A Trademarks serves to distinguish one’s own products from the products of competitors by means of an individual sign. If, on the other hand, a graphic or a combination of words is only there to appeal to the aesthetic sense of the buyer and to make the product more attractive, there is no use as a trademark. Is it permissible to apply for a Trademarks just to protect your own decorative use against copiers?

The online store “Adelheid” had the word “Glückspilz” protected as a trademark for various goods such as clothing and household items (DE 3020100684860). The store range includes a wide variety of goods with a “Glückspilz” design, as shown in the following illustration, for example. The product is described as a “lucky mushroom shopping bag”. In the online store, however, “Adelheid” appears throughout with a cloverleaf logo as a Trademarks in the background.

The online store had also protected several other words as Trademarks (“Seemannsbraut”, “Pokalsieger”, “Küchenfee” etc.), but did not use them.

The online store then used the registered Trademarks “Glückspilz” to take legal action against competitors who distributed doormats with a “Glückspilz” decoration and described these products accordingly in the advertising text. The courts seized did not consider the use of the “Glückspilz” design on the products to be trademark use and therefore not a trademark infringement. Only the use of “Glückspilz” in the product description was qualified as a trademark infringement.

The online store was then sued before the Federal Patent Court. The Trademarks were to be canceled because they had been applied for in bad faith. Furthermore, it also lacked the necessary distinctive character.

The Federal Patent Court upheld the action for cancellation. It found that the trademark owner had intended to use the blocking effect of the trademark for an improper purpose. With its trademark registrations, it had wanted to hinder other manufacturers in the customary use of decorative words. Even if the infringement courts saw a trademark infringement in the product descriptions, the trademark owner had nevertheless abused the intimidation effect of the trademark against decorative use. The trademark owner had not expressed the intention to use the trademarks, which had previously only been used decoratively, as trademarks in the future.

The online store appealed against this deletion ruling to the Federal Court of Justice (BGH) and was successful.

First of all, the BGH points out that the criteria for an abusive trademark application, which were previously developed in connection with Section 1 UWG (protection against unfair practices) and Section 826 BGB (damages), also apply in connection with the newly introduced prohibition of trademark registration in bad faith in the Trademark Act.

A Trademarks application is considered to be in bad faith, for example, if it is only there to prevent a third party from entering the market without intending to use the trademark. In the present case, however, according to the Federal Supreme Court, it has not been established that the online store had no intention to use the trademark at the time of filing. The Federal Patent Court failed to assess the own forms of use alleged by the trademark owner. In particular, the BPatG did not take into account that the Trademarks is not only used on the product itself, but also in the offer line for the corresponding product in the online store.

The previous action against competitors is also not able to support the bad faith of the trademark application. The fact that a Trademarks can also be used against purely decorative use is not sufficient for bad faith. Such a misuse does not constitute a trademark infringement and therefore leads to the loss of the case with cost consequences. As no further circumstances of bad faith are apparent, it can be concluded that the Trademarks are not primarily aimed at the abusive impairment of the competitive development of Competitors.

The Federal Patent Court did not examine the alleged lack of distinctiveness. Therefore, the dispute is referred back to the BPatG for further examination.

Note: This judgment shows that it is perfectly permissible to apply for Trademarks in advance and use their deterrent effect. Only if additional circumstances make it clear that the sole purpose is to hinder competitors can the trademark application be considered to be in bad faith in individual cases.

Links: juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py