Advertising with the ® symbol (R in a circle)

Does misleading conduct contrary to competition law exist when a word mark is provided with an R in a circle and advertised in this form, although in fact not a word mark but rather a word/figurative mark is registered? The Higher Regional Court (OLG) Frankfurt a.M. addressed this question.

The respondent used the designation "Marke1®" in an Amazon listing for a satellite connector socket. However, it holds a word/figurative mark comprising the word elements "Marke1 Digital Technology". The lettering is designed in two colours. The associated figurative element is a crescent moon.

The applicant asserted a claim for an injunction. He regarded the advertising with "Marke1®" as misleading conduct contrary to competition law.

The Regional Court (LG) Frankfurt a.M. dismissed the application. The applicant's appeal was unsuccessful.

The court's decision

The Higher Regional Court (OLG) Frankfurt a.M. pointed out that, in principle, the relevant public would be misled if someone used a sign with the addition ® without being the proprietor of that mark or holding a licence to that mark. Only minor deviations, which would also not be incompatible with use maintaining rights, are harmless in this respect.

The court confirmed byBeschluss vom 17.08.2017 – Az. 6 W 67/17that the use of the designation "Marke1®" in the Amazon listing did not substantially alter the distinctive character of the registered mark and thereby ruled out misleading conduct.

It is recognised that the omission of figurative elements is harmless for use maintaining rights, insofar as the independently distinctive word element is retained. The omission of purely descriptive word elements is likewise harmless. The court identified in the designation "Marke1" the solely distinctive element of the mark. The inconspicuous figurative element and the two-colour design of the word were to be disregarded.

Conclusion

Trade mark proprietors should only use the ® symbol for marks that are actually registered; however, as a general rule, even with only minor deviations in designation that do not alter the distinctive character of the mark, there is no misleading assertion of trade mark protection.