Recent Case Law
inGerman Trademark Law

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CONTENT
Foreword ..................................................................................................................................................... 2
Infringement proceedings
1. A liable party subject to an injunction order is under no obligation to delete
subsequent entries ........................................................................................................................ 3
European Court of Justice, judgment of 02.07.2020, C-684/19 – mk advokaten/MBK
Rechtsanwälte
2. No infringement of rights by storing infringing goods .............................................................. 6
European Court of Justice, judgment of 02.04.2020, C-567/18 – Coty/Amazon
3. Cross-supplies within a selective distribution system ............................................................... 8Federal Court of Justice, judgment of 15.10.2020, I ZR 147/18 – Querlieferungen
4. Use of the ‘schufa-anwalt.de’ domain for legal services infringes rights to the
SCHUFA trademark ...................................................................................................................... 10
Munich I District Court, judgment of 25.06.2020, 17 HK O 3700/20
Eligibility for protection / cancellation proceedings / opposition proceedings
5. Taking probable types of use into consideration when assessing the distinctivenessof a mark ....................................................................................................................................... 12Federal Court of Justice, court order of 30.01.2020, I ZB 61/17 – #darferdas? II
6. Protectability of chocolate packaging ........................................................................................ 14
Federal Court of Justice, court order of 23.07.2020, I ZB 42/19 – Quadratische
Tafelschokoladenverpackung II
7. Bad faith constituted by applying for a trademark without any intention of using it .......... 16
European Court of Justice, judgment of 29.01.2020, C-371/18 – Sky ./. SkyKick
8. An ‘X’ at the end makes no difference yet – The concept of genuine use in
opposition proceedings, and assessing the similarity of signs involving highly
descriptive elements .................................................................................................................... 18
Federal Court of Justice, judgment of 06.02.2020, I ZB 21/19 – INJEKT/INJEX
9. Descriptive name for ice cream to be kept available for general use (Plombir) .................... 21
Federal Patent Court, court order of 04.03.2020, 28 W (pat) 27/13

FOREWORD
This issue of our ‘Recent Case Law in German Trademarkof the claim to injunctive relief under trademark law, theLaw’ is the fifth review, compiled by the attorneys in theliability of the various players in Internet trade, and theTrademark Practice Group at EISENFÜHR SPEISER, of

infringement of trademark rights by details provided on

current court decisions relevant for practitioners in thedomains. The ECJ has also expressed its opinion on

field. The Trademark Practice Group pools the firm’s com-trademark applications made in bad faith, due to the lackpetencies in the field of trademark law from and for theof any intention to use them. With regard to eligibility forvarious offices and discusses new developments in casetrademark protection, an issue in 2020 was the inclusion

law and practice on a regular basis. Collectively, the Prac-of probable forms of use when assessing the eligibility oftice Group can draw on experience amassed over thea sign for protection, and the eligibility for protection of apast 50 years. Our clients benefit accordingly.

well-known square packaging for chocolate. Other topics
discussed include the concept of genuine use in opposi-

For the 2020 Case Law Review, we have compiled andtion proceedings, and the need to keep a trademark free

prepared a total of nine current decisions with practicalfor competing undertakings when descriptive indications

relevance. A personal assessment by the respective au-

are involved.

thor is provided for each decision.
We wish you an interesting read. If you have any quesThe decisions relate not only to judicial (infringement)

tions or comments about individual decisions, please docases, but also to cancellation proceedings and cases

not hesitate to contact us.

concerning the eligibility of trademarks. Among other issues, the courts had to deal again last year with the scope

2

April 2021

EISENFÜHR SPEISER

ForewordINFRINGEMENT PROCEEDINGS
1. A liable party subject to an injunction order is under no obligation to delete
subsequent entries
European Court of Justice, judgment of 02.07.2020, C-684/19 – mk advokaten/MBK Rechtsanwälte

BACKGROUND
In a number of recent decisions in the field of unfair com-and-desist order may extend to an obligation to recall

petition and trademark law, the Federal Court of Justicegoods from the channels of distribution.

has extended and specified in more detail the obligationsof a party subject to a cease-and-desist order. In addition

The present decision relates to a dispute between two

to merely refraining from (further) infringing acts, thelaw firms about advertising of legal services in breach ofparty that must cease and desist also has obligations to

trademark law. In contrast to the case law mentioned

take active steps to remedy the adverse impacts on theabove, it was not about recalling goods from the channels

party obtaining the order. According to the aforemen-of distribution, but about removing advertisements on thetioned case law, the development of which we have re-Internet. However, the question raised here as well is theported on several times already here (see ‘Recent Case

extent to which a liable party subject to an injunction has

Law in German Trademark Law, 2016’, pp. 5 f. andan obligation to take active steps to remove infringing

2018 pp. 8 f.), the obligations ensuing from the cease-content beyond its immediate area of control.

DECISION
The party that obtained the injunction, a law firm in Mön-

applicant for injunction, the Düsseldorf District Court thenchengladbach, is the proprietor of a German trademark,imposed a fine on the respondent.

‘MBK Rechtsanwälte’, which is registered for legal services, inter alia. The party ordered to cease and desist, like-

The District Court ruled that the liable party was obligatedwise a law firm domiciled in Kleve, initially provided its ser-not only to delete the initial entry it had commissioned, but

vices under the name ‘mbk Rechtsanwälte’ and its Dutch

also all other entries in commonly used online directories

equivalent, ‘mbk advokaten’. Following an application forthat included the ‘mbk’ sign, because the advertisements

injunction, the District Court in Düsseldorf ordered the re-included on the websites in question benefitted the liablespondent to refrain, in the course of trade, from using theparty and were attributable to the initial entry that it had

name ‘mbk’ for legal services. This judgment has become

directly ordered. The party subject to the injunction lodged

final.

an appeal against the District Court decision.

The respondent had registered an entry under said name

The Düsseldorf Upper District Court referred the matter toin the online telephone directory called ‘Das Örtliche’. Afterthe ECJ for a preliminary ruling. According to the estab-the judgment was handed down by the District Court inlished legal practice of German courts, a liable party that

Düsseldorf, the respondent arranged for the entry to be de-infringes the trademark rights of a third party by first use

leted. However, the applicant for injunction subsequently

on the Internet not only has an obligation to delete the first

discovered that a Google search using the term ‘mbk

entry in question, but must also investigate, with the help

Rechtsanwälte’ still pointed to websites containing direc-

of common search engines, whether third-party websites

tory entries for the respondent. Following a request by thehave adopted that entry, even without its consent, and if

I. Infringement proceedings / 1. A liable party subject to an injunction order is under no obligation
to delete subsequent entries3

necessary make at least a serious attempt to arrange forcourse of trade that has arranged for an advertisement

deletion on those websites. The reason given for that viewwhich infringes another person’s trade mark to beis that these subsequent entries are a result of the unlawfulplaced on a website is not using a sign which is identi-

first entry by the liable party and also benefit the latter eco-cal with that trade mark where the operators of othernomically. The infringer, therefore, must bear the risk of

websites reproduce that advertisement by placing it

unsolicited assimilation of entries by other websites, andonline, on their own initiative and in their own name,for that reason must also accept the effort and expense ofon other websites.’deletion.
In its grounds for judgment, it argued that the expression
The Upper District Court expresses doubts that this is con-‘use’ within the meaning of the Directive involves active

sistent with the case law of the ECJ regarding the interpre-

conduct and direct or indirect control of the act constituting

tation of Article 5 (1) of the Trademark Directive in the ver-the use. Use in this sense had therefore been made in re-sion applying at the time (now Article 10 of the Trademark

spect of the first entry that the liable party itself had or-

Directive), according to which subsequent entries did notdered with the ‘Das Örtliche’ directory. By contrast, it can-qualify as trademark-infringing acts of use by the liable

not be held liable for independent actions committed byparty. “Use” in this sense involved active conduct. Inde-other economic operators, such as those committed by thependent acts by third parties could not be attributed to theoperators of the third-party websites with whom it has no

person who merely ordered the initial entry on a particular

direct or indirect connection and who do not act by orderwebsite.

and on behalf of that person, but on their own initiative andin their own name. The provision cannot be interpreted to

The ECJ confirms the doubts expressed by the Düsseldorf

mean that, irrespective of its conduct, a person may be re-Upper District Court. The headnote of its decision reads:

garded as the user of a sign merely because such use
might result in its financial benefit.

