MAXI protection for MINI mark

Well-known marks enjoy greater protection than marks that do not reach the threshold of distinctiveness. In particular, they are protected against unlawful dilution of reputation. This protection is also not unlimited, but extends to goods and services that are not similar to those claimed by the mark, if the public perceives on the basis of the designation that they originate from the proprietor of the mark. The Regional Court (LG) Hamburg recently had to decide how far the protection of the motor vehicle mark MINI extends.

The vehicle "MINI" has been manufactured since 1959. The manufacturer has various word and figurative marks, which always contain the component "MINI" in capital letters. The sign was first registered in 1971 on the basis of acquired distinctiveness. Acquired distinctiveness was necessary because the term "mini" is to be understood originally as an indication of size and is therefore not capable of protection. However, the proprietor of the mark demonstrated already in 1971 that the sign "MINI" is understood as an indication of the origin of the motor vehicles marked and advertised with it. This acquired distinctiveness—which still exists today—also signifies a degree of distinctiveness that affords the sign a level of protection against dilution of reputation, tarnishment, and blurring that goes beyond the normal scope. This results in a far-reaching monopolisation of the mark even for other goods and services than those for which it is registered.

The bone of contention was various MINI motifs that a company offered on an on-demand platform for clothing and gift items. The various motifs have in common the prominent use of the sign "MINI". The proprietor of the mark perceived this as an infringing use of its protected signs, namely a dilution of reputation, and sued the provider or the operator of the platform for an injunction.

The court's decision

By judgment of 19.12.2014 (Az. 315 O 261/13), the Regional Court (LG) Hamburg affirmed the existence of dilution of reputation and ordered the platform operator, as requested, to cease using the sign "MINI" for goods and services, even where these are dissimilar to those for which the mark is registered. In the court's view, the provider of the on-demand goods was unlawfully exploiting the distinctive character and repute of the well-known mark "MINI" without justifiable reason, and therefore dilution of reputation was present. In particular, the court affirmed the use as a trade mark serving as a mark of origin. This should always be presumed when the relevant public connects the use of the mark with a specific expectation of origin and therefore assumes that the goods so marked originate from one and the same enterprise or are at least under the control of that enterprise. For this to be the case, it is necessary that the presentation of the sign on the affected goods creates the impression that a connection exists between those goods and the proprietor of the mark. Then dilution of reputation or tarnishment is also present.

The court ultimately affirmed these prerequisites, as the sign "MINI" was affixed to the products in eye-catching capital letters. According to the court, the overall circumstances of the use of the sign could only lead to the conclusion that it was the mark "MINI" and not a descriptive use of the word "mini" in any form as an indication of size. According to the court's reasoning, it is not sufficient that the use of the sign is merely capable of attracting attention through association with a third-party mark. However, it is to be taken into account that the relevant public is accustomed to the use of the sign "MINI" in connection with merchandising products and therefore not only remembers the mark, but at the same time a perception of origin from the proprietor of the mark is suggested. This constitutes dilution of reputation and thus a mark infringement, which is why the provider of the goods in question must be enjoined from such use.

Conclusion

The chest area of a t-shirt or jumper is actually not a place for a trade mark designation. Here one finds primarily ornamental designs, and the mark of origin belongs on the label. Exceptions apply if the relevant public is aware that the proprietor of the mark also uses its sign in an ornamental manner. This is particularly the case if the mark is already registered for the affected goods and services, but also for different merchandising items. In such cases, it is equally appropriate to assume a mark of origin, which in the case of well-known marks will almost always be the case. Consequently, it is not a good idea to use well-known marks without permission to enhance one's own products—not even where this is done in places where a mark of origin is not normally expected. The path from purely ornamental use of a mark to unlawful dilution of reputation is in any case not a long one.