligibility for protection, cancellation proceedings, opposition proceedings / 8. ‘Stadtwerke Bremen’can be registered as a word mark17

municipal ownership expressed in ‘Stadtwerke’ as being

there are grounds for assuming that other Bremen-based

specified by the city name of ‘Bremen’. The filed word

providers of public services will enter the market, given

mark thus expresses that the claimed goods and services

the trend to privatisation of municipal undertakings andoriginate from a utilities company owned by the munici-

the liberalisation of the energy market, it is absurd to be-pality of Bremen.

lieve that these providers will then use the designation‘Stadtwerke’ for their goods or services, because it would

The Federal Court of Justice then examined whether

be an infringement of competition law to use the term if

there is any (current) need to keep the trademark free,the municipality of Bremen did not hold at least a majority

pursuant to Section 8 (2) No. 2 MarkenG, and answeredinterest in the undertaking. A company would be actingthat question in the negative. According to said provision,

misleadingly, within the meaning of Section 5 (1) sen-trademarks shall not be registered which solely consist oftence 1 and 2 No. 1 and 3 of the law against unfair com-signs or indications which may serve, in trade, to desig-

petition (UWG), if it offers utilities in Bremen under thenate the kind, quality, quantity, intended purpose, value,

name ‘Stadtwerke’, but the majority of shares in the com-geographical origin, the time of production of the goods

pany are not held by the municipality of Bremen. Even if

or of rendering of the services, or other characteristics ofsuch misleading uses were to occur, they would be le-

the goods or services. The filed word mark was not con-gally irrelevant in this context. It is not in the general in-

fined to the descriptive statement that the claimed goods

terest, when liberalising markets, to give every businessand services were offered by a utilities company domi-

participant the opportunity of using a designation unlaw-

ciled in Bremen, or for customers resident within the

fully. Given these circumstances, there is no reasonableboundaries of the Bremen municipality. The consumer

expectation that the designation ‘Stadtwerke Bremen’understands the word combination ‘Stadtwerke Bremen’will undergo a change in meaning to the effect that theto mean that the utilities are provided by a local govern-

consumer understands it as indicating that goods and ser-ment enterprise in which the municipality of Bremen

vices are being offered by a utilities company in the mu-holds at least a majority share.

nicipal area of Bremen.

The Federal Court of Justice also denied any future need

For these reasons, the decision of the Federal Patent

to keep the trademark free. Before a future descriptive

Court was set aside, with the matter being referred backindication can be assumed, it is necessary to establish

to the Federal Patent Court for reconsideration and judg-

that such use can reasonably be expected. Although

ment.

ASSESSMENT
The grounds for negating the likelihood of deception wereAs far as distinctiveness is concerned, the word ‘Bremen’correct. The observations that there is no need in the pre-does not play any role, in that this element of the marksent case to keep the trademark free, and in particularobviously has no distinctiveness as a geographicalthat there is no future need to keep the trademark free,indication that everyone in Germany knows. However,also seem fully acceptable.

the word ‘Stadtwerke’ does not have distinctiveness perse, either. A ‘Werk’ is understood to mean an industrial

However, it is surprising that the word mark was deemed

production facility – another word for it would be ‘factory’;to have distinctiveness. The filed word mark expresses

when prefixed with the word ‘Stadt’ (town/city) andthat the claimed goods and services originate from, or are

turned into the plural form, the relevant public will

provided by, a utilities company owned by therecognise the origin from plants or factories belonging tomunicipality of Bremen. In other words, the trademark

a city. Numerous German cities have such plants andindicates the origin of goods or services as being afactories, so the relevant publics cannot find anything

particular utilities company under municipal ownership.

distinctive in the word ‘Stadtwerke’ regarding the goods

18

II. Eligibility for protection, cancellation proceedings, opposition proceedings / 8. ‘Stadtwerke Bremen’can be registered as a word markor services thus designated. Though it is true that

‘Stadtwerke Hannover’, because the relevant public‘Bremen’ as a place name allows goods and services towould deem this to be ‘use as a trademark’, with the

be associated with a particular undertaking, it does notplace name being ignored when examining for any likeli-

resultacquiringhood of confusion? Or can (and should) all the municipal

distinctiveness in respect of goods or services – and not

in

the

expression‘Stadtwerke’

utilities companies in Germany that have the wordin the combination of words, either.

‘Stadtwerke’ in their name oppose the registration anduse of the trademark ‘Stadtwerke Bremen’ on the basis

Moreover, the registration of ‘Stadtwerke Bremen’ as anof their older trade names? How is the scope of protec-

overall designation for the claimed goods and services

tion conferred by the various German trademark registra-raises some thorny questions for future infringement

tions to be determined in future, in which the wordcases. Is the proprietor of the ‘Stadtwerke Bremen’ trade-‘Stadtwerke’ has a dominant position, but which also

mark (which is registered, for example, for ‘apparatus andhave additional graphical elements that were relevant for

instruments for conducting, switching, transforming, ac-

the overall sign being eligible for registration?

cumulating, regulating or controlling electricity’) now able
to prohibit other ‘Stadtwerke’ – e.g. ‘Stadtwerke Mün-

We would have welcomed it if the view taken by thechen’ or ‘Stadtwerke Hannover’ – from selling goods

President of the German Patent and Trademark Office

bearing their company name ‘Stadtwerke München’ or

had prevailed. (Sander)

II. Eligibility for protection, cancellation proceedings, opposition proceedings / 8. ‘Stadtwerke Bremen’can be registered as a word mark19

AUTHORS
Dr. jur. Constantin Brecht. LL.B.
Nicole Dekker
Dr. jur. Julian Eberhardt, LL.M.
Nicol Ehlers, LL.M.
Harald Förster
Yvonne Holderied
Dr. jur. Stefanie Overhage
Ulrich Sander

EDITING & LAYOUT
Katrin Hellmann

Further members of our team can be found atwww.eisenfuhr.com/de/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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