‘Article 5 (1) of Directive 2008/95/EC [...] must be interpreted as meaning that a person operating in the

ASSESSMENT
The ECJ decision is to be appreciated. It limits, a little at

According to German case law, the party subject to an

least, the far-reaching obligations imposed on the injunc-

injunction who had trademark-infringing content on its

tion debtor by the Federal Court of Justice. In trademark

website and who removed it because of its obligation to

disputes, the liable party is therefore under no obligationcease and desist, also has an obligation to request thatto examine the websites of independent third parties toGoogle and other commonly used search engines re-in-

determine whether they have adopted the first entry

dex the website, so that the trademark is no longer asso-

without its consent.

ciated with the website in search results. The ECJ decision means that said obligation should not apply anymore

The ECJ clearly states that this does not preclude a rights

in a situation, at least, where inclusion in the search re-owner from claiming restitution for financial benefits fromsults was not arranged by the obligor, but solely on thesuch third parties on the basis of national law and does

initiative of Google.

not prejudice its right to bring an action against the operators of the third-party websites. However, if financial

It is unlikely, in contrast, that the Federal Court of Justicebenefits accrue to the liable party, this alone does not jus-

will take this decision as an opportunity to correct thetify treating the autonomous actions of independent thirdmushrooming obligations to recall products created by re-parties as acts of use by the liable party.

cent German case law. One reason is that some of this4

I. Infringement proceedings / 1. A liable party subject to an injunction order is under no obligation
to delete subsequent entries

case law relates to national competition law, not harmo-

Following this decision, the Düsseldorf Upper District

nised trademark law, another is that the factual situation

Court had to examine whether the liable party had caused

is not entirely identical. The case differs from the recall

the subsequent entries by its own conduct, or whether

situation in that an infringer who has placed infringing

the operators of those websites were acting on their own

goods on the market maintains economic relations withinitiative and in their own name. With its decision of

its customers, at least. In other words, the condition that

13 October 2020, the Upper District Court has annulled

it ‘has no direct or indirect dealings’ with them is not met.

the District Court’s decision and refused the request for

It is conceivable, nevertheless, that the ECJ would not

payment of a fine. There were no signs that the defen-

also ascribe without further ado the actions of independ-dant had directly or indirectly caused the subsequent en-ent customers to the party subject to an injunction –tries. (Kirschner)should that question be referred to it eventually.

I. Infringement proceedings / 1. A liable party subject to an injunction order is under no obligation
to delete subsequent entries52. No infringement of rights by storing infringing goods
European Court of Justice, judgment of 02.04.2020, C-567/18 – Coty/Amazon

BACKGROUND
If goods that infringe trademark rights are distributed, thehere, the Federal Court of Justice had an opportunity toquestion that arises for the proprietor of the respective

refer to the ECJ the question of whether the warehousetrademark is how to enforce its rights most effectively.

operator acting in good faith is the ‘possessor’ of the

The obvious idea that springs to mind to achieve that pur-stored goods. When determining ‘possession’, it is im-pose is not to approach the individual sellers of the in-portant to realise that Article 9 (3)(b) EUTMR is only appli-

fringing goods, but to sue the party that stores or delivers

cable if the conditions specified in paragraph 2 are met.

the goods.

The crucial factor here is that there is ‘use’ of the trademark. The ECJ decision concerned the question as to

The question of the liability of the person storing thewhether the undefined term ‘use’ within the meaning ofgoods, which is quite a relevant one in practice, has not

Article 9 (2) EUTMR also includes the mere storage ofbeen ruled upon yet by the ECJ. In the case discussed

goods.

DECISION
The decision is based on a dispute between Coty, fornamely termination of the infringing act, cannot be mean-

whom the Davidoff trademark (among others) is pro-ingfully enforced unless the respondent actually has con-tected, and Amazon. A perfume had been offered for saletrol over the act constituting the use.

under that name on the Amazon Marketplace by a third
party, in infringement of the plaintiff’s trademark rights.

In addition, the ECJ clarified that there is ‘use’ of a sign

Coty then took action against Amazon FC Graben GmbH,identical or similar to the trademark whenever the thirdinter alia, the company responsible for storing and dis-

party uses the sign for its own commercial communica-

patching the goods. Coty takes the view that, by storingtion, in any case. However, referring to its Google andthe trademark-infringing goods without being aware of

Google France decisions (ECJ (Grand Chamber) judg-

the infringement, this Amazon subsidiary was commit-

ment of 23. 03. 2010, C-236/08 to C-238/08), the ECJ clar-ting an infringement of trademark rights because it ‘pos-

ified that such use does not exist already if customers aresessed’ the goods.

allowed to use a sign which is similar or identical to thegoods or the sign of the trademark proprietor.

However, the ECJ ruled that storing the trademark-infringing goods did not constitute an infringement ofHowever, there is ‘use’ of the sign if goods bearing a sign

rights, and in that respect concurred with the Federal

protected as a trademark are imported, or handed to the

Court of Justice and opposed the position taken by thewarehouse keeper, by an economic operator for the pur-

Advocate General.

pose of placing them on the market. However, this principle does not necessarily apply as well to a person who, as

In its decision, the ECJ emphasises with reference to its

a warehouse owner, merely performs the service of stor-

Daimler decision (judgment of 03.03.2016, C-179/15, pa-

ing goods bearing signs protected by trademark law (withras. 39, 40, 41), that a good protected under trademark

reference to ECJ judgment of 16.07.2015, C-379/14 – TOP

law is only deemed to be ‘used’ if there is active behav-

Logistics). Citing the Frisdranken Industrie Winters deci-iour and direct or indirect control of the act constituting

sion (ECJ, judgment of 15.12.2011, C-119/10), the ECJ ar-

the use. The legal consequences stipulated in the norm,

gues that merely creating the technical prerequisites for6

I. Infringement proceedings / 2. No infringement of rights by storing infringing goods‘using’ a sign does not mean, in any case, that the sign isgoods themselves, nor any ‘use’ of the sign as part of thebeing ‘used’. The party providing that service does not it-

party’s own commercial communication.

self use the sign.
In the case under consideration, these conditions were
The ECJ then emphasises, with reference to the wording

not met because Amazon FC Graben was neither offeringof Article 9 (2)(b) EUTMR (‘possession for those pur-for sale nor placing on the market goods bearing a sign

poses’), that storing can only be considered to constituteprotected under trademark law.

