Infringement of a Montblanc trademark by application on a watch?

For more than a century, Montblanc has used the so-called Montblanc Snowcap, registered as a trademark in Germany, among other places, as its identification mark — a star with 6 rounded points intended to symbolize the snow-capped peak of Mont Blanc. According to Montblanc's view, this trademark has now been infringed by a competitor.

Montblanc distributes high-quality watches and writing instruments. The trademark manufacturer has been using the so-called Montblanc Snowcap as its company designation for decades, which is affixed to all products as a mark of origin. The star is registered in Germany as a figurative mark inter alia for watches as follows:

Montblanc sent a cease-and-desist notice to watch manufacturer Pierre Petit because the latter applied the following applications to one of its watch collections:

Montblanc demanded from Pierre Petit cessation of use, information, damages and reimbursement of costs due to the use of the star-shaped applications affixed to the edges. Pierre Petit rejected the claims, which led to legal proceedings.

Decision of the court

By judgment of 14.08.2015 – Az. 6 U 9/15 – the Higher Regional Court (OLG) Cologne dismissed Montblanc's trademark infringement claim.

In its reasoning, the OLG explained that the use of screw head applications in connection with a watch collection whose three-dimensional form resembles the two-dimensional figurative mark of another well-known watch manufacturer constitutes neither a trademark use nor a likelihood of confusion. The court could identify neither an exploitation of the reputation associated with Montblanc's degree of recognition nor an impermissible imitation in the use of the applications, since the relevant public perceives these applications as screw heads or as decorative elements and not as an indication of origin. Such an indication of origin would be expected at a different location on wrist watches.

Conclusion

The decision of the OLG is comprehensible. To associate the screw head applications in this case with the perfectly executed Montblanc Snowcap figurative mark requires a certain amount of imagination. It is to be assumed that the relevant public would not confuse a Pierre Petit watch with a Montblanc watch.