Infringement of Trademark Rights through Model Names – Recent Jurisdiction of German Courts
Do you use model names for your products? Model names are widely used to individualize certain products. We are all familiar with brochures or catalogues that advertise products like ‘Florence’ dining tables or ‘Kate’ sweaters for ladies. These model designations are usually easier to remember than article numbers or codes, and are therefore widely used, especially for consumer products like furniture, clothing and watches. They are used not only in advertising material, but are often also used on the tags which are attached to the product at the POS; for packaging, like on a shoebox; or on labels sewn into the inside of clothing.
However, these model identifiers, also known as ‘purchase order marks’ or ‘product codes’, hold some pitfalls for the trade, as do series designations. Up until now, the German Federal Supreme Court has assumed in its established case law that, with few exceptions, such model names or order marks are regularly understood by the relevant public as an indication of origin, like a trademark. The consequence of this was that names or words used as model designations were easily capable of infringing a registered trademark, even if this model designation was used together with the often well-known trademark of the manufacturer, as is usually the case. This means that, to be on the safe side, manufacturers and retailers must research whether model designations could collide with earlier trademark rights. Because this is not always economically feasible, the industry has to be careful when applying model names.
Decisions of the German Federal Supreme Court ‘SAM’ and ‘MO’
While case law in this area seemed largely to have been cemented for decades, the Federal Supreme Court, the Bundesgerichtshof, has now revised somewhat its rather far-reaching understanding of the use of model designations to indicate origin.
The court’s decision in ‘SAM’ (BGH, judgment of 7 March 2019 – I ZR 195/17) was based on the following facts: The attack was on trousers from the brand ‘BRAX’, which is well known in Germany. An online retailer offered jeans under the name ‘EUREX BY BRAX’. In the text describing the offer, the indication „Model: Sam“ was found, in a rather subordinate position:
The owner of an earlier trade mark ‚SAM‘ challenged that use, claiming, inter alia, injunctive relief and damages.
In the second decision, ‘MO’ (BGH, judgment of 11 April 2019 – I ZR 108/18), the internet retailer Amazon was sued by the owner of a trademark „MO“, which is also protected for clothing in class 25. The owner of the trademark ‘Bench’, which is quite well known, especially among younger people, attacked the description ‘Bench Damen Hose MO’ (‘Bench Ladies‘ Trousers MO’) in the product description for a pair of ladies‘ trousers:
The respective trademark owners in the cases ‘SAM’ and ‘MO’ were successful in the first and second instance before the Frankfurt District Court and the Higher Regional Court of Frankfurt respectively, which both assumed an infringement applying the earlier Federal Supreme Court case law. This time, however, the Federal Supreme Court referred the cases back to the Higher Regional Court for further clarification of the facts.
In these two decisions, the Federal Supreme Court reaffirms, first of all, that what matters is whether the name of the model is used like a trademark, i.e. whether the public could perceive the name of the model as an indication of origin. For this purpose the Federal Supreme Court forms case groups:
– Model designation is well known: If the model name is a well-known name, like ‚501‘ for Levi’s jeans or ‚Billy‘ for IKEA shelves, it must be assumed that the public will understand the model name also as an indication of origin, i.e. like a trademark.
– Affixed directly to the product: If, in the case of clothing, the name is affixed directly to the garment, for example by sewing it into the waistband or on the outside of a sewn leather garment, this also regularly constitutes an indication of origin.
– Imprint on hang tags: The printing of the model name on sales labels attached to trousers, so-called hang tags, could also be regarded as an indication of origin ‚depending on the circumstances‘. In this context, the Federal Supreme Court indirectly confirmed a 2018 decision by the Higher Regional Court of Frankfurt am Main, ‘HUDSON’, which found the following uses of a model name for trousers to be infringing, even though the trousers also contained the original manufacturer’s trademark in the usual places:
– Use in sales offer: If a model name is used only in sales offers, in catalogues or on the internet, the very specific design is always crucial. If the model name is used in direct connection with the manufacturer’s or umbrella brand, this can be understood to indicate the origin of the product, as can the prominent emphasis. If the use of the model name is rather inconspicuous in the description of the offer, this would speak against a use indicating the origin. The word order in which they are presented can also be important.
– First names: First names are particularly popular as model names, especially for clothing. There is basically nothing special about first names, which can also be understood as an indication of origin. However, the situation could be different if the first names are particularly common: they can be understood more as pure model names without an indication of origin.
Application of this case law by the courts of instance
The Higher Regional Court of Frankfurt am Main (Judgement of 1 October 2019 – 6 U 111/16) finally dismissed the action after the case „SAM“ was referred back to it because the model name was used subordinately in the advertising.
Also following the ‘SAM-jurisdiction’, the Higher Regional Court of Hamburg (judgement of 28 November 2019 – 5 U 65/18) found there was no infringement of the trademark ‘Isha’ in the title of the offer ‘Chiemsee Damen Kleid Rock Isha’ (Chiemsee Ladies‘ Dress Skirt Isha) because of the special position of the manufacturer’s trademark ‘Chiemsee’ at the beginning and ‘Isha’ at the end of the word order:
Conclusion: The individual case counts
The case law of the Federal Supreme Court shows that particular caution is still required when using model names, purchase order marks, product codes and names of product series, as these continue to be capable of infringing existing trademark rights. At the same time, case law shows that it always depends how such a model name is used in a particular case. The tendency is clear: If the model names are directly connected with the product, it can often be assumed that they are used as a trademark. If it is only a matter of use in advertising, take care to ensure that this is only done in a subordinate manner. Any prominent highlighting of the model name can be interpreted as an indication of origin and thus as trademark use. It may sound pedantic, but the devil is in the details, especially in advertising and the concrete product offering.
Jan D. Müller-Broich Daniela Burghardt