‘use’ if the party placing the goods in storage is pursuing
the aim of offering the goods or placing them on the market. If that is not the case, there is neither any ‘use’ of the

ASSESSMENT
In order to determine whether a trademark has been in-

The ECJ judgment does not let Amazon become a ‘free

fringed by a warehouse keeper, the question that needs

rider’, however. On the one hand, the ECJ emphasises

to be asked as a consequence of the decision is whether

that it seems perfectly possible that Amazon itself also

placement in storage is merely the service of storing, or

possesses particular goods for its own purposes or offers

whether the aim pursued by the party performing thethem itself. On the other hand, the ECJ leaves the ques-storage is to offer for sale or to place on the market, oftion unanswered whether the operator of an online mar-its own accord, the goods bearing the sign protected un-

ketplace might fall within the scope of Article 14 (1) of the

der trademark law.

e-Commerce Directive (2000/31), in other words that it
qualifies as a hoster that is not always responsible for the

The opinion expressed by the Advocate General, who

content stored for the individual users, and should thatwants to focus on the entire group in order to determine

not be the case, whether the operator is to be considered

whether there is any ‘use’, is certainly interesting. If, asan ‘intermediary’ within the meaning of Article 11 of Di-

the ECJ has assumed in the case under consideration, it

rective 2004/48 (Enforcement of Intellectual Property

is only the individual subsidiary that needs to be consid-

Rights). (Eberhardt)

ered in order to determine whether there is any act constituting use, the establishment of subsidiaries could
make it more difficult to take legal action against trademark infringements.

I. Infringement proceedings / 2. No infringement of rights by storing infringing goods

73. Cross-supplies within a selective distribution system
Federal Court of Justice, judgment of 15.10.2020, I ZR 147/18 – Querlieferungen

BACKGROUNDThis dispute between heavyweights – the Coty Group on

to other distributors, and only in final consumer volumes,

the plaintiff side (the world’s largest manufacturer of per-namely a maximum of three identical products (exclusion

fumes for the mass market), Amazon group companiesof wholesale business). This was limited to the states ofon the defendant side – concerned the sale of perfumes

the European Economic Area (the EU member states plus

under the ‘Joop!’ trademark. The plaintiff is the trademark

Iceland, Liechtenstein and Norway – ‘EEA’). A sales part-proprietor’s licensee. It had made test purchases fromner was not allowed to either sell to customers outside

the defendant on amazon.de. Although the products re-that territory, or to purchase from them. Furthermore, theceived were original products, the plaintiff claimed it had

sales partners had to reach a specific annual purchase tar-delivered the actual products to Dubai. The defendantget, with products purchased from or sold to other sales

countered that it had purchased the goods from an au-

partners not being counted towards those targets.

thorised dealer of a European undertaking belonging to
the plaintiff’s corporate group.

The Munich I District Court ordered the defendant tocease and desist and to provide information, and the judg-

Coty had installed a selective distribution system in which

ment was upheld by the Munich Upper District Court.

distributors are only allowed to sell to final consumers or

DECISION
The Federal Court of Justice set aside the judgment andHowever, the court deemed that it had been insufficiently

referred it back to the Munich Upper District Court for re-established whether ‘exhaustion’ of protection had arisen

consideration.

in respect of the products sold. In European trademark
law, exhaustion is a reason for ruling out any trademark

The Federal Court of Justice established, first of all, thatclaims. The trademark proprietor cannot, accordingly, pro-the plaintiff was entitled to claim injunctive relief on thehibit third parties from using the trademark for goods thatbasis of its licensing agreement, but not its claim to infor-

have been placed on the market in the EEA by the trade-

mation. The purpose of the latter was to quantify themark proprietor itself (or with its consent). This is to en-

claim for damages. A licensee is not entitled to its own

sure the free movement of original products within theclaim for damages. Nor had the courts established that

European Single Market, so that national markets cannot

the plaintiff had been authorised by the trademark propri-

be foreclosed by the trademark proprietor on the basis ofetor to assert the claim for damages or that the claim had

trademark law (e.g. to achieve higher prices in individual

been assigned to it by the latter.

states).

On the matter of injunctive relief, the Federal Court of

The defendant invoking the exhaustion rule generally has

Justice affirmed a trademark infringement because ato furnish proof. According to the established legal practiceproduct bearing an identical trademark for identical goodsof the Federal Court of Justice and the European Court ofhad been sold without the consent of the trademark pro-

Justice, however, the burden of proof must be reversed if

prietor.

the rule of evidence might enable the trademark proprietor

8

I. Infringement proceedings / 3. Cross-supplies within a selective distribution systemto foreclose national markets. If the defendant had to dis-This was because, although sales were allowed between

close its source of supply, the trademark proprietor could

sales partners in different EEA states, sales on a whole-exert its influence on that source within its distribution

sale scale were ruled out, and such sales were notsystem to put a stop to such sales in future. There havecounted towards the minimum purchase targets. This

therefore been supreme court rulings in the past that in

could have a restrictive effect on cross-border trade in

the case of exclusive distribution systems (only one sales

goods and encourage the maintenance of price differ-

partner per state, to which sales are only allowed withinences between Member States.

that one state), all that the defendant needs to prove isthat there is an actual risk of market foreclosure, in re-

In the present case, the defendant had already argued insponse to which the trademark proprietor must thenthe previous instances that price differences for the rele-

prove that the products at issue were not original prod-

vant goods existed between the individual Member

ucts that it had placed on the market within the EEA.

States and that the distribution system was capable ofrestricting trade. In the view of the Federal Court of Jus-

In the case under consideration, however, there was notice, the appeal court should have followed up on thosesuch exclusive distribution system, but a selective distri-statements. If, after the dispute was referred back to thebution system – the sales partners were only allowed toreferring court, the review showed that there were pricesell to certain customers, but could do so within the EEA

differences between the Member States, this would sub-as a whole. The Munich Upper District Court accordingly

stantiate the risk of a foreclosure of national markets,held the distribution system to be sufficiently designed ingiven the rules of the distribution system as describedsuch a way that there was no foreclosure of national mar-above. The plaintiff would have to prove, as a conse-kets.

quence, that these price differences were attributable toother causes or that it had placed the goods in question

The Federal Court of Justice took a different view: Theon the market outside the EEA.

distribution system under consideration could conceivably be seen as risking the foreclosure of national markets.

ASSESSMENT
The Federal Court of Justice extends the requirements

result in foreclosure of national markets and thus infor a ‘exhaustion-compliant’ distribution system such thatmaintenance of price differences. This case law must

not only are passive sales outside the assigned territory

therefore be taken into account when creating selective

prohibited in any case – as ruled hitherto by establisheddistribution systems.

case law –, but also that cross-border sales within theshould also be reviewed for compliance with this case

EEA that are basically permitted may not be restricted bylaw. (Brecht)

Existing

distribution systems

other contractual arrangements in such a way that it may

I. Infringement proceedings / 3. Cross-supplies within a selective distribution system

94. Use of the ‘schufa-anwalt.de’ domain for legal services infringes rights

to the SCHUFA trademark
Munich I District Court, judgment of 25.06.2020, 17 HK O 3700/20

BACKGROUND
The plaintiff, a well-known credit protection agency, is thewhen a legitimate request is made. The defendant is anproprietor of the SCHUFA trademark registered for suchattorney-at-law and offered legal services via his

services. SCHUFA Holding AG issues credit rating re-www.schufa-anwalt.de website, which included the re-ports, provides individuals and companies with copies ofmoval of negative information kept by the plaintiff.

the data held on them, and erases negative data entries

DECISION
The District Court granted the plaintiff’s application for aoverlap in the respective services offered by the parties

temporary injunction prohibiting the defendant from us-

and because use of the ‘schufa’ element suggests thating the ‘schufa-anwalt.de’ domain, inter alia. The defend-

there is at least a business association between the par-ant lodged an appeal against the injunction order, basingties. The plaintiff, furthermore, could claim protection

his case on the exception specified in Section 23 (1) No.

based on the notoriety of its trademark.

