The assessment of genuine use of authoritative traffic circle is not limited to the portion of the consumer, of the fictitious brand “Duff Beer” from the animated series “The Simpsons” knows

a) The general principles of genuine use by deviating from the registration form apply for a trademark, which has a fictional origin (here: Favorite beer of the main character of an animated series) and by way of "reverse product placement” is used for re-ale Products.

b) After that, the law applicable to the assessment of genuine use traffic circle is not limited to the portion of the consumer, knows the fictional brand from the animated series. Remedy in these cases is rather to be reasonably well informed and reasonably observant and circumspect consumer.

JUDGMENT BGH I ZR 135/11 from 5. December 2012 – Duff Beer

Markeng § 26 Abs. 1 and 3, § 49 Abs. 1

a) The general principles of genuine use by deviating from the registration form apply for a trademark, the egg-tions fictional origin has (here: Favorite beer of the main character of a character chentrickserie) and by way of "reverse product placement” is used for re-ale Products.

b) Then for the assessment of genuine use of tailor-giving traffic circle is not on the part of the consumer be limited, knows the fictional brand from the animated series. Abzustel-tion is rather even in these cases to be reasonably well informed and reasonably observant and circumspect, measured by the average consumer.

BGH, Judgment of 5. December 2012 – I ZR 135/11 – OLG Nürnberg

LG Nuremberg-Fürth – 2 -

The I. Civil Division of the Federal Court of the oral negotiation 5. December 2012 by the presiding judge Prof. Dr. Bornkamm and the judge Prof. Dr. Schaffert, Dr. Kirchhoff, Dr. Cook and Dr. Loeffler

hereby:

The appeal from the judgment of the Higher Regional Court of Nuremberg 3. Civil Division of the 5. July 2011 is at the expense of the applicant shall be rejected.

By rights

Facts:

The defendant is the owner of the 8. June 1999 for “Beer” registered German word and figurative mark No. 39 901 100 (following: Armed brand):

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An inlaid against the registration of the trademark opposition dispute of an American film company, the rights to the name “Duff Beer” because of their use in the broadcast as a fictitious brand of beer in Germany animated series “The Simpsons” had asserted, was rejected by the Federal Patent Office. Between 2004 and the 13. July 2009 distribution of third-party defendant-brewed beer in bottles, which were labeled with the following label:

From 2006 the plaintiff was to 2 entrusted with the sale of beer to the defendant. At the 5. July 2009 concluded the defendant a license agreement, basis of which the licensee the mark in the form of armed, in which it is registered, used for the distribution of beer.

The applicant 1 is the holder of the 28. April 2009 among other things, registered for beer German word and figurative mark

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The plaintiffs also marketed under this brand beer. The plaintiff to 2 is-the owner of the 21. August 2009 for “Beer” registered German word and figurative mark No. 302 009 021 478:

The plaintiffs have the 14. July 2009 the German Patent- and Trademark Office requested the cancellation of the trademark dispute. They consider, the trademark dispute was between the 2004 and the 13. July 2009 labels used has not been used to preserve the rights. The defendant has the solution mixture applicant objected.

The plaintiffs filed suit in addition, deletion, with which they have be antragt,

order the defendant, to cancellation of the German Patent- and Trademark Office under No.. 39 901 100 registered word-figurative mark “Duff BEER” comply.

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They have also sought a declaration that, that the decline of the dispute on brand 14. July 2009 had occurred.

The district court sentenced the defendant applicant in accordance with. To the description of the defendant rufung the Court of Appeal set aside the judgment of the District Court from-changed and dismissed the action. With their revision approved by the Senate on, applied for its rejection of the defendant, pursue the plaintiffs their piano geanträge more.

