The German Federal Supreme Court's (Bundesgerichsthof, "BGH") First Civil Senate on 14 April 2011 (case reference: I ZR 33/10) had to decide on a case concerning the use of a well-known car maker's device mark in advertisements for an independent garage business. The facts of this case are reminiscent of the facts in the ECJ's famous BMW/Deenik decision of 1999 (case-63/97). Please find this Kat's translation and summary of the BGH's press release of 19 April 2011 below. The claimant, the well-known German manufacturer Volkswagen AG ("VW"), is the proprietor of a device trade mark which depicts the VW logo in a circle and which covers, inter alia, "cars" and "car repair and maintenance". The defendant, ATU Auto-Teile-Unger Handels GmbH & Co. KG ("ATU"), owns several hundred independent (as in: unrelated to a specific car brand) garages. VW took objection to the defendant's use of the VW device mark in ATU's advertisements for ATU's maintenance and repair services in relation VW motor cars. The first instance court, the Regional court of Hamburg (LG Hamburg, decision of 21 February 2008, case reference: 315 O 768/07) and on appeal the Higher Regional court of Hamburg (OLG Hamburg, decision of 16. December 2009, case reference: 5 U 47/08) both decided in VW's favour. The BGH confirmed the lower courts' decisions on ATU's further appeal. The BGH took the view that ATU's use was infringing use of the claimant's registered device trade mark. In its advertisements for repair works of VW cars, the defendant had used a device trade mark that was identical to the claimant's device mark for identical services. By doing so the defendant had infringed the claimant's trade mark since the use of the well-known logo resulted in an image transfer which weakened VW's trade mark. Are you now wondering 'but what about the ECJ's guidance in BMW/Deenik?', since the ECJ appeared to have taken a perhaps more liberal view back in 1999? While BMW/Deenik is not expressly mentioned in the BGH's press release, the VW/ATU decision is clearly an interpretation of the former and this Kat hence holds any bet that BMW/Deenik is discussed in much detail in the grounds of VW/ATU which are yet unavailable. In the meantime, however, the BGH's press release tells us the following: while trade mark law provides that a trade mark proprietor cannot prohibit a third party from using the trade mark where it is necessary to indicate the intended purpose of a service provided the third party uses the trade mark in accordance with honest practices in industrial or commercial matters. The BGH decided that in this particular case these requirements were not met in the case of ATU's use of the VW logo since ATU could have just as well ("ohne weiteres") used the claimant's word marks "VW" or "Volkswagen" to describe its services and was not dependant on the to use the device mark. Merpel now muses whether this decision implies that the advertising function of a device mark could be more worthy of protection than the advertising function of a mere word mark? Also, what would happen if the claimant had only owned a device mark without a word element or vice versa? The answers to these (and other) questions will (hopefully) be in the grounds of the decision and this Kat is very keen to see the BGH's interpretation of "where it is necessary to indicate the intended purpose of a product or service", (see also Article 6 TM Directive). For the purposes of informing consumers in an advertisement, use of the word mark itself will in most cases suffice and it will not be "necessary" to use the device mark. Most notably the BGH's press release states that "in this particular case" use of the device mark was not necessary. It does not state that use of a device mark in advertisement can never be necessary. Some German observers have already criticised that this decision appears to favour brand-associated/authorised garages over independent garages. We will be able to judge once the full decision is out… The court's press release of 19 April 2011 can be retrieved by clicking here.
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