2 of the Trademark Act (MarkenG) and arguing that thedomain name was purely a descriptive reference to the

The limit to protection imposed by Section 23 (1)legal services he offered to potential clients.

MarkenG does not take hold. The reference to SCHUFA
is made not merely to inform about the features of the

The District Court upheld the temporary injunction withlegal services being offered, particularly since there is no

regard to use of the domain name.

specific field of law called ‘Schufa law’. Nor is use of the
SCHUFA trademark necessary in order to offer legal ser-

The Court affirmed, firstly, that the domain name was be-vices relating to the removal of negative entries. Section

ing used as a distinguishing mark. It served as an indica-23 (2) MarkenG also stands in the way of such use, in anytion of origin in respect of the legal services performed

event, because such use is not consistent with honestby the defendant. Although a name is not being used aspractices in industry and commerce. The domain has aa trademark if it is used merely as a generic term, suchstrong advertising impact, and the defendant, finally, usesthat the relevant public would expect information about

its domain for its own product labelling.

that generic term, the name ‘SCHUFA’ is not such a generic term. An infringement within the meaning of Section 14 MarkenG has thus been committed, as there is an

ASSESSMENT
Infringement claims based on a trademark can only be as-

unfounded, in contrast, if the domain merely functions asserted in the case of an actively used website if the domain

an address, or if the relevant public views the name as aname is used as a distinguishing mark or trademark and ismerely descriptive indication, in which case they expect in-therefore understood as an indication of origin. Claims areformation about the concrete statement, but not a special

10

I. Infringement proceedings / 4. Use of the ‘schufa-anwalt.de’ domain for legal services infringes rights
to the SCHUFA trademark

product offering from a specific provider. The Federal Court

without such information being involved. The presentof Justice did not see any distinctive function in the use ofcase can be delineated from the case before the Upperthe ‘zappa.com’ domain, therefore, because the website

District Court in Hamburg, however, because the Ham-

offered nothing more than information about Frank Zappa,

burg case was about naming a ‘formless’ grant of loan,

the musician (Federal Court of Justice, judgment of 31.05.

and the Munich case was about legal services being of-2012, I ZR 135/10 – ZAPPA). A distinctive function would

fered in connection with the SCHUFA trademark. The ar-have required that products such as audio media or mer-gument set out by the Munich I District Court regarding

chandise are also offered specifically on the website. So it

the possible authorisation of the defendant’s legal ser-is always a case-by-case decision when a domain name isvices by the plaintiff is therefore worthy of note, indeed.

used as a trademark.
If it is established that a mark is used as a trademark, a
The decisive argument set out by the Munich I District

further aspect to be considered is whether the limit toCourt was that there is no such field of law as ‘Schufa

protection according to Section 23 (1) No. 2 MarkenG

law’, so the reference to the name SCHUFA in the do-takes hold if the features or characteristics of a productmain name can only be understood as a trademark. A

are addressed as a descriptive indication. This rule is in-more in-depth rationale for the judgment would havetended to allow all economic operators to use descriptive

been welcome here. The Hanseatic Upper District Court

indications for their products. To do so, however, use of

in Hamburg, for example, did not consider the domain

a third party’s mark must specifically designate the fea-

name ‘schufafreie-kredite.de’ as constituting use of thetures of the products in question. Whether this can bename SCHUFA as a trademark. ‘SCHUFA information’ isasserted in the case under consideration seems question-a term in widespread use and can be understood as a de-able, however, because it is not immediately apparent

scriptive term in the context of a loan being granted,

from the domain name what the specific services relating

which is why the primary issue is a special form of loan

to SCHUFA might be. (Ebert-Weidenfeller)

I. Infringement proceedings / 4. Use of the ‘schufa-anwalt.de’ domain for legal services infringes rights
to the SCHUFA trademark

11

ELIGIBILITY FOR PROTECTION / CANCELLATION PROCEEDINGS / OPPOSITION PROCEEDINGS
5. Taking probable types of use into consideration when assessing the distinctiveness of a markFederal Court of Justice, court order of 30.01.2020, I ZB 61/17 – #darferdas? IIBACKGROUND
The discussion below follows on from previous discus-

clothing. The German Patent and Trademark Office andsions in the last couple of issues of our ‘Recent Case Law

the Federal Patent Court both rejected the application due

in German Trademark Law’, in which we discussed theto lack of distinctiveness and on the grounds that theFederal Court of Justice’s order for referral and subse-‘#darferdas?’ sign printed on the front of a T-shirt is un-quently the ECJ judgment on distinctiveness of thederstood as purely decorative, or as a topic of discussion‘#darferdas?’ mark. The Federal Court of Justice referredon the question ‘Darf er das?’ (‘Is he allowed to do that?’),a question to the ECJ relating to interpretation of Article 3

and definitely not as an indication of origin. In its appeal(1)(b) of the Trademark Directive 2008 (now Article 4

on a point of law, the trademark applicant complained that

(1)(b) of the Trademark Directive). The Federal Court ofthe previous instances had only focused on one possible

Justice wanted to know, in particular, whether a sign has

form of use, whereas no consideration was given to otherdistinctiveness when there are practically significant andforms of use, such as sewing on the mark in the form ofobvious ways of using it as an indication of origin for thelabels. The question thus raised is whether consideration

goods and services, even if this is not the most likely formshould also be given to such forms of use that, although

in which the sign is used.

not obvious in the specific case, may well be significant
and plausible in connection with the sector concerned.

