26. February 2009

Trademark Law

In this case, the German Federal Court of Justice once again dealt with the question as to whether the ® symbol represented a competition-relevant deception.

An exception to the competition-relevant prohibition on misleading conduct with an ® is if the advertising party is the owner of a similar mark, and the use of the symbol constitutes a legitimate use of this mark. The mark “Termorol”, which the plaintiff was allowed to use as a licensee, deviates from the mark “Thermoroll”, used with the ® symbol, by two letters. The present case therefore dealt with the question as to whether this deviation was of importance under § 26, sec. 3 of the German Trademark Act.

According to established case law of the Federal Court of Justice, advertising is only misleading if it is likely to create wrong ideas of the offer in a significant part of the targeted business circles, and to influence the market decisions to be made in a competitively relevant manner.

In the decision “Thermoroll”, the Federal Court of Justice held that anyone using a mark with the ® sign, without being owner or licensee of the mark, always misleads buyers in a competitively relevant manner. The addition of ® is understood by buyers in so far as there is a mark with exactly this content and that there exists a right to use it. The registered mark, “Termorol”, and the disputed mark, “Thermoroll”, are not exceptions.

Under § 26, sec. 3 of the German Trademark Act, minor deviations are not of importance as long as they do not change the distinguishing character of the mark. A prerequisite however, is that the buyers still recognize the registered mark in the form in which it is used. Deviations resulting from adding or doubling of letters are only irrelevant for the question of a legitimate use if they have neither a phonetic nor a conceptual significance. According to the decision of the Federal Court of Justice, the deviations are relevant in the present case for “Termorol” (registered mark) and “Thermoroll” (disputed mark with ® symbol). Accordingly, the use of a double consonant at the end of the word leads to a different pronunciation: The long “o” of the last syllable of the “Termorol” mark is replaced by a short “o” in “Thermoroll®”. Moreover, the insertion of “h” behind the first letter “T” may provide a much stronger association with the term “therm-“ (for warmth). The Federal Court of Justice has taken the view that the decision of the Court of Appeal, i.e. the deception that the “Thermoroll®” mark deviates from the existing “Termorol” mark is irrelevant for competition, to be incorrect.

Download the full text of the decision I ZR 219/06 “Thermoroll” of the BGH of February 26, 2009 under: