INTA London Roundtable
Germany: Protection of well known
and ‘famous’ trade marks
Dr Birgit Clark
24 March 2009
Historical background
Germany has a long history of offering strong
protection to well-known (‘famous’) marks
Over the years German courts have slowly relaxed
the criteria for recognition of a well-known trade
mark
Evolution of law in 4 stages:
1920s – 1950s – 1980s - 1995 after the introduction
of new Trade Marks Act
1920s
Concept of trade mark dilution originated in
Germany: special protection for ‘famous’ trade marks
started in 1920s
German Trade Mark Act 1894 (WBzG) – Test:
Likelihood of public confusion - a proprietor could
prevent use of his trade mark on identical and similar
goods/services
1920s
Reichsgericht (German Imperial Supreme Court)
recognised that protection against the use of
identical/similar signs was additionally required
outside the area of likelihood of confusion when a
trade mark was so famous that competitors were
tempted to exploit the trade mark for their own
purposes - even outside the goods/services for
which the trade mark was registered.
Inspiration for Schechter’s famous article
1920s
Odol case: Reichsgericht (NJW 1925, 264)
extended the scope of trade mark protection to
non-competing goods. Owner of the trade mark
‘Odol’ obtained cancellation of the same mark used
on steel railroad products.
Odol was famous mark: used for 28 years with
selling power; consumer might think that another
product bearing the same mark was of good
quality; claimant's interest was preventing the
dilution (Verwässerung) of its mark
1920s
“The complainant has created a demand for
its goods, while employing thereon a word
having drawing power, for only through the
year-long activity of the complainant was its
selling power acquired… complainant’s ability
to compete with other manufacturers of
mouthwash will be impaired if the significance
of its mark is lessened.”
Sometimes called “danger of confusion in
a wider sense” (cf Intel ?)
1950s
Development of case law: protection of ‘famous
marks’ through general clause in German law of
Delict (tort) (Articles 823, 1004 BGB)
Strict criteria for ‘dilution’ protection outside the area
of likelihood of confusion
Conflicting sign taking unfair advantage or
detrimental to the reputation, owner of a famous
trade mark was able to take action against the use
of an identical/similar sign even if the sign was used
for different goods/services.
1950s
Strict Criteria:
‘Famous’ trade mark only if
1. prestige
2. public recognition of 80% or more
3. unique advertising appeal/singularity of mark
1980s
Some developments relating to the protection of wellknown marks
From 1980s courts started to apply unfair competition
law (“sittenwidrige Rufausbeutung”) allowing
protection against third-party use that took unfair
advantage of or was detrimental to the repute of a trade
mark
To be regarded as well-known (cf famous) under unfair
competition law: public recognition of 33% or higher.
Required: competitive relationship between the trade
mark owner and the infringer (courts adopt liberal
interpretation)
1980s
‘Rolls Royce’ decision (ZR 133/80 of 1983): BGH
granted protection against use of representation of a
Rolls Royce in an advertisement for an alcoholic
beverage, even though there was no obvious
competitive relationship between car manufacturer
and the advertiser
1980s
Camel Tours (BGH GRUR 1987, 711): trade mark
registration for tobacco, used on Turkish travel
services. Based on delict (Articles 823, 1004 BGB).
Court denied dilution; use of camels was not
uncustomary for such travel services and not every
kind of association was enough. Most likely be
decided differently today (“image transfer”/”free
riding).
1980s
Examples of mark that were recognised as wellknown: Mercedes, adidas, Coca-Cola, Lufthansa
1995 today
Protection of ‘famous’ and well-known trade marks was codified
under the German Trade Mark Act 1995 implementing Article
5(2) of the First Trade Marks Directive (89/104/EC now:
2008/95/EC)
No separate register for ‘famous’ and well-known trade marks;
protection through specific new provisions:
Article 14(2) No. 3 Trade Mark Act: prohibits to use a sign
similar or identical to a well-known trade mark in the course of
trade for non-similar goods/services if such use without due cause
takes unfair advantage of, or is detrimental to, the distinctive
character or the repute of the well-known trade mark
Article 9(1) No. 3 Trade Mark Act: allows for deletion from the
register despite being registered for non-similar goods/services
German original - Article 14(2) No. 3
Trade Mark Act:
Dritten ist es untersagt, ohne Zustimmung des
Inhabers der Marke im geschäftlichen Verkehr
ein mit der Marke identisches Zeichen oder ein
ähnliches Zeichen für Waren oder
Dienstleistungen zu benutzen, die nicht denen
ähnlich sind, für die die Marke Schutz genießt,
wenn es sich bei der Marke um eine im Inland
bekannte Marke handelt und die Benutzung
des Zeichens die Unterscheidungskraft oder
die Wertschätzung der bekannten Marke ohne
rechtfertigenden Grund in unlauterer Weise
ausnutzt oder beeinträchtigt.
1995 today
ECJ decisions are binding (i.e. Davidoff, adidas)
BGH also applies Article 14(2) No.3 Trade Mark
Act on similar goods/services
However, practical relevance only if, despite
similarity of goods/services, there is no likelihood of
confusion
German position: Trade Mark Law is part of unfair
competition laws in the wider sense
1995 today
Trade mark well known when recognized by major
part of relevant public
Earlier case law: recognition of 30% to 50% (cf. famous
mark, where 90%)
Fabergé Case (ZR 100/99 of 2001) the Federal
Supreme Court listed further requirements: quantitative
and qualitative criteria
-intensity and duration of use
-market share
-expenditure on advertising; and
-geographic area of use.
