The German Federal Court of Justice (Bundesgerichtshof (BGH)) strengthened trademark law in a recent ruling, according to which it is possible to demand the cancellation of a trademark based merely on a close resemblance.
GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London - www.grprainer.com/en conclude: In the case in question, the First Civil Division of the BGH had to rule on whether it is possible to demand the cancellation of a trademark if there is no risk of confusion yet the trademarks bear a great resemblance to each another.
The case concerned a word-image trademark of a well-known manufacturer of sports goods. Another company had used a modified, parodied version of this for its goods. The sports goods manufacturer considered this to be an infringement of its trademark rights and won its case. The BGH confirmed the judgments of the Regional and Higher Regional Courts and ordered that the similar-looking trademark be cancelled.
The Court stated in its reasoning that, despite all of the clear differences, the trademarks still bore a great resemblance to each other. It went on to say that while there was no risk of consumers confusing the trademarks, the prominence of the sports goods manufacturer was being used to raise awareness of the other company’s products and this was unfair. More weight was to be attached in this case to sports goods manufacturer’s trademark rights than those invoked by the defendant, namely artistic freedom and the right to freedom of expression.
As is demonstrated in the instant case, trademarks are of great value to businesses. The more well-known a trademark is, the greater its estimated value. It is important to take action to protect a trademark to prevent third parties from taking commercial advantage of its success and potentially emerging as a competitor. This is especially applicable to companies that operate internationally. Here, the trademark rights ought to be expanded beyond state borders. If the trademark rights are infringed, it may be possible to assert damages claims.
That being said, care must also be taken from the other side of things when entering a trademark into the register that existing trademark rights will not thereby be infringed. Companies can turn to lawyers who are competent in the field of trademark law for support.