Hamburg, Germany – Not solely recognized for its well-known seafood and the third largest European seaport for items and cargo dealing with¹but in addition a substantial and noteworthy jurisdiction on the subject of the safety and enforcement of commerce mark rights in preliminary proceedings.

The Greater Regional Court docket of Hamburg present in a latest commerce mark dispute in preliminary injunction proceedings (Choice of 29 September 2022 – 5 U 91/21) between the “Deutsche Telekom” (“Deutsche Telekom” (“Claimant”) and the Spanish telecommunication firm “Telefónica” and its German subsidiary (collectively “Defendants”), that the applying and use of a “T” consisting of 5 dots together with varied Telefónica firm symbols (eg proven beneath left and center) (“Contested Indicators”) constitutes an infringement of the well-known “T-brand” (proven beneath proper) (EUTM 215194 ; DE 39529531) of Deutsche Telekom (“T-Commerce Mark”).

The Court docket discovered that there was a chance of confusion between the opposing indicators, confirming that the “T”-brand has a status throughout the that means of Artwork. 9(2) lit. c) of the EU Commerce Mark Regulation (Regulation (EU) 2017/1001), and subsequently concluded that the defendant’s commerce mark infringes the claimant’s commerce mark rights ensuing within the grant of a preliminary injunction (“PI”).

What has Occurred?

In April 2021, Telefónica introduced a re-branding of its model and subsequently filed varied commerce mark functions with the EUIPO that included the aforementioned “T” consisting of 5 dots, alone and in numerous combos with varied firm symbols. The Contested Indicators have been utilized by Telefónica in a corresponding press launch in English language and on its English web site in a video regarding the introduced re-branding. Its German subsidiary additionally used the Contested Indicators on the web site they usually have been used on varied social media web sites (eg Twitter, LinkedIn, and YouTube).

Instantly after changing into conscious of the commerce mark utility and the usage of the Contested Indicators, the Claimant despatched the Defendants a warning letter and, after their refusal to signal a stop and desist declaration, sought a PI in opposition to the Defendants.

Moreover the declare for injunctive aid as a result of precise use of the Contested Indicators, the Claimant additionally argued that its declare for injunctive aid can be justified due to their utility of the Contested Indicators by Telefónica.

What Did the Greater Regional Court docket of Hamburg Discover?

First, the Greater Regional Court docket of Hamburg confirmed the existence of a chance of confusion between the Claimant’s T-Commerce Mark and the Contested Indicators and located that the Claimant’s commerce mark has a status within the that means of Artwork. 9(2) lit. c) EU Commerce Mark Regulation and the corresponding provision in § 14 (2) No. 3 German Commerce Mark Act, in order that the commerce mark infringement declare is mostly justified.

With regard to the usage of a mark as a commerce mark in the midst of commerce, which is mostly required for a declare for injunctive aid, and the declare for injunctive aid relies on the mere utility for registration of the mark, the court docket famous that the mere utility and registration of an infringing mark constituted an imminent use of the registered mark as a commerce mark in the midst of commerce. For the infringement declare and the chance of repetition required for the injunction declare, which means the mere utility and registration of a trademark doesn’t justify the belief of the compulsory threat of repetition, because the sole registration will not be equal to the usage of a commerce mark in the midst of commerce. The opinion, that the mere utility and registration of an indication as trademark don’t in themselves represent the usage of an indication as a commerce mark for the products or companies claimed, in order that this doesn’t but represent an infringement of a previous trademark, has already been confirmed by the German Federal Supreme Court docket for German commerce mark regulation in a judgment in 2008.²

Regardless of the shortage of threat of repetition, the Greater Regional Court docket of Hamburg thought-about the trademark infringement declare and thus the issuance of a preliminary injunction to be justified as a result of hazard of first infringement. The hazard of first infringement is a comparable procedural prerequisite to the hazard of repetition, which – in contrast to the hazard of repetition – already exists when there’s a critical menace of infringement of a authorized curiosity protected by the authorized system and insofar factual indications of an imminent infringement of the protected authorized curiosity exists. Which means an precise infringement of the commerce mark will not be a prerequisite for the belief of the chance of first infringement, however that there should solely be factual indications which justify the belief that the defendant will perform an unlawful act within the close to future.³

On this regard, the Hamburg court docket acknowledged that such a hazard of first infringement is already established by the applying for an infringing commerce mark, as a result of the applying for an infringing commerce mark commonly offers rise to the presumption that the usage of the signal as a commerce mark for the registered items or companies is imminent within the close to future, except there are concrete indications which argue in opposition to such future use.⁴ Such concrete indications arguing in opposition to a future us as a trademark, have to be substantiated by the defendant.

The Greater Regional Court docket’s opinion, that the mere utility and registration of an infringing commerce mark commonly offers rise to the presumption that the usage of the signal as a commerce mark for the claimed items or companies is imminent within the close to future, except there are concrete indications arguing in opposition to such future use that have to be substantiated by the defendant, has additionally been confirmed by the German Federal Supreme Court docket in different commerce mark instances in 2010⁵ and 2014.⁶

What Does This Judgment Imply in Phrases of the Safety and Enforcement of Your IP Rights?

Within the case of a trademark utility with out accompanying use in the midst of enterprise, it’s doable to implement infringement claims by the use of a preliminary injunction.

Nevertheless, it needs to be taken under consideration that if the defendant revokes the applying, the trademark proprietor might not request an enterprise concerning the non-use sooner or later because the revocation of the trademark is deemed to be ample to exclude an infringement and the hazard of first infringement.

Likewise, it’s subsequently naturally advisable to file a corresponding trademark opposition with the related trademark workplace with a purpose to straight acquire cancellation of the infringing commerce mark and stop registration. The German native courts deciding on the trademark infringement haven’t any authority to determine on the validity. This have to be determined by the German Patent and Trademark workplace or the Federal Patent Court docket.

By Julia Goetz and Andreas Muller

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Footnotes

1. https://de.statista.com/statistik/daten/studie/255147/umfrage/haefen-in-europa-nach-containerumschlag/
2. BGH, judgment of March 13, 2008 – I ZR 151/05, para. 24 – Metrosex.
3. BGH, judgment of March 13, 2008 – I ZR 151/05, para. 17 – Metrosex.
4. Greater Regional Court docket of Hamburg, judgment of September 29, 2022 – 5 U 91/21, para. 144 – Telekom-T.
5. BGH, judgment of January 14, 2010 – I ZR 92/08, para. 24 ¬ DDR-Emblem.
6. BGH, judgment of January 22, 2014 – I ZR 71/12, para. 30 – Actual-Chips.