Model designation as a trade mark infringement?

If a model designation is used in the context of a product offering on the internet in such a way that the relevant public recognizes it as a second mark, a trade mark infringement can be assumed. This was decided by the Higher Regional Court (OLG) Frankfurt am Main.

The proceedings before the OLG Frankfurt were based on an online shop offer for a coat. The coat of the brand "SET" was advertised under this brand. The brand was presented in a visually striking manner. Immediately below this was also the specification "SAM – MANTEL MIT MULTICOLOUR-EFFEKT". The proprietor of the mark SAM saw his trade mark rights infringed thereby, which the OLG Frankfurt am Main (Urt. v. 07.07.2022 – Az. 6 U 239/21) confirmed.

Infringement of rights through model designation – the court's decision

When using another party's mark as a model designation, the question always arises whether the sign is being used in a trade mark manner. Use in a trade mark manner means the use of a sign in such a way that the relevant public sees in it an indication of the origin of goods from a particular undertaking.

Where a model designation in sales offers on the internet is concerned, the concrete circumstances of its use must be examined. The highlighting or visually striking presentation of a sign speaks in favour of trade mark use.

Trade mark use may, however, also be present if the relevant public recognizes a second mark in the use of the sign. However, not every model designation also has the function of a second mark. A second mark is present only if the relevant public associates the model designation with a particular manufacturer and recognizes in it a sign that serves not only for internal assignment as an order code. In making this assessment, the concrete design of the offer and the marking practices of the market are again relevant.

According to the court's view, the fact that the sign was part of the highlighted offer heading speaks in favour of a second mark and thus trade mark use. Furthermore, the sign was at the beginning and was additionally highlighted by means of the hyphen. The direct connection with the manufacturer or umbrella brand ("SET") therefore leads to the assumption that it is a second mark.

Conclusion

The judgment makes clear that the question of trade mark use can always only be assessed on a case-by-case basis and on the basis of the concrete design of the product offering. At the same time, this decision and the judgment of the OLG Frankfurt of 01.10.2019 – Az. 6 U 111/16 provide guidance for the design of product offers that should be observed and which can be summarized as follows:

When using another party's sign as a model designation within a descriptive text or as part of a subheading that is rather confusing and contains numerous items of information and further signs, trade mark use should as a rule be excluded.

If, however, the third-party sign is particularly highlighted as a model designation, trade mark use may be assumed. In doing so, the position and size of the model designation and its relationship to the position and size of the brand must be considered. Furthermore, it should be taken into account whether there are other details around the model designation.

Manufacturers and retailers should act with the requisite awareness of the problem when using model designations. Trade mark proprietors whose sign is used as a model designation may in some cases be able to successfully defend themselves against this.