Trade Mark Infringement Despite Reference to the Offered Services

The use of a third-party figurative mark in the context of advertising for services (here: motor vehicle inspection work) may infringe the advertising function of the mark (§ 14 Abs. 2 Nr. 1 MarkenG) and violate good morals, such that the limitation provision of § 23 MarkenG (descriptive use of third-party marks) does not apply – BGH, Judgment of 14.04.2011 (I ZR 33/10) – Große Inspektion für alle.

The defendant in the decided proceedings operates several hundred brand-independent motor vehicle repair workshops. In 2007, in the context of a promotional brochure for the inspection of VW vehicles, using the VW logo and the announcement "Große Inspektion für alle" she advertised. The claimant considers her trade mark right in the logo to be infringed.

The lower courts confirmed the trade mark infringement under § 14 Abs. 2 Nr. 1 MarkenG. Although the origin function of the mark was not infringed, as circumstances would not lead to confusion in this regard, the advertising function of the mark was impaired. The sign conflict thus established was also not covered by § 23 Nr. 3 MarkenG, because the defendant exploited the particular attention value of the claimant's mark unnecessarily. This view was confirmed by the Federal Court of Justice (BGH) in its judgment.

The Court's Decision

The court states that a trade mark infringement under § 14 Abs. 2 Nr. 1 MarkenG, based on the required directive-compliant interpretation (implementation of Art. 5 Abs. 1 lit. a MarkenRL), must always be affirmed when an identical sign is used for identical goods or services and this use is in the manner of a mark, i.e., the sign is used as a trade mark. This is to be affirmed when the functions inherent in the mark are impaired, which primarily include the origin function, but also the quality, communication, investment, or advertising function. In the present case, the advertising function is affected. The defendant did not use the claimant's mark merely in a descriptive manner as a designation for her services, but also pursued advertising purposes. The attention value is namely significantly higher when, instead of advertising with a word mark (here, for example, "VW" or "Volkswagen") the associated figurative mark is used for advertising.

The limitation provision of § 23 Nr. 3 MarkenG does not therefore apply. Although the use of the claimant's mark was necessary to inform the relevant circles addressed that the offered service is intended for VW vehicles, this does not necessarily mean that the use of the mark was also honest, i.e., does not run counter to good morals or the accepted practices of commerce and business. This is only the case if the use of the mark remains within the scope required for the designation of the service, without the user entering into the suction effect of the mark and exploiting its goodwill for own (advertising) purposes.

In the opinion of the courts, this is the case here. The use of the claimant's figurative mark (VW symbol) exploits its reputation in an unfair manner. It would have been entirely possible and reasonable for the defendant to use the word mark "VW" or "Volkswagen" instead of the word/figurative mark to draw attention to its service offering. The exploitation of the additional attention value beyond this would not have been necessary for this purpose.