Trade mark infringement / misleading conduct through incorrect GTIN

The EAN code, or today the GTIN (barcode), serves the international identification of a product. Via this number, not only data on the product itself can be obtained, but also information about the manufacturer. This can cause problems if a product (inadvertently) bears the identification number of another enterprise, as a proceeding before the Higher Regional Court of Cologne (OLG Köln) demonstrates.

The applicant manufactures medical aids for the foot, which it distributes under the trade mark "Condor", which simultaneously constitutes herbusiness designation. The respondent operates retail stores for footwear and sold Crocs in one of its stores that were equipped with an incorrect GTIN. When reading the number, data of the company Condor were displayed, namely name, address and contact details. Thereupon this company demanded that the respondent cease such use, based on an infringement of its trade mark and misleading conduct as to the origin of the article. The Regional Court (LG) issued the requested preliminary injunction and confirmed it in the opposition proceedings. The respondent appeals against this decision.

The court's decision

The Higher Regional Court of Cologne (OLG Köln) set aside the preliminary injunction by judgment of 27.03.2015 (Az. 6 U 185/14). In its reasoning, the court already doubted the existence of use as a trade mark, since the GTIN, in any case alongside a well-known designation (Crocs), no longer contained any additional indication of origin. A possible likelihood of confusion between the sign "Condor" and the barcode as such was denied on grounds of the obvious dissimilarity of the signs and also of the goods (leisure shoes as opposed to support and stabilization aids), as was any similarity in meaning, which in the case of the barcode could in any event only be ascertained by taking further steps.

Competition law claims for misleading conduct were likewise rejected, since the target circles of both products were different. Whilst the medical aids were offered to specialist circles, the retailer sold the leisure shoes to the general public. Finally, the evaluation under trade mark law would also preclude a different assessment from competition law perspectives.

Conclusion

The court makes things too easy for itself through reference to the evaluation of trade mark law; the principle of the primacy of trade mark law has long been abandoned by supreme court case law. It would therefore have been worth considering whether the (deliberate or inadvertent) use of an incorrect or third-party barcode cannot after all constitute misleading conduct. Particularly in times of computer-aided price comparisons, the EAN or GTIN also has a not to be underestimated significance as an indication of origin. One need only think of the central data storage atAmazon. Here, for each product or each GTIN, only a single product description is retained for all merchants. The accuracy of the GTIN used in this context, which is encoded in reconstructible form in the ASIN, therefore has decisive significance for the identification of the advertised product.