The basis for the order for referral was the refusal to register the ‘#darferdas?’ trademark for various items of

DECISION
Following the ECJ ruling that all the relevant facts and cir-eration, in contrast. Given that, in addition to the decora-

cumstances must be taken into consideration when reg-tive use of the ‘#darferdas?’ mark, there may also be

istering a trademark, including all the likely types of use

some other relevant use in the case under consideration,of the trademark for which application is filed, the Federal

particularly in the form of a label as commonly used in the

Court of Justice has now granted the trademark appli-

clothing industry, then that form of use must also be in-cant’s appeal on a point of law.

cluded in the overall assessment of the trademark’s distinctiveness. That it is not actually obvious that the markIn line with the ECJ’s observations, the Federal Court ofis being used on a label or the like, but that its use as a

Justice ruled that consideration must be given to all thosedecorative element on the front of items of clothinguses that are of practical relevance for the respective in-seems far more obvious, is of no relevance when as-

dustry. Uses which are either of no practical significancesessing eligibility for registration, however.

or which appear unlikely are basically ineligible for consid-

12

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 5. Taking probable types
of use into consideration when assessing the distinctiveness of a mark

ASSESSMENT
If the distinctiveness of a mark is at issue, it is still not

Whether or not the form of use – insofar as it is basicallynecessary to take every conceivable use into considera-

an obvious possible way of using the mark – seems un-tion, but only those for which there is a practically sig-

likely in relation to the specific circumstances of the in-nificant or obvious possibility or likelihood of the sign

dividual case is of no relevance, in contrast. If the trade-

being used for the goods in question. When evaluating

mark proprietor uses its trademark in a way that is

the individual case, it is also necessary to take the cus-purely decorative or is not indicative of origin in any

toms of the respective economic sector into considera-

other way, then this must be taken into account in thetion.

context of the assessment of genuine use, which is conditional on use as a trademark. In trademark disputes

However, if registration is refused because a form ofalso, this point will then have to be given due consider-use is practically irrelevant, it is up to the proprietor of aation by examining for genuine use as a trademark.

trademark to prove that the use in question does indeed

Trademark proprietors should also pay particular atten-

have the required relevance in practice, or that it is attion to this aspect where a mark can also or primarily beleast likely that the economic sector does in fact under-used for decorative purposes, so as to prevent any loss

stand the specific form of use as a distinctive featureof the trademark and to also be able to assert the trade-due to particular circumstances.

mark in the event of infringement. (Holderied)

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 5. Taking probable types
of use into consideration when assessing the distinctiveness of a mark13

6. Protectability of chocolate packaging
Federal Court of Justice, court order of 23.07.2020, I ZB 42/19 – Quadratische Tafelschokoladenverpackung II

BACKGROUND
Three-dimensional shapes may be protected as trade-

Ritter Sport chocolate (registered as trademark No. 398

marks, in principle, unless the trademark consists exclu-

69 970). Mondelez, the American confectionery producer

sively of a shape that ‘gives substantial value’ to thethat owns Milka, submitted a request for cancellation of

goods. According to Section 3 II No. 3 of the Trademark

the trademark to the GPTO on 25 November 2010, on the

Act (MarkenG), such goods are excluded from protection

grounds that the contested trademark consisted exclu-

as a trademark if it is evident ‘in view of objective andsively of a shape that was necessary to achieve a tech-reliable aspects’ that the decision by consumers to buy

nical effect (Section 3 II No. 2 MarkenG). The GPTO dis-

the goods in question is influenced to a large extent by

missed that request for cancellation. Mondelez then with-this (artistic or decorative) value.

drew its request for cancellation in accordance with Sec-The question as to what role the shape of packaging plays

to protection pursuant to Section 3 (2) No. 2 MarkenG andfor consumers, and what value is associated with it, wasSection 3 II No. 3 MarkenG in the re-opened appeal pro-the subject of proceedings before the Federal Court ofceedings before the Federal Patent Court. Mondelez ar-

Justice in the long-standing legal dispute between Ritter

gued that the characteristic feature of Ritter Sport,

Sport and Mondelez, the producer of Milka chocolate.

namely its square shape, is determined by the nature oftion 3 II No. 2 MarkenG and instead invoked the obstacles

the product itself (Section 3 II No. 1 MarkenG) and gives
In 2001, Ritter, the chocolate manufacturer, applied for

it a substantial value (Section 3 II No. 3 MarkenG).

trademark protection of the famous square shape of its

DECISION
The Federal Patent Court granted Mondelez’ request ini-same time, the case was referred back to the Federal Pa-

tially and ordered that the trademark must be cancelled be-tent Court for a decision on whether the square shape iscause it was ineligible for protection pursuant to Sec-the characteristic feature of Ritter Sport which ‘gives sub-tion 3 II No. 1 MarkenG (BPatG GRUR 2017, 275 – Quad-stantial value’ to the goods and substantiates the reason

ratische Schokoladenverpackung).

for refusal of protection pursuant to Section 3 II No. 3
MarkenG. The Federal Patent Court agreed with Ritter

In 2017, however, the Federal Court of Justice took a dif-

Sport and ruled that the contested shape did not differ sig-

ferent view and ruled that the shape of the chocolate pernificantly from the usual shape of such goods. Further-se had no benefit for a consumer and therefore was not an

more, the Federal Patent Court, in accordance with theessential functional feature. Although Ritter Sport’s con-Federal Court of Justice, found that there was no reason

tested 3D trademark was characterised by the square

for refusal of protection pursuant to Section 3 II No. 1

shape of the packaging, that feature of Ritter Sport choco-

MarkenG. The main use of chocolate consists in consum-

late did not constitute an essential ‘functional characteris-ing the chocolate, and in that regard it is of secondary im-tic’ deriving from the nature of the product itself. Trade-portance whether the packaging is square or rectangular.

mark protection was therefore affirmed initially, because
the reason for refusal of protection pursuant to Section 3 II

The subject of the appeal proceedings before the Federal

No. 1 MarkenG was not present (BGH GRUR 2018, 404 –Court of Justice was finally confined to the reason for re-

Quadratische Tafelschokoladenverpackung I). At thefusal of protection pursuant to Section 3 II No. 3 MarkenG.

14

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 6. Protectability of
chocolate packaging

The decision was based on assessment criteria such as the

The fact that the square packaging is a design with special

type of product category in question, the artistic value ofaesthetic impact does not stand in the way of the shape inthe shape in question, its different nature compared toquestion being protected as a trademark. The decision ofother shapes generally used on the respective market, aconsumers to buy the product in question is not deter-

significant price difference compared to similar products,

mined to a decisive degree by this particular shape. The

or the development of a marketing strategy that mainly

aesthetic design appears to consumers purely as an addedemphasised the aesthetic qualities of the respective prod-

ingredient to the product whereas the utility or intended

uct. How the sign is perceived by the average consumer

use is based on other characteristics.

(public perception) is not a decisive factor when determining whether this reason for refusal of protection exists,

Mondelez’ argument that the essential value of the con-even if this can be a useful criterion for assessing the es-

tested shape derives from its high level of acquired distinc-sential features of the trademark.

tiveness and the ensuing competitive advantage for the
trademark proprietor was not successful either. The fact

The court ruled that the square shape of the contested

that Ritter Sport pursues a marketing strategy with its ad-

packaging compared to rectangular packaging with sides

vertising slogan ‘Quadratisch. Praktisch. Gut.’ (‘Square-of unequal length does not have any relevant artistic or de-shaped. Practical. Good’) that is specifically related to thesign value and did not make the shape of the product sig-

contested shape of the product or the shape of the pack-nificantly different. The shape does not differ significantly

aging is unimportant. The question as to whether thefrom the usual rectangular shape of chocolate bars andshape of the product has a special commercial value be-

therefore corresponds to the relevant ‘basic shape’; thecause it has established itself in the trade as an indicationsquare is a special form of the rectangle. The aestheticof the product’s origin has no relevance in this context.

value of such a product shape cannot be so significant, thecourt argues, that the primary function of the trademark,namely to indicate a specific commercial origin, is no longer
performed. Consumers view the shape of the Ritter chocolate bars as an indication of the origin of the chocolate andits quality.

