Adler logo of Real infringes DFB trade mark

The German retail chain Real is not permitted to use signs that exhibit similarity with the association logo of the Deutscher Fußball-Bund e.V. With the current judgment, the Regional Court (LG) Munich I has confirmed an interim injunction and prohibited Real from using certain signs.

The DFB has used an eagle in its well-known association logo since the 1920s. The DFB logo is protected as a German and as a European trade mark. The defendant Metro subsidiary Real had offered car floor mats and football fan clothing on the occasion of this year's football world championship, which were provided with an eagle symbol and in some cases the word additions "Deutschland". Against this, the DFB obtained an interim injunction on 30 May 2014. The retail chain lodged an objection against the interim injunction. A material point of dispute was the registrability of the eagle symbol depicted in the mark in suit, since according to the Trade Mark Act a sign cannot be registered as a trade mark if it contains or imitates a state sovereign symbol – such as the Bundesadler – or imitates it.

Court's Decision

With the judgment of 07.08.2014 (11 HKO O 10510/14), the LG München I established that a review of whether the eagle symbol characterising the DFB trade mark constitutes an imitation of the Bundesadler was precluded.

Whether the trade mark was rightfully registered could only be examined in formal cancellation proceedings before the competent trade mark office. The court was bound by the validity of the trade mark registration. If the eagle symbol of the DFB trade mark were to constitute an imitation of the Bundesadler, the Bundespatent- und Markenamt would have been prohibited from registering the trade mark for this reason alone – regardless of all other elements. The court was therefore bound by the finding that the eagle symbol of the mark in suit does not constitute an imitation of a German federal sovereign symbol.

Since the court established a clear visual similarity between the signs used by Real and the DFB trade mark, it concluded that there was infringement of the DFB's trade mark rights and thereby confirmed the interim injunction.

Conclusion

In the course of legal proceedings concerning the infringement of a registered trade mark, it is precluded for the deciding court to examine to what extent absolute grounds for refusal – such as, for example, the imitation of state sovereign symbols – stood against the registration of the respective trade mark. If the trade mark has been registered, the court is bound by its validity. Any grounds for refusal may be examined in formal cancellation proceedings before the competent trade mark office.