TM Decisions

The following pages contain judgements or at least their basic principles sorted according to their topic. Apart from the basic principles, there are also statements of the facts of the case and comments on the judgement. Comments reflect our opinion and can not claim to be complete.

Please note that each judgement, even the most judicial, is always based on a particular individual case. Therefore, it is neither possible nor sensible to make generalisations. Rather, it is recommended to revise the facts of an individual case.

At present you will find the following decisions (judgements and rulings) on this page:

• The Federal High Court of Justice BONUS II (The Federal High Court of Justice, ruling of 28th February 2002 – IZB 10/99 – Federal Patent Tribunal)
• ECJ (Court of Justice of the European Communities) colour trademark (ECJ judgement of – Ref.: C-104/01 – Colour Trademark Orange)

Important Trademark Case Law

Case law plays a crucial role in shaping trademark law by interpreting legislation and setting precedents for future decisions. Below is an overview of landmark cases in trademark law, categorized by relevant issues, including case numbers (if available), the deciding courts, and simplified explanations.

1. Trademark Distinctiveness

Case: Libertel Groep BV v. Benelux-Merkenbureau

• Court: European Court of Justice (ECJ)
• Case Number: C-104/01
• Date: May 6, 2003
• Key Issue: Can a single color be registered as a trademark?
• Decision:
• A single color can be registered if it is distinctive and can be graphically represented.
• The applicant must prove that the color has acquired distinctiveness through use.
• Impact: This case clarified that non-traditional trademarks, like colors, could be protected under EU law if they meet specific criteria.

Case: Windsurfing Chiemsee Produktions v. Huber and Attenberger

• Court: European Court of Justice (ECJ)
• Case Number: C-108/97
• Date: May 4, 1999
• Key Issue: Geographical names as trademarks.
• Decision:
• Geographical terms can be registered as trademarks if they have acquired distinctiveness.
• Descriptive geographical terms are generally not registrable unless widely recognized as a brand by consumers.
• Impact: This case set guidelines for registering geographical terms.

2. Likelihood of Confusion

Case: Interflora Inc. v. Marks & Spencer Plc

• Court: Court of Justice of the European Union (CJEU)
• Case Number: C-323/09
• Date: September 22, 2011
• Key Issue: Use of trademarks in keyword advertising.
• Decision:
• Using a competitor's trademark as a keyword in online advertising may cause confusion and constitute trademark infringement if it misleads consumers about the origin of goods or services.
• Impact: Defined rules for keyword advertising and its relationship with trademark law.

Case: Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc.

• Court: European Court of Justice (ECJ)
• Case Number: C-39/97
• Date: September 29, 1998
• Key Issue: Criteria for assessing the likelihood of confusion.
• Decision:
• The overall impression created by the trademarks, including their visual, phonetic, and conceptual similarities, must be considered.
• Goods or services' similarity and the distinctiveness of the earlier mark are also key factors.
• Impact: Established the "global appreciation" test for determining confusion.

3. Trademark Infringement

Case: L’Oréal SA v. Bellure NV

• Court: European Court of Justice (ECJ)
• Case Number: C-487/07
• Date: June 18, 2009
• Key Issue: Protection against the use of trademarks with "unfair advantage."
• Decision:
• The use of a mark that takes unfair advantage of or harms the reputation of a well-known trademark constitutes infringement, even without confusion.
• Impact: Strengthened protections for famous trademarks, even against indirect harm.

Case: Adidas AG v. Marca Mode

• Court: European Court of Justice (ECJ)
• Case Number: C-102/07
• Date: June 10, 2008
• Key Issue: Whether parallel stripes on clothing infringed Adidas' three-stripe trademark.
• Decision:
• Similar designs on clothing can create confusion and dilute the distinctive character of Adidas' trademark.
• Impact: Reinforced trademark rights for distinctive brand elements.

4. Trademark Use and Non-Use

Case: Silberquelle GmbH v. Maselli-Strickmode GmbH

• Court: European Court of Justice (ECJ)
• Case Number: C-495/07
• Date: January 15, 2009
• Key Issue: Genuine use of a trademark.
• Decision:
• Promotional use of a trademark (e.g., free giveaways) does not qualify as "genuine use" to maintain trademark rights.
• Impact: Defined "genuine use" for maintaining trademark registrations.

Case: Ansul BV v. Ajax Brandbeveiliging BV

• Court: European Court of Justice (ECJ)
• Case Number: C-40/01
• Date: March 11, 2003
• Key Issue: What constitutes genuine use of a trademark.
• Decision:
• Genuine use means use that keeps the trademark functional in the market, not just symbolic use.
• Impact: Clarified how businesses must use trademarks to keep them valid.

5. Dilution and Reputation

Case: Intel Corporation Inc. v. CPM United Kingdom Ltd.

• Court: European Court of Justice (ECJ)
• Case Number: C-252/07
• Date: November 27, 2008
• Key Issue: Protection of trademarks with a reputation.
• Decision:
• Dilution occurs when a mark with a reputation is used in a way that weakens its uniqueness, even without confusion.
• Impact: Enhanced protection for famous trademarks against dilution.

6. Domain Name Disputes

Case: Google France SARL v. Louis Vuitton Malletier SA

• Court: European Court of Justice (ECJ)
• Case Number: C-236/08
• Date: March 23, 2010
• Key Issue: Use of trademarks in online advertising (AdWords).
• Decision:
• Google does not infringe trademarks by allowing advertisers to bid on trademarked keywords, but advertisers must avoid misleading ads.
• Impact: Balanced trademark rights and freedom of online advertising.

7. National Case Examples

Germany:

Case: Sparkassen Red Color Case

• Court: German Federal Court of Justice (BGH)
• Case Number: I ZR 234/12
• Key Issue: Protection of the color red as a trademark for financial services.
• Decision: The color red could be protected as a trademark, but it must have acquired distinctiveness through use.
• Impact: Demonstrated the challenges of protecting single colors in Germany.

USA:

Case: Qualitex Co. v. Jacobson Products Co.

• Court: U.S. Supreme Court
• Case Number: 514 U.S. 159 (1995)
• Key Issue: Can colors be trademarked under U.S. law?
• Decision:
• Colors can be registered as trademarks if they have acquired secondary meaning and are not functional.
• Impact: Opened the door for non-traditional trademarks in the U.S.

Conclusion

Trademark case law shapes how laws are applied in real-world scenarios. Cases like Libertel and Interflora have defined the boundaries of distinctiveness and confusion, while decisions like L’Oréal v. Bellure have strengthened protections for famous trademarks. Understanding these rulings helps businesses navigate trademark challenges and build strong, legally secure brands.