According to a recent judgment of the German Federal Supreme Court, refilling of commercial towel dispensers with third party paper towels will often constitute a trademark infringement (German Federal Supreme Court, judgment of October 17, 2018, I ZR 136/17 – Tork).
In the case at hand, the defendant, a manufacturer of paper towels, offered its products as “compatible with Tork towel dispensers”. The owner of the trademark “Tork” viewed this as aiding and abetting to a trademark infringement performed by the persons refilling the dispensers bearing its trademark. The appeal court denied trademark infringing activities. It argued that refilling of the branded dispensers with nondescript third-party paper towels would not adversely affect the trademark’s function of indicating commercial origin. According to the appeal court, the public is nowadays accustomed to the fact that, in the case of a large number of goods, there are basic devices the operation of which requires the use of materials not supplied by the manufacturer of the basic device. In its recent judgment of October 17, 2018, the German Federal Supreme Court, however, sets aside this ruling as legally incorrect.
As a starting point, the German Federal Supreme Court finds that, in principle, a trademark infringement exists if a refillable container marked with the trademark of the original manufacturer is refilled with goods from another manufacturer and the public understands the trademark on the container as an indication not only of the commercial origin of the container but also of the commercial origin of the contents. Whether or not this is the case depends on different factors:
- if the refill goods themselves bear a mark recognisable to the public when the goods are used,
- practices in the industry concerned and whether consumers are accustomed to the container being loaded with goods from other manufacturers, and
- if the consumers carry out the filling process themselves.
In the case at hand, the German Federal Supreme Court explained that the facts that (i) the defendant’s paper towels did not bear a clarifying indication of (different) commercial origin, and (ii) the towel dispensers are not filled by the actual users of the towels (but by the operators of the dispensers) clearly speak in favor of trademark infringement.
The German Federal Supreme Court’s reasoning is not limited to commercial paper towel dispensers but apply to each and every branded container used in commerce, which can be refilled with third party contents. The court explicitly mentions printer ink cartridges, vacuum cleaner bags, coffee capsules, razor blades and liquid soap. Its findings would also apply mutatis mutandis to refillable gas cylinders. In order to avoid trademark infringement, the manufacturer/supplier of compatible refill products should therefore at least clearly indicate their different commercial origin by applying its own trademark to the refill materials.