In two recently published decisions, the German Federal Supreme Court held that use of the logos of the former German Democratic Republic (“DDR-logo”) and the former Soviet Union (“CCCP-logo”) is not infringement of the registered German trademarks “DDR” and “CCCP”, even though identical goods were concerned. The cases concerned use of the DDR-logo and the CCCP-logo on the front side of T-shirts. In both cases the German Federal Supreme Court confirmed its case law by ruling that one of the requirements for a presumption of trademark infringement is that the allegedly infringing sign is used as a trademark. Furthermore, the German Federal Supreme Court decided that there is no use as a trademark in the present cases, asserting that the relevant trade circles will not appreciate use of the DDR-logo and the CCCP-logo as indications of origin, but rather as references to the former German Democratic Republic and the former Soviet Union. Therefore, the German Federal Supreme Court decided that the relevant trade circles would have no reason to interpret the contested as an indication of origin, and consequently, there could be no use as a trademark.

The decision of the German Federal Supreme Court in the case of the DDR-logo also concerned the questions of whether and when injunction claims based on an imminent danger of infringement can be asserted. The German Federal Supreme Court confirmed the case law by holding that an application for a German trademark justifies the presumption that the trademark will be used in commerce, and therefore constitutes an imminent danger of infringement, justifying a corresponding injunction action. Furthermore, the decision of the German Federal Supreme Court states that the imminent danger of an infringement can be more easily removed than the danger of repeated infringement; the exclusion of repeated infringement normally requires a declaration to cease-and-desist of the infringer. In the present case, the defendant applied twice for a German trademark showing the DDR-logo. The first German trademark application for the DDR-logo was deemed to be withdrawn since the defendant did not pay the application fee. The second German trademark application for the DDR-logo was actively withdrawn by the defendant. Accordingly, the German Federal Supreme Court held that there was no longer any imminent danger of infringement based on the previous German trademark applications of the defendant for the DDR-logo, since these applications were either actively withdrawn or deemed to have been withdrawn. In particular, the German Federal Supreme Court decided that the withdrawal of the previous German trademark applications for the DDR-logo by the defendant was an “actus contrarius” (act contrary to previous behaviour), which is sufficient to remove the imminent danger of an infringement that was previously created.