Facts
Decision
In a recent case the Frankfurt am Main Higher Regional Court had to consider the application of Article 98(1) of the EU Community Trademark Regulation (207/2009) and Section 14(5)(2) of the Trademark Act in relation to the use of images of Volkswagen vehicles on posters and vintage tin advertising signs.(1)
The plaintiff was Volkswagen, a leading European motor vehicle manufacture. The defendant was a leading poster and prints vendor. The plaintiff made available for sale through its website a selection of selection of posters, art prints, photo prints and tin signs, which featured Volkswagen vehicles under the heading "Volkswagen". The signs featured a Volkswagen station wagon (Article 184343) and a Volkswagen Beetle convertible (Article 1848364), each of which carried the Volkswagen logo.
Figure 1
The plaintiff requested an injunction preventing the distribution and marketing of the signs, posters and prints which featured the protected trademarks. The plaintiff argued that:
- the word mark VW was protected by Community Trademark G 1354216;
- the word mark VOLKSWAGEN was protected by Community Trademark G 703702;
- the circular Volkswagen logo was protected by Community Trademark G 2069342;
- the word mark BEETLE 3D was protected by Community Trademark G 2069342;
- the three-dimensional shape of the Volkswagen Beetle was protected by Community Trademark G 2069342 and by National Mark 39650184.2;
- the three-dimensional shape of the Volkswagen bus was protected by National Mark 30627911.8; and
- the word mark BEETLE was protected by National Mark 851994.
The regional court issued the requested injunction and ordered the recall and destruction of the signs, prints and posters. The court also ordered the defendant to provide information upon request and to reimburse Volkswagen of the expenses it incurred by sending warning letters. Furthermore, the court held the defendant liable for damages caused by the sale of the infringing goods. The defendant appealed.
The Frankfurt am Main Higher Regional Court held that the injunction was justified. Thus, the plaintiff was entitled to claim injunctive relief against the distribution and marketing of the above-mentioned products that featured the trademark VOLKSWAGEN, the VW logo, the figurative mark containing the word element "Beetle", and the figurative mark containing the word element "VW Bus". Thus, a claim could be based on Articles 98(1) and 9(1) of the EU directive and Section 14(5)(2)(3) of the Trademark Act.
However, the court found that Article 9(1) of the EU directive and Section 14(1)(1) of the Trademark Act had not been infringed, since the so-called 'double identity' requirement (ie, the existence of identical signs and identical goods or services) was not met. More precisely, the three-dimensional figurative marks containing the word elements "Beetle" and "VW Bus" and the two-dimensional vehicles featured on the tin signs could not be considered identical signs. Moreover, even though the goods subject to the word mark "Volkswagen" and the figurative mark "VW Logo" and the tin signs in suit were very similar, no identity of goods could be established – that is, the marks were not being used in connection with the same goods or services as those for which the marks were registered.
The court held that an injunction could not be based on Article 9(1)(b) of the EU directive or the corresponding Section 14(2)(2) of the Trademark Act, since the requirements regarding the trademark's use had not been met. Such use could be assumed with respect to a likelihood of confusion only if the use of the trademark by a third party violated the most important function of the trademark (eg, guaranteeing the origin of the goods for consumers). The court concluded that this was not the case, since consumers had not been provided with information to mislead them into believing that the trademark owner (ie, Volkswagen) had manufactured the signs, prints or posters.
This finding was in contrast to that of the lower regional court. The lower court had ruled that the public may conceive the tin signs as advertisements for the plaintiff's motor vehicles. The lower court found that this resulted in promoting the reputation of the plaintiff, since the average consumer would assume that the tin signs either originate from the plaintiff as the manufacturer of the goods or were based on an order from the plaintiff. The appeal court disagreed and determined that consumers would be more likely to consider the tin signs to have a mere decorative purpose. The court based this finding on the signs' governing criteria.
The court made clear that the tin signs had been designed to appear to be advertising boards dating from the 1950s and 1960s, and represented vehicles which had not been manufactured by Volkswagen for many years. In fact, the court pointed out, tin signs have not been used to advertise products since the 1930s. The court found that the average consumer would realise this and thus would not assume that the tin signs were genuinely being used by the plaintiff to advertise discontinued models. The court further determined that no indication-of-origin function could be based on the assumption that contractual links (eg, licensing agreements) existed between the parties.
However, the court found that an injunction could be based on the unjustified exploitation of the reputation of the trademarks at issue. For the court, this followed from Articles 98(1) and 9(1) of the EU directive and, with respect to the figurative "VW Bus" mark, from Section 14(5)(2)(3) of the Trademark Act. The trademarks at issues were well known. They were also conceptually similar. Conceptual similarity also applied to the circular Volkswagen logo with respect to the plaintiff word mark VW, since the public would assume that these signs implied a link to the Volkswagen company. The mere fact that the public would establish a link between the tin signs and plaintiff's mark was sufficient in this respect, explained the court.
Moreover, the court considered that the design of the tin exploited the good reputation of the plaintiff's trademarks without justification. In this respect, the court cited the European Court of Justice (ECJ) decision in L'Oréal/Bellure, holding that an unfair advantage of reputation is established if the infringing mark rides on the coat-tails of an older mark with a better reputation in order to benefit from the association.(2) According to the court, this was the case here. The court explained that the features of the trademark-protected vehicles and the trademarks as such were the only essential information contained on the tin signs. The nostalgic flair of the tin signs was exclusively caused by the features of the vehicles featured; no other link to the past existed.
The court found that for consumers, an affinity with the popular vehicle models could be the most important reason to make a purchase decision. Therefore, the court concluded that the defendant was taking advantage of the plaintiff's trademarks. This, the court stated, was "not about inspiring sympathy with the motor vehicles or those days, but rather to exploit the good reputation of the trademarks at issue in order to reach potential customers".
The defendant could not rely on the artistic freedom afforded by Article 5(3) of the Constitution. The court stated that artistic freedom cannot take priority over the protective rights of a trademark owner when a trademark has been infringed for commercial advantage. The court stated that the defendant had had no artistic input, but rather had merely exploited the good reputation of Volkswagen to generate sales.
For further information on this topic please contact Martina Schuster at Klinkert Zindel Partner by telephone (+49 69 972 65 600), fax (+49 69 972 65 6099) or email ([email protected]).
Endnotes
(1) Case GRUR-RR 2011, 170.
(2) L'Oréal/Bellure, ECJ, Decision C487/07, June 18 2009, GRUR 2009, 756 41ff.