Reasons:

I. This Court has adopted, that the conditions for cancellation of the trademark dispute are not available because of decay. For this it has executed:

The defendant disputes the brand through the use of the beer labels to 13. July 2009 used to preserve the rights. That the labels differed in their design of the trademark dispute, is harmless. Focus is the name of the identification “Duff BEER”, both in the stand of the registered trade mark and where the label at the center. The added item graphic designs will not attach their own authoritative characterizing effect. Nor stand the fact, that the sign used by the defendant on the labels now become the brand for the plaintiff 2 is registered, a genuine use of the armed counter-brand. Use is also made serious, because the defendant in the years 2007 and 2008 13.500 and 15.000 bearing the label bottles have sold.

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II. The attacks directed against this judgment of the revision have no success. The Court of Appeal rightly assumed, that the plaintiffs no right to consent to cancellation of the trademark dispute in accordance with § 49 Abs. 1, § 26 Trademark entitled, because the defendant has demonstrated, that he has used the mark in the last five years preceding the Löschungsan Treaty to preserve the rights in Germany.

1. Argued unsuccessfully that the revision, the Court of Appeal had erred in law in its assessment set rates based on upper.

a) The genuine use of a trade mark within the meaning of § 26 Abs. 1 Trademark Act requires, that the mark is used in a customary and reasonable manner for the Wa-re, for which it is registered (vgl. BGH, Judgment of 21. July 2005 I ZR 293/02, Wheat 2005, 1047, 1049 = WRP 2005, 1527 OTTO; Judgment of 18. December 2008 I ZR 200/06, Wheat 2009, 772 Rn. 39 = WRP 2009, 971 Augsburger; Judgment of 14. April 2011 I ZR 41/08, Wheat 2011, 623 Rn. 23 = WRP 2011, 886 Peek & Cloppenburg II). If the trademark is used in a form that deviates from the registration, is a genuine use in accordance with § 26 Abs. 3 Trademark only before, if the differences do not alter the distinctive character of the mark. This is the case, when traffic overall impression after equating the different signs used just for perception of differences still with the trademark, that is used in the form of still looks the same brand (vgl. BGH, Wheat 2009, 772, Rn. 39 Augsburger; BGH, Judgment of 19. November 2009 I ZR 142/07, Wheat 2010, 729 Rn. 17 = WRP 2010, 1046 MIXI; BGH, Wheat 2011, 623 Rn. 55 Peek & Cloppenburg II).

b) These criteria laid the Court of Appeal's decision to basically-. Contrary to the view of the appeal it has also not exclusively-

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Lich on the word element “Duff Beer” off, which kept the assessment of the overall impression of the characters as dispensable. The appellate court has taken all the elements of the two composite characters into view. It has its assessment specifically the differences in the font of the word sequence “Duff BEER” and the use of large- and lowercase letters in the word “BEER”, the different graphic design of the characters, the different colors and the addition of the words “the legendary” be based on the actual label used.

2. In vain the review also applies to the finding of the Court of Appeals, that the differences between the armed brand and bottle labels used did not alter the distinctive character of the mark according to the traffic view.

a) The assessment, whether to use a different characterizing the changing character of the brand, is basically the trial judge reserved the right and only limited on appeal, particular correct legal application and compliance with the general experience, verifiable (vgl. BGH, Judgment of 26. April 2001 I ZR 212/98, Wheat 2002, 167, 168 = WRP 2001, 1320 Bit/Bud; BGH, Wheat 2009, 772 Rn. 44 Augsburger; BGH, Judgment of 31. More 2012 I ZR 112/10, Wheat 2013, 68 Rn. 14 = WRP 2013, 61 Castell/VIN CASTEL).

b) This Court has adopted, Focus marking is the name “Duff Beer”. This stand in both the regis-tered trademark and used on the label at the center. The formative designation “Duff Beer” each located within an oval structure. The added graphic designs will not attach authoritative own distinctive effect. This also applies with regard to the un-

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terschiedliche color design. The color scheme is for beer labels of secondary importance, Breweries versähen because usually their unified brand, depending on type of beer labeled with different color schemes. Harmless is also the use of the logo “the legendary” on the label. To this extent, it were a descriptive or otherwise clearly not her future characterizing term, of the word mark “Duff Beer” not merge into a single character.

c) This tatrichterliche judgment of the court below does not show any error of law.

