The legal situation
In order to remain valid and enforceable, registered trademarks must be genuinely used on the market by their owner or with his consent. Genuine use can also be found if the trademark is used in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, Art. 26 (3) 1st sentence of the German Trademark Act (Markengesetz), Art. 15 (1) (a) Community Trademark Regulation. According to Art. 26 (3) 2nd sentence of the German Trademark Act, this rule also applies if the actually used, slightly differing sign is also registered as a trademark.
In para. 86 of its “BAINBRIDGE” judgment of September 13, 2007 (C-234/06 P), the European Court of Justice remarked more or less obiter dicta: “In any event, while it is possible, as a result of the provisions referred to in paragraphs 81 and 82 of the present judgment, to consider a registered trade mark as used where proof is provided of use of that mark in a slightly different form from that in which it was registered, it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former.”
This comment triggered a fierce discussion between the German courts and scholars on the compliance of Art. 26 (3) 2nd sentence of the German trademark act with the binding regulations of the European Trademark Directive (present version: Directive 2008/95/EC). While the Higher Regional Court in Karlsruhe (OLG Karlsruhe, judgment of January 26, 2011; 6 U 27/10) confirmed this German regulation’s compliance with EU law, the Higher Regional Court in Cologne (OLG Köln, judgment May 20, 2009; 6 U 195/08) denied it and found that use of a trademark in its registered form cannot constitute genuine use of a second registered mark, regardless of the significance of the differences between both registered signs.
The German Federal Supreme Court’s (BGH) present decision
With a decision of August 17, 2011, (I ZR 84/09 – PROTI) in the appeal proceedings against the Higher Regional Court in Cologne’s judgment the German Federal Supreme Court (BGH) now asked the European Court of Justice several questions on the compliance of Art. 26 (3) 2nd sentence German Trademark Act with the European Trademark Directive. In para. 22 of this decision the court provides its opinion that, generally speaking, such compliance can be confirmed. However, the court proposes to deny applicability of this regulation in case that the trademark(s) differing from the (also registered) used form of the sign have been registered only with the aim of expanding the scope of protection of the trademark actually used (defensive marks).
Relevance of the ECJ’s answers to the BGH’s questions
The European Court of Justice’s answers to the questions raised by the German Federal Supreme Court will be very important for present and future trademark portfolio strategies. If, in the worst case, the ECJ did not share the BGH’s legal opinion, but concurred with the Higher Regional Court in Cologne, problematic situations would arise in particular in connection with the trademark owner’s modernization of well-established old trademarks. If the modernized versions are also registered as trademarks, their use would not be deemed as genuine use also of the non-modernized old marks. The latter would then become subject to cancellation actions after a period of five years.