ASSESSMENT
With its most recent decision, the Federal Court of Jus-

Justice makes the refusal of protection pursuant to Sec-

tice has countered Mondelez’ argument that the acquiredtion 3 II No. 3 MarkenG, among other factors, subject todistinctiveness (Section 8 III MarkenG) of Ritter Sport’s

the question which particular features exert a decisive in-square packaging was an essential feature that gave

fluence on the consumer’s decision to buy the product.

value within the meaning of Section 3 II No. 3 MarkenG

The question as to how the essential value of a trademark(in para. 46). A decision as desired by Mondelez mightis to be determined and which criteria are to be applied inhave produced a situation where shape marks, which are

future when decisions are made by the courts and trade-

competitively very successful and, as a result of their use,

mark offices, has not by any means been finally resolved.

particularly distinctive, would be liable to cancellation un-

It must be assumed that it will remain a challenge for theder Section 3 II No. 3 MarkenG on account of their com-trademark offices and courts to elaborate clear-cut criteria

mercial success. Commercially valuable trademarks

for the individual barriers to protection, to apply those cri-based on the shape of a product would then be generally

teria and then to communicate them in a comprehensible

ineligible for protection. However, a new scope for inter-manner to the parties involved. (Böhm)

pretation is opened by the fact that the Federal Court ofII. Eligibility for protection / cancellation proceedings / opposition proceedings / 6. Protectability of
chocolate packaging

15

7. Bad faith constituted by applying for a trademark without any intention ofusing itEuropean Court of Justice, judgment of 29.01.2020, C-371/18 – Sky ./. SkyKick

BACKGROUND
The three plaintiffs, all of them members of Sky, the pay

terms, in some cases for registered goods that are quite

TV group, originally filed an action with the High Court ofobviously unrelated to the commercial purpose and with-

Justice (England and Wales) against two associated Brit-out any intention of using the trademark in relation toish companies by the name of SkyKick. Sky accused

those goods (whips, bleaching preparations, …) and for

SkyKick of infringing various trademarks held by Sky. In

extremely broad terms such as ‘computer software’ orretaliation, SkyKick filed counter-claims for cancellation‘telecommunications services’? As it was a matter of in-and complained about the very broad list of goods andterpreting European law, the High Court referred theservices to which the Sky trademarks in suit related. To

question to the European Court of Justice (ECJ) in a pre-put a point on it, SkyKick raised the question: May Sky

liminary ruling procedure.

populate the register in 22 classes for more than 8,000

DECISION
The ECJ answered the first referred question concerningand consistent’ indicia showing that the applicant had thethe expansively broad lists of goods and services by rulingintention of either

that a registered trademark cannot be cancelled solely on
the basis of its broad and imprecise list of goods and ser-•vices. This is not one of the reasons for cancellation as
exhaustively listed in the EUTMR. Nor is the expansive
list contrary to public order.

‘undermining, in a manner inconsistent with honest
practices, the interests of third parties’, or•of obtaining, without even targeting a specific third
party, an exclusive right for purposes other thanthose falling within the functions of a trademark.

The second, more interesting question referred to the
ECJ concerned bad faith due to the obvious lack of any

The ECJ is also explicit in stating that bad faith may con-intention to use the trademarks for certain goods or ser-ceivably relate to only part of the list of goods and ser-vices, was answered by the ECJ as follows: It does notvices.

suffice for the presumption of bad faith that the trademark proprietor does not carry on a commercial activity

After the matter was referred back to the High Court, theinvolving the registered goods and services. However, ancontested trademarks were subsequently cancelled inapplication filed with no intention of using the trademark

part.

may be in bad faith if there are also ‘objective, relevant

16

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 7. Bad faith constituted
by applying for a trademark without any intention of using it

ASSESSMENT
The concept of bad faith when applying for a trademark

The logical consequence of this decision is that caution

is not defined by law. Various criteria have been elabo-

should certainly be exercised when registering an overly

rated in case law (e.g. verifiable awareness of the regis-

broad list of goods and services without commercial logic

tered sign being used by a third party, where there is an(e.g. as a defensive trademark). The criteria for cancella-intention to inflict harm without having any intention totion due to bad faith as manifested by a lack of intention

use the sign oneself). If registration is based on commer-

to use the trademark in relation to certain goods and ser-cial logic, this would suggest there is no bad faith. The

vices are tough, nevertheless: the list may still be broad

question as to whether an applicant is acting in bad faithin scope, but not totally absurd, or indiscriminately broadmust always be examined on a case-by-case basis.

for no understandable reason. Even then, there is only athreat of cancellation in respect of that specific part of the

The answer to the first referred question concerning thelist.

continued permissibility of a broadly worded list of goods
and services has prompted sighs of relief from trademark

When asserting trademarks registered for a broad range

proprietors who were worried about having to work nightof goods and services, the list should be carefully

shifts to check all their lists and make them more precise.

checked for any weaknesses, in any case – and the con-Broad terms such as ‘computer software’ or ‘telecommu-

verse applies with regard to potential avenues of attack

nications services’ are still allowed (in contrast to jurisdic-

against opponents’ trademarks.

tions such as the U.S.A., for example, where the USPTO
routinely requires very precise wording).

The outcome of the ‘Monopoly’ case currently pending
before the Court of Justice of the European Union (caseThe answer to the second referred question, on the otherno.: T-663/19) will also be of particular interest. The issue

hand, gives rise to another set of cases where a trade-in that case also is that of bad faith when filing a trade-mark might be (partly) cancelled due to bad faith: althoughmark application, but on the basis of repeat applications.

the decision emphasises the protective period for genu-

It thus relates to the frequently occurring case, in prac-

ine use to be shown, in that it must be possible for atice, where a trademark application is filed once again

trademark applicant to register a broad list, (partial) can-shortly before or after expiry of the five-year protective

cellation is nevertheless possible – subject to high hur-period for genuine use to be shown, in order to artificiallydles – if there is a verified lack of any intention to use thebenefit from a further protective period. A decision is ex-

trademark, and there are further indications that the ap-

pected sometime in 2021. (Kampmann)plication is made in bad faith. This is the case, in particular, when trademark registration is pursued contrary to its
function as an indication of origin, i.e. contrary to the purpose of marking goods and services with an indication oforigin, but instead to inflict harm on third parties.

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 7. Bad faith constituted
by applying for a trademark without any intention of using it

17

8. An ‘X’ at the end makes no difference yet – The concept of genuine use in opposition proceedings, and assessing the similarity of signs involving highly descriptive elements
Federal Court of Justice, judgment of 06.02.2020, I ZB 21/19 – INJEKT/INJEXBACKGROUND
In opposition proceedings, the Federal Court of Justicecision, the concept of genuine use in opposition proceed-

had to decide whether the signs ‘INJEKT’ and ‘INJEX’ areings is discussed in detail, in addition to some formal

sufficiently similar to assume a likelihood of confusion inquestions. Its subsequent comments concerning thethe case of identical goods, namely medical syringes. The

similarity of signs involving highly descriptive sounds are

German Patent and Trademark Office and the Federalof key importance. This all sounds like a straightforward

Patent Court had dismissed the opposition. However, thematter, but when looked at in more detail, the decision

Federal Court of Justice referred the matter back to thehighlights the relevance of some interesting and, above

Federal Patent Court for reconsideration and thus as-

all, practical aspects of trademark law.