aa) However, the revision of the relevant point, that it does not really matters for assessing the distinctive character of a sign's composite, if an individual mark component has to be taken about ge distinctive character or by which components of a composite sign be dominated (vgl. BGH, Wheat 2009, 772 Rn. 45 Augsburger, mwN). Of such “Character” for the purposes of the examination of a likelihood of confusion under § 14 Abs. 2 No.. 2 Trademark authoritative principles of the Court of Appeal, however, not considered in case of dispute. It has placed its assessment of the case, rather applicable to the Federal Supreme Court based, which differences in graphic design do not change the distinctive character of the registered mark, if they do not fall in the overall impression the weight, because the graphic elements constitute only an ornament-ing or the traffic attached to them for other reasons not indicative of the distinctive character of the trade mark application and the form used (vgl. BGH, Wheat 2010, 729 Rn. 20 MIXI; BGH, Decision of 13. December 2007 I ZB 39/05, Wheat 2008, 719 Rn. 24 = WRP 2008, 1098 idw Informati-

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onsdienst Science; BGH, Wheat 2002, 167, 168 Bit/Bud; Ströbele in Ströbele / Hackers, Trademark, 10. Ed, § 26 Rn. 149).

bb) Without success, the appeal against the tatrichterliche application of these principles applied by the Court of Appeal. This has rightly placed on the understanding of the dispute by the brand and the label used the addressed traffic circle of beer consumers and has, on this basis in the assessment of the overall impression of brand battle and used label the word element “Duff Beer” error of law attached to an authoritative meaning.

(1) When word of- and image components combined names based the traffic according to the general experience of life in general instrumental in the verbal component, because it is generally for the road users is easiest, specifying the goods offered under the brand with the help of the word of (BGH, Wheat 2002, 167, 169 Bit/Bud, mwN). It is true that the image components become of significant importance in the context of the overall consideration offered, when the word component has a weak distinctive character (vgl. BGH, Wheat 2013, 68 Rn. 18 Castell/VIN CASTEL). The word part “Duff” However, in view of the product has "Beer” in Germany no descriptive notes. Rather, it is particularly suitable because of the brevity and conciseness as a designation of origin. Migrating the revision also makes the claim not. In addition, that the use of the word element of the name especially in oral purchase orders, in pubs is required (vgl. BGH, Wheat 2002, 167, 169 Bit/Bud).

(2) For legal reasons not to complain is also the acceptance of the Court of Appeals, the graphic design and the use of the armed Brand-

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Deten label will not have a decisive effect characteristic measured at-.

The traffic is accustomed, that he encounters on labels of beer bottles regularly pictorial elements with decorative character (vgl. BGH, Wheat 2002, 167, 169 Bit/Bud). Also in the deviation of the color design of the pictorial elements has seen revision legally unobjectionable manner, no change in the characteristic nature of the dispute, the Court of Appeal brand. The adoption of the Appellate Court, the color of beer labels is secondary, Breweries usually provided because their unified brand, depending on the type of beer labeled with different color design, is not incompatible with practical experience. The fact, tion that the user form a different font and a different font color than the registered trade-mark used, is a genuine use does not also towards, if this does not alter the distinctive character of the trademark dispute (vgl. BGH, Wheat 2013, 68 Rn. 21 Castell/VIN CASTEL; Ströbele into Ströbele / Hacker AAO § 26 Rn. 141 f.). So it is also in dispute. The revision does not allege, that are at issue here, fonts or colors from the traffic in terms of the goods' beer” be perceived as unusual or otherwise characterize.

The judgment of the court below shall not prevent the circumstance, that both the military and the brand label used are designed like an emblem. There is no empirical proposition, according to which the word traffic- and image elements, to him entgegentre th in the form of an emblem, always perceived as a single character (vgl. BGH, Decision of 9. July 1998 I ZB 7/96, Wheat 1999, 167, 168 = WRP 1998, 1083 Karolus Magnus-; Decision of 30. March 2000 I ZB 41/97, Wheat 2000, 1038, 1040 = WRP

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2000, 1161 Granary; vgl. also Ströbele in Ströbele / hacker supra § 26 Rn. 132).

