Use of a composite sign does not constitute genuine use of a trademark registered for one of its elements merely because of the fact that this element retains an individual distinctive role. This practically important conclusion stems from a recent decision of the German Federal Court of Justice (decision of May 11, 2017, I ZB 6/16 – Dorzo).
In the case at hand, the appellant opposed a German trademark registration on the basis of his prior word mark “Dorzo”. The proprietor of the contested trademark asked him to prove that the opposition trademark had been put to genuine use. The evidence submitted subsequently showed use of the sign “Dorzo” only in combination with additional verbal elements, such as “Dorzo-Vision®”. In its decision, the German Federal Supreme Court maintains, first, that use of the sign “Dorzo-Vision®” cannot be considered as use of the trademark “Dorzo” in its registered form (sec. 26 (1) German Trademark Act). According to the court, the targeted public does not perceive the element “Dorzo” as an individual/autonomous indication of origin particularly (i) due to its conjunction with the further element “Vision” by the hyphen, and (ii) in view of the placement of the ® symbol at the composite sign’s end (indicating a trademark registration for the complete composite sign).
In the following, the German Federal Supreme Court analyzed the situation under under sec. 26 (3) German Trademark Act. This regulation stipulates that also the use of a trademark in a form deviating from the registration shall be deemed to constitute genuine use if the deviations do not change the distinctive character of the trademark. Here, the appellant argued that “Dorzo” retained an individual distinctive role due to the fact that the additional element constituted the core element of his licensees “Vision” formative family of trademarks. The German Federal Supreme Court dismissed this line of reasoning. It explained that the concept of the individual distinctive role of trademark elements as established by the Court of Justice of the European Union in its “Thomson Life” decision (judgment of the Court of Justice of the European Union of October 6, 2005, C-120/04) applies only to the assessment of the likelihood of confusion in a trademark conflict. It has no impact on the determination of genuine use.
It is common practice in many business sectors to create a trademark family by using combinations of a common core element together with additional elements serving to differentiate the trademark owner’s individual products. In order to safeguard this strategy, individual trademarks usually are registered for the core element on the one hand and for the isolated additional product identifiers as such on the other hand. This approach is particularly advantageous in order to obtain a broad scope of trademark protection. On the other hand, it requires the trademark proprietor’s utmost diligence to ensure genuine use of the individual trademarks. Here, it is important that the targeted public perceives the combined elements as individual trademarks. The easiest way to achieve this objective is to place the internationally acknowledged ® symbol behind each element individually covered by a trademark registration. With other words, if the appellant and its licensee, respectively, would have used “Dorzo®-Vision®” instead of “Dorzo-Vision®”, the outcome of the proceedings might have been completely different.