BGH; 2016-06-02; I ZR 75/15
Decision by national courts in the field of European Union law — ECLI:DE:BGH:2016:020616UIZR75.15.0
Date: 2016-06-02
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82016DE0602(51)_ENG_SUMJURE
JURE summary
JURE summary
The case concerns the protection of trademark rights and the increased distinctiveness in case of presence of the trademark in further countries on which the Bundesgerichtshof (hereinafter ‘the Supreme Court’) has ruled.
The case concerns a dispute between a plaintiff resident in Switzerland and a defendant resident in Poland. The plaintiff has been selling air fresheners in the form of a stylised fir tree since the 1960s and is the owner of the plaintiff's trademark – IR figurative mark. The defendant is the owner of the IR word and figurative mark.
The plaintiff is applied for the defendant's permission for the withdrawal of protection of its IR word/figurative mark for the territory of the Federal Republic of Germany, based on the plaintiff's trademark. The Landgericht Munich (hereinafter ‘the Court of First Instance’) dismissed the action. The appeal of the plaintiff was unsuccessful. With the admitted revision, whose refusal the defendant requests, the plaintiff continues to pursue his application for relief.
The international jurisdiction of the German courts in dispute arises from Article 22(4) of the Brussels I Regulation (1). The claim concerns the registration or validity of trade marks which must be brought before the courts of the Contracting State for whose territory protection is to be withdrawn.
The Court of Appeal held that there was no direct likelihood of confusion between the mark being claimed and the mark in dispute. The question whether there is a likelihood of confusion within the meaning of Article 9(1)(2) of the Markengesetz (2) must be assessed comprehensively, taking into account all relevant circumstances of the case. According to the settled case-law of the Court of Justice of the European Union, the inherent distinctiveness of a mark is determined by its capacity to be remembered by the relevant class of persons, irrespective of the use which has been made of it, as a distinctive sign for the goods or services of an undertaking, and thus to distinguish those goods or services from those of other undertakings (3). The original distinctiveness of a trademark can be enhanced for the domestic public by the fact that the trademark is not only present in the domestic market but also in numerous other countries.
Because the Court of Appeal did not take into account the geographical spread of the claimed trademark outside Germany when examining the possible enhancement of the original distinctiveness through use, the Supreme Court decided to set aside the judgment of the Court of Appeal and refer the case back to the Court of Appeal for a new hearing and decision.
(1) Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.
(2) Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Law on trade marks and other distinctive signs).
(3) Judgment of the Court of Justice of 21 January 2010, Audi/HABM, C-398/08, ECLI:EU:C:2010:29, paragraph 33.