sumes a likelihood of confusion. In the grounds for its de-

DECISION
In 2012, B. Braun Melsungen AG (B. Braun) filed an op-

without effect, because Injex was able to join the pro-position against the German brand INJEX, held by Injex

ceedings unilaterally without the consent of the oppo-

Pharma AG (hereinafter ‘Injex AG’), on the basis of its IN-

nent, pursuant to Section 28 (2) of the Trademark Act

JEKT trademarks, which were registered for medical in-(MarkenG). This is efficient and gives due consideration

struments, inter alia. Its trademarks were also registered

to the interests of the parties, since the new party mustfor medical instruments, especially needleless injection

accept, in return, that all the procedural acts of the former

systems. In May 2015, insolvency proceedings weretrademark proprietor must now be considered its own.

opened against the assets of Injex AG. Without interrupting the opposition proceedings, the German Patent andIn terms of substantive law, this results in some interest-

Trademark Office rejected the opposition in January

ing comments on all three factors involved when examin-

2016. During the appeal proceedings brought by B.

ing for a likelihood of confusion, namely the distinctive-

Braun, the contested trademark INJEX was transferred toness of the opposing INJEKT trademark, the similarity ofInjex GmbH (hereafter ‘Injex’). As genuine use of the IN-

signs, and the similarity of goods.

JEKT trademark was contested, B. Brown presented extensive evidence. As a result, the Federal Patent Court

When examining for similarity of goods, it is essential toconcurred with the German Patent and Trademark Of-

assess the genuine use of the INJEKT trademark. A dis-fice’s decision and dismissed the appeal due to dissimi-

tinction must be made here between opposition/infringe-

larity of the signs.

ment proceedings on the one hand, and cancellation proceedings on the other. In cancellation proceedings, theWith regard to the formal questions, the Federal Court ofconcept of ‘identical product range’ applies. This com-

Justice clarifies that the insolvency was not an obstacle

mercial perspective is urgently required. An appropriate

because the INJEX trademark was no longer part of thebalance can then be struck between the general interest

insolvency estate at the time of the oral proceedings. The

in keeping the register free of unused marks, and thechange in party due to transfer of the INJEX trademark istrademark proprietor’s interest in being able to develop

18

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 8. The concept of genuine
use in opposition proceedings, and assessing the similarity of signs involving highly descriptive elements

them within the same range of goods and to remain com-

Court negated such similarity, because the eligibility for

mercially flexible in that respect. In opposition or infringe-

protection of the opposing trademark INJEKT consisted

ment proceedings, on the other hand, the term ‘identicalsolely in the replacement of the consonant ‘C’ in the verb

goods’ applies. Only the goods that are specifically used‘inject’ by a ‘K’. This modification is not found in the con-are taken into account here, otherwise trademark propri-tested trademark ‘INJEX’; the last letter, ‘T’, is also miss-etors who file a narrowly defined, precisely worded list ofing. Instead, the younger sign contains the distinctive let-goods in the interest of a ‘fair’ register would be disad-ter ‘X’. The Federal Court of Justice rejects this assess-vantaged compared to those who submit a list containing

ment, because the identical beginnings with ‘INJE’ werebroad generic terms. In this specific case, therefore, themasked out. However, it is not permissible, when com-sale of two-part disposable syringes was considered toparing the signs, to disregard from the outset an element

be genuine use of ‘medical syringes’ as an identical spec-of a unitary or composite sign on account of its descrip-

ification of goods.

tive character. The assessment of eligibility for registration would otherwise be taken into consideration several

With regard to the second examination criterion, thetimes – through the back door, so to speak. The Federal

question was whether the opposing trademark INJEKT

Court of Justice is thus diverging somewhat from its es-

can claim an enhanced distinctiveness. The opponent,

tablished legal practice (judgment of 09.02.2012, I ZR

B. Braun, had presented sales figures of approximately

100/10 – pjur/pure) that a similarity of signs may be ab-

12 million Euro over a period of years. However, there

sent in such situations. The clear stipulations of the Euro-was a preponderant lack of conclusions concerning mar-pean Court of Justice in its Roslagsöl judgment (judg-

ket shares. At that point, the descriptive nature of the IN-

ment of 12.06.2019, C-705/17) are thus being imple-

JEKT trademark, deriving from the English verb ‘inject’,mented.

plays an important role for the first time. Reading between the lines, this sounds as if the INJEKT trademark’s

It is important, therefore, for correct legal interpretation,

eligibility for registration could also have been assessedthat the identical descriptive element ‘INJE’ in the signs

differently if application had been filed in 2000. Once a

is not taken into consideration until the final overall as-

trademark has been registered, it must be assumed that

sessment, and does not lead to negation of a similarity of

it is eligible for protection, particularly since the INJEKT

signs. Not until the final analysis can the descriptive ele-

trademark has been registered for more than ten years

ments be given a lower weighting. A risk of confusion will

and therefore can no longer be contested on absolute

not be established in many cases if the signs are identicalgrounds for refusal of protection (Section 50 MarkenG,

solely in this one element. In the majority of cases, there-

end of sub-section (2)). The Federal Court of Justice con-fore, the shift in examination focus will not produce any

cludes that the descriptive elements of the INJEKT trade-

different results. In this specific case, the Federal Court

mark weaken its distinctiveness, which in turn was thenof Justice then suggests that the final consonants areenhanced, however, by the intensity of use that wasalso phonetically similar and that a conceptual similarity

shown. The conclusion to be drawn, therefore, is that an

also results from the shared reference to the terms ‘in-average distinctiveness is to be assumed.

ject’ or ‘Injektion’. The matter was therefore referredback to the Federal Patent Court for reconsideration and

Finally, the similarity of signs is evaluated as the third fac-

a different decision.

tor indicating a likelihood of confusion. The Federal Patent

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 8. The concept of genuine
use in opposition proceedings, and assessing the similarity of signs involving highly descriptive elements

19

ASSESSMENT
The Federal Court of Justice decision takes us throughcannot be prohibited, as a basic principle, from using de-some challenging areas of formal and substantive legal

tails that are descriptive of the relevant goods. Anotherinterest. For the practitioner, the formal issues involved

limit to the principle that purely descriptive elements can-when appeal proceedings are taken over, with simultane-

not be excluded from the outset from the assessment ofous insolvency proceedings against one party and thesign similarity is encountered by trademarks consisting oftransfer of trademark rights, are still routine legal matters.

several individual elements (e.g. Yoo Food), or composed

The substantive legal issues, in contrast, play a key roleof several elements forming a single word (e.g. Yoofood).

in day-to-day provision of legal advice, even at an early

The overall impression conveyed by these ‘complex’

stage of the client relationship. The two central state-signs may be dictated by a single element. In its court

ments in the grounds for the decision should be takenorder of 09.07.2020, I ZB 80/19 – YOOFOOD/YO, for ex-

into consideration early on, when selecting a new productample, the Federal Court of Justice ruled that the compo-

name and filing the respective trademark application.

site, single-word sign ‘YOOFOOD’ is characterised by thesingle distinctive element ‘YOO’, because the simply de-Firstly, it can be seen once again how important the word-

scriptive element ‘FOOD’ can be disregarded as a mereing of the list of goods and services is, not only for sub-reference. Even though descriptive elements cannot besequent enforceability against third parties, but also fordisregarded from the outset, they are generally assigned

defence against third-party attacks on one’s own trade-a lower weight when examining for similarity of signs.

