Model designation constitutes trademark use

The use of a sign as part of a model designation for a garment satisfies the requirements of trademark use. This is only different if the sign is used exclusively for ordering purposes and the relevant public therefore regards it as a pure ordering designation.

The proprietor of the word mark 'SAM' registered inter alia for clothing is asserting claims for cessation against an online retailer who offered a cardigan with the model designation 'ZADIG & VOLTAIRE SAM CREME'. The mark proprietor assumes that this designation constitutes trademark use and therefore infringes his exclusive right. The retailer defends himself with the argument that he used the sign 'SAM' merely as a so-called ordering designation, which means there is no trademark use and therefore no trademark infringement. The Regional Court (LG) Frankfurt/Main upheld the claim. Against this, the retailer appeals to the Higher Regional Court (OLG) Frankfurt/Main.

The court's decision

The court confirmed the decision by judgment of 27.11.2014 (Az. 6 U 239/13) and draws upon the principles developed by the Federal Court of Justice (BGH) on so-called double marks. According to these, the relevant public may, under certain circumstances or with corresponding familiarity, recognise several independent individual signs within the framework of an overall mark. These principles could be applied here because the component 'ZADIG & VOLTAIRE' would be recognised as the name of the French fashion label of the same name and 'CREME' merely designates the colour of the goods. The sign 'SAM' thus remains an independently perceived sign which gives the product a name, such that trademark use is present. A classification of common first names as ordering designations, as the Federal Court of Justice (BGH) did almost 30 years ago with 'GABY', presupposes that the sign serves exclusively to distinguish different products of the same manufacturer. Such industry practice may exist in the case of footwear, but not in the case of clothing. Furthermore, the online shop of the retailer does not even have a corresponding ordering system.

Conclusion

The court unfortunately does not explain why it assumes that the relevant public regards the contested sign or the component 'SAM' contained therein as a double mark of the mark proprietor. The simultaneous use of the company designation 'ZADIG & VOLTAIRE' rather suggests that the product has a different origin. However, it is possible that the court assumes that the relevant public understands the specific use of the sign to mean that a licence has been granted and therefore an organisational connection exists between the mark proprietor and the retailer.