OLG Düsseldorf; 2021-01-21; I-20 U 229/20, 20 U 229/20
Decision by national courts in the field of European Union law — ECLI:DE:OLGD:2021:0121.20U229.20.00
Date: 2021-01-21
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82021DE0121(51)_ENG_SUMJURE
JURE summary
JURE summary
A fashion company domiciled in Germany (hereinafter the ‘plaintiff’) sought legal protection claiming that a fashion company domiciled in Denmark, who was the owner of the German trademark ‘Lilly’, (hereinafter the ‘defendant’) unjustifiably prevented a plaintiff’s customer from selling its clothing.
Prior to this dispute, the defendant had filed an action against the plaintiff’s customer due to its sale of a women’s t-shirt produced by the plaintiff with a tag containing the words ‘model: Lilly’ and due to the composition of its online offer and was successful in achieving a cease-and-desist order with a threat of criminal prosecution should the plaintiff’s customer fail to comply with the order. The plaintiff claimed that the above order was unjustified.
The Landgericht Düsseldorf (hereinafter ‘the Court of First Instance’) upheld the application of the plaintiff and prohibited the defendant by the means of a preliminary injunction to take legal action against customers of the plaintiff on the grounds of their usage of the sign ‘Lilly’ on the tags of the t-shirts. The Court of First Instance expressed the opinion that the sign ‘Lilly’ was lacking the ability to be used as a trademark as it was not automatically understood to refer to the brand of the defendant. On the contrary, by adding the prefix ‘model’ it was clear for the end customers that the sign served only as a name of the model for the purposes of the individualisation of a single item of clothing and was not referring to the origin of the t-shirt.
The appeal lodged by the defendant with the Oberlandesgericht Düsseldorf (hereinafter ‘the Court of Appeal’) was not successful.
The Court of Appeal found that the function of the trademark ‘Lilly’ had not been impaired by the sign ‘Lilly’. The origin function of the trademark would have been impaired if a considerable part of the targeted end customers had considered the sign to refer to the origin of the product or services. However, an average consumer was not familiar with the trademark ‘Lilly’ to that extent that the usage of this name would automatically refer to the trademark of the defendant. The reverse side of the tag contained the printed business name of the plaintiff as a producer of the t-shirt. From the overall perspective, the sign ‘Lilly’ represented a mere description of the respective model.
The Court of First Instance was correct to uphold the reasons for the issued preliminary injunction. The original pursuing of the cease-and-desist order by the defendant against the plaintiff’s customer was to be deemed as deliberate prevention and as such, the preliminary injunction could be issued under Article 12(1) UWG (1) without stating and proving the urgency of the case. It was important to note that the issuance of a preliminary injunction without an oral hearing belonged not to decisions which could be automatically enforced in another Member State under Article 39 of the Brussels I Regulation (recast) (2). In practice, it was required that a certain amount of time is granted between the service and the efficiency of a cease-and-desist injunction which should allow the respective party to assert its right to be heard.
The Court of Appeal dismissed the appeal of the defendant against the decision of the Court of First Instance.
(1) Gesetz vom 4. Juli 2004 gegen den unlauteren Wettbewerb (Act against Unfair Competition).
(2) 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.