Unsuccessfully challenges the revision, did the Court of Appeal from the Se-nat in the decision “Kappa” (Judgment of 20. January 2011 I ZR 31/09, Wheat 2011, 824 = WRP 2011, 1157) formulated empirical law not being applied, according to which a phonetic similarity between the signs due to compliance of the verbal elements by variations in image composition can be neutralized, when the goods designated by the mark would buy regularly only on sight. This experience set also come into consideration in case of dispute, because beer is purchased regularly to view.

However, the Senate has in the decision “Kappa” not set up such a He-fahrungssatz, but it left open, whether in the examination of the likelihood of confusion for the sound to affirmative identity of similarity or of opposing characters can also be neutralized by deviations in the picture to a degree, that a character similarity and thus a likelihood of confusion resigns. Such neutralizing come – in the examination of the likelihood of confusion – then at best be considered, when the goods designated by the mark would regularly purchased only at sight (vgl. BGH, Wheat 2011, 824 Rn. 31 Kappa). This the grades in the examination of confusion considerations are not relevant to the fundamental question of any vested right-sustaining use (vgl. BGH, Decision of 30. March 2000 I ZB 41/97, Wheat 2000, 1039, 1039 = WRP 2000, 1161 Granary; Ströbele into Ströbele / Hacker AAO § 26 Rn. 123). Moreover, it has been found neither in the present nor the Court of Appeal relied on by the parties, that the goods are marked with the trademark dispute “Beer” is regularly purchased only at sight. In this regard,, that such beer as set forth in host-

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sites will be asked to an oral order, is a pertinent An exception rather more remote.

(3) The addition of the phrase “the legendary” on the used beer label is the distinctive character of the mark is not well armed against. The adoption of the Appellate Court, to the extent that it is the addition of a descriptive or otherwise clearly not origin characterizing term, does not merge with the registered word mark into a single character, revision is unobjectionable, especially not with practical experience.

cc) The revision also contends, The appeal court had disregarded the fact in its assessment wrongly, that the name “Duff Beer” Since its origin in the 1991 transmitted without interruption on German television animated series “The Simpsons” and there was the favorite beer of the main character “Homer Simpson” characterizing. Against this background, the graphic design needs, the form used in the label design used in the animated series of “Duff Beer” is much more similar than in the armed Brand, own authoritative characterizing effect be given to, because they enable the public concerned the assignment to the animated series. This complaint also helps the audit is not successful.

(1) In case of dispute, but there is a special, that the subject matter of the dispute made brand name “Duff Beer” has its origin in an animated series and in the way the “reverse product placement” Has use for a sold goods found in the real world (vgl. to this phenomenon Slopek / Napiorkowski, Wheat 2012, 337). This circumstance

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However, in case of dispute has no impact on the question of genuine use of the trademark dispute within the meaning of § 26 Abs. 3 Sentence 1 Trademark.

(2) Although the revision of the relevant point, that those consumers, the animated series the “The Simpsons” and there occurring “Beer brand” know, will be based not only on the verbal component of the armed trademark and used form. Due to the specific nature, that a fictional product is taken over into the real world, like the graphical elements of the signs in question for these consumers may have a meaning in the context of the assessment of the overall impression. Contrary to the view of the appeal but can be turned off in dispute in determining the public does not solely on the consumer, who know the fictional brand from the animated series.

(3) In examining the genuine use of a different form of registration of the mark within the meaning of § 26 Abs. 3 Trademark must be based on the public's perception (vgl. BGH, Wheat 2009, 772 Rn. 39 Augsburger; Wheat 2010, 729 Rn. 17 MIXI; Wheat 2011, 623 Rn. 55 Peek & Cloppenburg II). It can be used to determine the targeted public groups, are generally determined based on the scale of the well informed and reasonable sen observant and circumspect average consumer and to the rules governing the determination of the public's perception of the likelihood of confusion developed principles (vgl. Ingerl / Rohnke, Trademark Act, 3. Ed, § 26 Rn. 18).

