Even usage of an identical sign on the outside of articles of clothing does not necessarily constitute trademark infringement. This is the gist of a recently published judgment of the German Federal Supreme Court (judgment of November 10, 2016, I ZR 191/15 – Sierpinski-Dreieck).

In the underlying infringement proceedings, the defendant enforced its trademark rights in a specifically stylized triangle design by means of a counterclaim against the plaintiff’s distribution of sweaters showing the identical sign in the repetitive succession all over these garments’ outside. The German Federal Supreme Court had to decide whether or not this constituted a legally relevant use of the sign as a trademark.

In its reasoning, the court highlighted once again that fulfillment of the “use as a trademark” requirement has to be assessed particularly carefully with a view to the use of symbols, pictures or even words on the exterior of articles of clothing. The targeted public will not necessarily perceive the sign as an indication of origin if the respective trademark is not well known, and if it is not used in a manner typical for fashion trademarks (e.g. on the left-hand side of the chest area). With a view to the case at hand, the court found that the application of the sign in a repetitive succession all over the sweaters’ outside evoked the impression of a decorative pattern rather than a trademark. Consequently, it denied trademark infringement and dismissed the defendant’s counterclaim.

Practical Impact:

It can be anticipated that, in the future, defendants in trademark infringement proceedings related to the use of figurative or word signs on the exterior of clothing will inflationary refer to this new decision of the German Federal Supreme Court in order to rebut the asserted claims. However, they will have to keep in mind that the court did not give carte blanche for the use of third parties’ brands on fashion articles. Particularly if the invoked trademark has achieved a certain degree of recognition, or if the sign is applied to the contested product in a manner typical for trademarks in the respective fashion sector, the German courts will still generally confirm trademark infringement.

As an aside, this new decision is also interesting for trademark proprietors, who are required to use their marks genuinely in order to safely prevent non-use cancellation proceedings. Use of a sign in a purely decorative manner as assessed by the German Federal Supreme Court does not suffice to guarantee a trademark’s validity.