OLG Düsseldorf; 2020-08-06; 20 U 26/19
Decision by national courts in the field of European Union law — ECLI:DE:OLGD:2020:0806.20U26.19.00
Date: 2020-08-06
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82020DE0806(51)_ENG_SUMJURE
JURE summary
JURE summary
As the owner of both the German word mark and the European Union word mark ‘BANDIT’ (hereinafter ‘the plaintiff’), the plaintiff requested that a Swedish company that was selling safety products for motor sports, including with shipping to Germany (hereinafter ‘the defendant’), refrain from using the sign ‘BANDIT’ in the course of trade under threat of administrative penalties.
The Landgericht (hereinafter ‘the Court of First Instance’) as the court seised under Article 7(2) of the Brussels I Regulation (recast) upheld the action and ordered the defendant to cease and desist from using the sign ‘BANDIT’. It found that there was a likelihood of confusion between the plaintiff's and defendant's signs and affirmed the jurisdiction of German courts, as the defendant also supplied its products to Germany via an English-language website. The Court of First Instance dismissed the defendant's counterclaim for cancellation of the German trade mark on the basis of a bad faith application, as there were insufficient sales figures for the defendant's ‘BANDIT’ helmets in Germany to establish a market position worthy of protection.
The defendant lodged an appeal with the Oberlandesgericht Düsseldorf (hereinafter ‘the Court of Appeal’), claiming that the plaintiff had only registered the ‘BANDIT’ trade mark in order to exploit the good reputation of the defendant's ‘BANDIT’ helmets and to oust the original products from the market. The ‘BANDIT’ helmets had been on the market since the 1970s and had achieved cult status in motorsport. The defendant emphasised that the plaintiff had not only copied the ‘BANDIT’ sign but had also imitated the design of the helmets. It argued that the plaintiff had deliberately taken action against the defendant and the use of the ‘BANDIT’ sign in order to hinder competition.
The Court of Appeal overturned the judgement of the Court of First Instance and dismissed the plaintiff's claim. It followed the defendant's arguments and ruled that the plaintiff's application for the trade mark ‘BANDIT’ was malicious. The plaintiff applied for the trade mark with the intention of exploiting the defendant's good reputation and damaging its market share. The helmets marketed by the plaintiff under the name ‘BANDIT’ were very similar in design and marketing to the defendant's helmets. The defendant's ‘BANDIT’ brand had been well known in the motorsport scene since the 1970s, particularly among ‘streetfighter’ motorcyclists. Although the sales figures in Germany were low, this was sufficient to establish the defendant's valuable ownership of the trade mark.
The Court of Appeal found that the defendant used the trade mark ‘BANDIT’ as a model designation and that this was also perceived by German consumers as an indication of origin.
The Court of Appeal ordered the plaintiff to consent to the cancellation of the registered trade mark ‘BANDIT’ from register kept by the German Patent and Trade Mark Office.
(1) Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.