Trademark Law – Use of a trademark for a specific product constitutes genuine use only for one of the specification’s abstractly defined types of products (06/2013)

The legal situation

Revocation of a German trademark can be requested, if the mark has not been genuinely used during 5 consecutive years. If the trademark has been used only for some of the goods and services covered by its specification, it will be revoked only partially, namely for those products it has not been used for.

Usually, the specification of goods and services does not (only) cover specific products, but more or less abstractly defined types of products (“generic indications”). In such cases, use of the mark only for a specific product renders the mark non-revocable not only for this specific product, but for a sub-category of products belonging to the same (narrow) product range as the actually distributed specific product.

Judgment of the German Federal Supreme Court

In a judgment of 5.12.2012 (I ZR 85/11 – Culinaria/Villa Culinaria), the German Federal Supreme Court had to deal with the particular situation that the specific product the trademark had been genuinely used for falls under two different generic indications of the trademark’s specification of goods. In para. 66 of the decision, the court made the remarkably strict statement that, in such cases, the trademark has to be revoked for one of the two generic indications, i.e. that use for only one specific product does, at least generally speaking, not constitute genuine use of the mark for two independent generic indications.

Evaluation of the Federal Supreme Court’s findings

The Federal Supreme Court’s strict findings are problematic for two reasons.

Firstly, at least from a natural perspective, the trademark at issue did not really claim two “generic indications”, but rather one (abstract) generic indication (certain “refrigerated snacks”) and one more specific type of goods (“pizza”), and the trademark had been used for “refrigerated pizza”. The court nevertheless confirmed applicability of the above outlined strict principle and revocation of the mark for the “refrigerated snacks”. According to the court, also the term “pizza” is a generic indication. It is thus very hard to predict, which of the terms in a trademark’s specification are “generic indications” and which describe specific products.

Secondly, the court does not explain in principle, which of the two competing generic indications has to be completely deleted due to non-use. This decision might have been obvious in the case at hand, since the “refrigerated pizza”, which the mark had been used for, showed a much closer connection to the term “pizza” than to the more abstract term “refrigerated snacks”. However, in the case of generic indications with an almost identical degree of abstraction, this decision might be hard to make.

Regardless of these “open questions”, this decision illustrates once again the importance of a thoroughly designed and phrased specification of goods and services, which should take care of the trademark owner’s specific interests on the one hand, while keeping an eye on particular risks associated with the pertinent case law.