(also: BGH, WRP 2004, 653 BIG BERTHA)
1995 today
Survey evidence, while not obligatory, are the
safest way of proving that a mark is well-known
Also the safest way to show “effect on economic
behaviour” (Intel)?”
Article 291 ZPO (Civil Procedural Code):
No evidence needed for “obvious facts”
Mark has to be well-known at time of collision
Perspective of general consumers or specific
consumers
1995 today
New law is wider than old ‘dilution’ law for ‘famous’
marks under Delict (tort) and unfair competition law.
Debate: Additional protection under German law of
Delict (tort) and unfair competition law?
1995 today
MacDog decision
(ZR 268/95 of 1998 and [2000] ETMR 91):
Delict and unfair competition law not applicable
within scope of Article 14(2) No.3.
Additional protection only where Article 14(2) No.3
does not apply or does not provide adequate
protection; e.g. similar sign is not used in the course
of trade or as a trade mark but only
generically/descriptive or as decoration.
Current Law
4 types of infringement of well-known marks:
1. Exploitation of repute (Rufausbeutung)
“free-riding on prestige”
2. Exploitation of distinctiveness
(Aufmerksamkeitsausbeutung)
“free-riding on fame factor”
3. Detriment to repute (Rufschädigung)
“Tarnishment”
4. Detriment to distinctive character (Verwässerung)
“Dilution”
1 – 4 have to be objectively unfair; infringers intent is
irrelevant
Current Law
1. Exploitation of repute (Rufausbeutung):
A trade mark with a high repute is used by a
infringer to transfer the repute (“Goodwill”) onto it
products; “image transfer cases”.
“free-riding on prestige”
Example: BOSS for energy drinks; whiskey trade mark
used on male cosmetics (DIMPLE decision)
No image transfer in case of “McShirt” as relevant
goods/services clearly separate; no image transfer also
DIMPLE on washing powder.
Current Law
2. Exploitation of ‘distinctiveness’
(Aufmerksamkeitsausbeutung):
Infringer unfairly benefits from the attention arising
from the use of a well-known trade mark
“free-riding on fame”
Examples: Fireman’s Friend for smoker’s articles; use
of purple colour and Milka trade mark on postcard;
eBay for lawyer‘s website ("anwalt-ebay“ (lawyer-ebay)
Current Law
2. Exploitation of ‘distinctiveness’ through ‘parody
and satire’:
Purple Postcard case (BGH I ZR 159/02); Deutschland
sucht den Superstar (OLG Köln, 6 U 147/08 of 6
February 2009)
Special defence (“with due cause if”): Freedom of
Artistic expression, Article 5(3) German constitution? Balancing of rights (Constitutional Protection of
Property, Article 14 German constitution); no ‘fair use’
article in Act
Current Law
3. Detriment to repute (Rufschädigung)
“Tarnishment”
negative associations transferred on to wellknown/famous trade mark; e.g. use of trade mark
with a high repute inappropriate or inferior goods
Current Law
3. Detriment to repute - Examples
‘MARS macht mobil bei Sex–Sport und Spiel’ (fun
adaptation of the German advertising slogan for the
Mars chocolate bar) used to sell a joke condom
(BGH GRUR 1994, 808, Markenverunglimpfung I) :
Use of the well-known brand NIVEA in a jokily
adapted form (‘Es tut NIVEA als das erste Mal’, ‘It
never hurts more than the first time’) used to sell
condoms (BGH GRUR 1995, 57
–Markenverunglimpfung II)
Current Law
4. Dilution (Verwässerung) “detriment to the
distinctive character”:
‘distinctiveness’ of a well-known trade mark is
damaged by the use of a similar/identical sign
Damage: mark’s advertising appeal in mind of the
consumer is clearly reduced – has to be obvious
The better known the trade mark, the easier it is to
prove dilution
Current Law
Dilution (detriment to the distinctive character)
more unlikely, the further goods/services are apart
Example: Using phone number 4711 (famous for
perfumes) for local taxi business; using camera
trade mark “TECHNIKA” on building machinery
Current Law
shell.de (ZR 138/99 of 2001) registration of a famous
trade mark as a domain name. BGH ruled that
registration of the domain ‘shell.de’ led to dilution of
the mark
Damage: mark’s advertising appeal reduced because
interested consumers were diverted and trade mark
owner was prevented from using the domain shell.de
Current Law
BGH WRP 2004, 1046: Zwilling/Zweibrüder
(twins/two brothers)
No dilution/detriment to distinctive character when
marks are not sufficiently similar
Not enough that trade mark may benefit from the
attention through mere association
Not enough that choice of mark appears not random
Impact of Intel decision
OLG Köln (6 U 147/08)“Deutschland sucht den
Superstar“ of 6 February 2009, para. 42
Intel decision applies to “detriment to distinctive
character“ or “detriment to the repute“ but not to
“exploitation of distinctive character“ or “exploitation
of reputation“.
It would be wrong to demand from the proprietor of
the mark to show actual harm or a serious risk of
harm for “exploitation of distinctive character“ or
“exploitation of reputation.
Impact of Intel decision
OLG Köln (6 U 147/08) “Deutschland sucht den
Superstar“ of 6 February 2009, para. 42
At most it can be deduced from Intel for the
“exploitation variants” that there have to be “concrete
facts that show exploitation”.
Thank you.
bclark@boult.com
24 March 2009