mark. The details in the list must be chosen with care.
Consideration must be given to the legal concept of iden-

As a result, slight modifications of a directly descriptivetical product range, in cancellation proceedings and in rev-

indication – e.g. by changing individual letters to produce

ocation proceedings due to a lack of genuine use, and toa ‘distorted’ text or phonetic sound – offer some interest-

the criterion of identical goods in the case of oppositioning opportunities to register trademarks that are immedi-

and infringement proceedings. A list should not only

ately understood by the relevant publics being addressed.

specify clearly and precisely the relevant products of the

The advantage of these designations in communication

applicant, but should also list related generic terms, so aswith customers is that they speak for themselves and do

to be able to defend the similar range of goods in cancel-

not require any further explanation. The scope of protec-

lation proceedings brought because of a lack of genuine

tion conferred by these ‘self-explanatory’ trademarks isuse. This provides a list of goods and services with a ‘sureminimal, by nature, but registration may well produce un-footing’ on a long-term basis, in the interests of the trade-certainty among competitors. It is difficult for them tomark proprietor.

judge which language modification is sufficient to designate their own product, without infringing the registered

Secondly, some interesting possibilities ensue from thetrademark right. The fact that this is a question not of sim-case law confirmed by the European Court of Justice,ilarity of signs, but of the overall analysis of the likelihood

namely that the scope of protection conferred by trade-of confusion, makes assessment even more precarious.

marks with highly descriptive elements may not be lim-

To prevent the risk of trademark infringement, competi-

ited to the identical part. Slight linguistic modifications

tors often evade the issue by using different names. Thispermit trademark registration in individual cases. This

broadens the scope of protection conferred by the trade-case law thus has beneficial impacts for the trade mark

mark – not in legal, but in factual terms. This is certainly

proprietor, first of all.

one reason why trademarks with highly descriptive elements will continue to play an important role in the course

In infringement proceedings, the principle comes upof trade and will continue to occupy the trademark offices

against its limits in the form of the limitation on protection

and courts. (Ehlers)

stipulated in Section 23 (1) No. 2 MarkenG. A third party

20

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 8. The concept of genuine
use in opposition proceedings, and assessing the similarity of signs involving highly descriptive elements

9. Descriptive name for ice cream to be kept available for general use (Plombir)
Federal Patent Court, court order of 04.03.2020, 28 W (pat) 27/13

BACKGROUNDThis case related to the ‘PLOMBIR’ trademark, applica-

very popular and fatty ice cream in Russia that has to havetion for which was filed on 8 April 2009, and which wasa special composition.

registered on 7 July 2009. ‘PLOMBIR’ is the trademark ofa brand of ice cream that is well known to at least some

The GPTO Trademark Division ordered that registrationgroups of final consumers.

for these goods be revoked. The Federal Patent Court dismissed the appeal. The proprietor of the contested trade-

The applicant had requested cancellation of the trade-mark lodged an appeal against that decision, which had

mark registration, inter alia in respect of ‘eggs, milk, milk

to be heard without having to be admitted. In its court

products, butter, cream, yoghurt, milk powder for nutri-order of 6 July 2017, the Federal Court of Justice set

tional purposes; desserts made of yoghurt, curd oraside the Federal Patent Court order and referred thecream; coffee, cocoa; chocolate and chocolate products;

case back to the latter court for a new decision. The ap-

ice cream; flavourings for foods’ and based that request

peal that was then lodged was also unsuccessful and theon Section 8 (2) Nos. 1 and 2 of the German Trademark

trademark is still cancelled.

Act (MarkenG), as ‘PLOMBIR’ is the generic name for a

DECISION
The fact that the ‘PLOMBIR’ trademark is a combination

trade is to be considered the relevant trade public. Theseof Russian words and that most of the domestic public

specialised domestic circles involved in international

probably does not know the exact meaning of the wordtrade can be assumed to be capable, in principle, of recog-‘PLOMBIR’ does not preclude affirmation of the absolutenising clearly descriptive information in foreign languages

reason for refusal pursuant to Section 8 (2) No. 2

as well. This is to be assumed, in any case, for languages

MarkenG, because a descriptive name in Russian mayof foreign countries with which trade relations exist in re-have to be kept freely available even if it is not understood

spect of the relevant goods and services.

by a large proportion of the general domestic public, andnot, in particular, by the majority of average consumers.

Since it is sufficient, in view of the established case law

The absolute reason for refusal pursuant to Section 8 (2)of the ECJ, that the sign is a suitable indication on theNo. 2 MarkenG does not require any unanimous or pre-domestic market, it is not even necessary that the rele-

dominant public perception; rather, a descriptive charac-vant trade public also imports ice cream, and specificallyter is already relevant even if it is only recognised by spe-

Russian ice cream into Germany, or imported it at thecialised domestic circles involved in international trade.

time of registration. It is assumed, therefore, that the

Even the knowledge held by a relatively small part of the

trader or buyer dealing with the Russian food trade knows

involved public can thus prevent trademark registration in

the names used in the food sector there, regardless of

individual cases. This assumption has to be made regard-whether he has already started to import these goods.

ing the ‘PLOMBIR’ sign and in respect of the trade public.
The ‘PLOMBIR Sovjetskij’ trademark was cancelled, acIce cream is a product aimed at the general consumer andcordingly, for all goods which are intended to be used as

regularly purchased by the same, so the general foodan ingredient in the production of ice cream.

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 9. Descriptive namefor ice cream to be kept available for general use (Plombir)

21

ASSESSMENT
The decision confirms that language skills even among

officio in future, or can be successfully asserted in thesmall parts of the specialised circles may be sufficient tocancellation proceedings.

fulfil the absolute ground for refusal pursuant to Section 8(2) No. 2 MarkenG. By reference to the language skills ofThis argument can be used to prevent the kind of abuse

the German professional circles, which are assumed toof trademark law, where companies arrange for genericbe abstract, it no longer matters whether and to what ex-terms to be registered as trademarks with the intention

tent parts of the German population are actually proficientof obstructing other suppliers, thereby exploiting the fact

in the language concerned and recognize the descriptivethat examiners cannot easily recognise the descriptive

content of the sign. It is sufficient, rather, to establish thatcharacter of such terms.

there are trade relations with the country concerned in
respect of the goods and services in question.

Now that the ECJ has also upheld the rejection of the application, in its judgment of 18.06.2020 (C-142/19) relat-

It can therefore be expected that, in the case of descrip-

ing to the parallel European Union trademark application

tive foreign-language names, an absolute reason for re-‘PLOMBIR’, it can be assumed that there is establishedfusal of protection may be increasingly established exlegal practice in this regard. (Förster)22

II. Eligibility for protection / cancellation proceedings / opposition proceedings / 9. Descriptive namefor ice cream to be kept available for general use (Plombir)

AUTHORS
Rainer Böhm
Dr. jur. Constantin Brecht, LL.B.
Dr. jur. Julian Eberhardt, LL.M.
Dr. jur. Andreas Ebert-Weidenfeller
Nicol Ehlers, LL.M.
Harald Förster
Yvonne Holderied
Dr. jur. Stefanie Kampmann
Dominik Kirschner

EDITING & LAYOUT
Katrin Hellmann

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

Photo 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
Inside back cover
Munich location:© ADRIAN BECK PHOTOGRAPHER
Berlin location:© Imagebroker / Alamy Stock Foto

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