Germany: Occasional use of a trademark does not constitute genuine use
Contributed by Klinkert Zindel Partner
According to Sections 25 and 26(1) of the Trademark Act, the owner of a trademark loses its right to enforce a trademark against third parties if it has not used the trademark within five years prior to making a claim for infringement of that mark. In addition, the trademark is subject to cancellation according to Section 49(1) of the act. However, the requirements for genuine use of a trademark are not always easy to determine and, according to case law of the German and European courts, are to be decided on an individual basis.
In an opinion of March 3 2011 (25 W (Pat) 50/10), the Federal Patent Court ruled that genuine use of a German trademark cannot be assumed if the mark is used only for special distribution offers which last for one month and which recur only twice in more than two years. The court held that it is not required for a mark to be used continuously throughout the statutory five-year period. However, to exclude actions of mere pseudo use, the mark must be used factually, steadily and consistently in a way that is appropriate in the respective market. In the case before it, the court deemed that these requirements had not been fulfilled.
The objecting party and the respondent were the owners of similar trademarks in identical classes which were granted in 2002 and 2009 respectively. The objecting party was the owner of the older trademark and objected to registration of the respondent's trademark due to the likelihood of confusion arising between the marks. The respondent argued that the trademarks could be distinguished. In addition, the respondent argued that the objecting party had not sufficiently used the trademark in Germany for the five-year period prior to filing its objections. The Patent and Trademark Office dismissed the objections in 2010 and held that the marks could be distinguished from each other. The objecting party appealed this decision to the Federal Patent Court.
The Federal Patent Court again ruled in favour of the respondent, but based its decision on the grounds that the objecting party had not used its own trademark in Germany in the five years before filing its objections. Therefore, it had waived the right to claim priority and to object to the respondent's trademark. The court expressly stated that with regard to genuine use, it is not sufficient to make use of a trademark for only one month and only twice in more than two years, and held that this was not in accordance with the principles set by the European Court of Justice in Il Ponte Finanziaria Spa/HABM.
Although not a precedent, this decision is significant: In BIG BERTHA (I ZR 235/00, October 10 2002), the Federal Supreme Court ruled that a special clothes sale which lasted only three days did not constitute genuine use of the respective trademark. However, the decision offered no guidance on where to draw the line with regard to the serious, genuine use of a trademark. It is not uncommon for companies to use certain trademarks only in connection with limited special offers (eg, only once in two years and for only one month). Hitherto, it has been unclear whether such use is sufficient to constitute genuine use. The Federal Patent Court has clarified that it is not, at least typically.
However, it should be noted that there are exceptions that may justify a trademark's not having been in genuine use for five years following its registration. Section 26(1) of the act provides that, in certain circumstances, the trademark owner can show legitimate cause for not using a trademark. For example, the trademark owner may not use the relevant trademark in relation to pharmaceuticals for which the registration and validation process takes a long time and prevents the product from being placed on the market; or in relation to products which are typically sold only in holiday seasons such as Christmas and Easter. It is self-evident that such products are not sold throughout the year, but rather are sold only in the respective season (yet in large amounts).
Trademark owners which do not want to or cannot make use of their trademark continuously but which want to retain the relevant trademark rights should consider this decision when scheduling and coordinating special offers and marketing activities in Germany.
For further information on this topic please contact Philipp Ess at Klinkert Zindel Partner by telephone (+49 69 972 65 600), fax (+49 69 972 65 6099) or email (firstname.lastname@example.org).