Then turn off is to determine the relevant public to those customer-, ask the specific goods or services. The goods or services are of their generic nature and that their objective characteristics based on

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place (vgl. BGH, Decision of 21. February 2008 I ZB 24/05, Wheat 2008, 710 Rn. 32 = WRP 2008, 1087 FACE; Ingerl / Rohnke AAO § 14 Rn. 447). Here, the dispute brand is in the class of goods 32 the Nice Classification for “Beer” incorporated. They claimed that protection for a regular alcoholic drink metallic, the adult by a wide audience of consumers, not just connoisseurs of the animated series “The Simpsons” is sought.

In the circumstance relied on by the auditors, the ha-be defendant at the time of 2004 until 13. July 2009 used label design dialed, to achieve an association with the animated series when traffic, it does not matter. Such marketing strategy “reverse product placement”, aligns the concrete product range primarily to the connoisseurs of the series, ist ohne Interest. The relevant types of goods are to be assessed for permanent characteristic criteria and not by advertising or marketing strategies conceptions, which can be changed at any time tion (vgl. BGH, Judgment of 12. July 2001 I ZR 100/99, Wheat 2002, 340, 341 = WRP 2002, 330 Fabergé).

Therefore, is to understand the adult informed and reasonably observant and circumspect for assessing circumspect average consumer. Any existing special skills are not to be considered only for small parts of the trans-port (vgl. BGH, Be resolution dated 28. September 2006 I ZB 100/05, Wheat 2007, 321 Rn. 24 = WRP 2007, 321 COHIBA; Ingerl / Rohnke AAO § 14 Rn. 475).

The appeals court has not found, informed that the normal average consumer knows, that with “Duff Beer” the preferred Bierge-saturating the main character in the animated series “The Simpsons” is called and the label looks like this fictitious product. The revision does not complains,

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that the Court of Appeal with regard to the determination of the conception of the issues raised by a beer label for the average consumer what the plaintiff has not considered an error of procedure. Objections det is only, that the appellate court did not refer to those consumers, the series and the “Cult beer” know. But it comes to this part as set out not for legal reasons.

d) Without success, the revision shall apply to the adoption of the Appellate Court, it'm a genuine use of the trademark dispute does not preclude the circumstance, that for the plaintiff to 2 with the German word and figurative mark No. 302 009 021 478 a brand of “Beer” en-tered was, which corresponds to the findings of the court of the form used by the defendant. As the Court of the European Union to the corresponding question of the Senate (vgl. Decision of 17. August 2011 I ZR 84/09, Wheat 2011, 1142 = WRP 2011, 1615 AGAINST) decided, it is the owner of a registered trademark is not denied, for the detection of their use within the meaning of Article. 10 Abs. 2 For sure. to appoint a fact of TMD, that it is used in one of their entry deviating form, without affecting the differences between these two forms, the distinctive character of the mark, and that irrespective of which, that the different shape is itself registered as a trademark (vgl. ECJ, Judgment of 25. October 2012 C553/11, Wheat 2012, 1257 Rn. 30 = WRP 2012, 1514 Rintisch). It, whether the registration of the German word and figurative mark No. 302 009 021 487 is carried out at a time, to which the defendant dispute the brand already no longer used in this form as registered has, it does not matter.

3. The use of the trademark dispute is finally takes seriously.

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a) A mark is then used seriously, when according to their main function, identify the origin of goods or services to guaran-tee, for which it is registered, is used, to open up for these goods and services a market or to secure. Excluded are the cases, in which the mark is used only symbolically, to safeguard the rights conferred by. The seriousness of the use of the mark is used to assess all the facts and circumstances, by establishing whether the commercial exploitation of the mark in commerce are the can. To expect in particular the scope and frequency results of the use (vgl. ECJ, Judgment of 13. September 2007 C234/06, Slg. 2007, I-7333 = GRUR 2008, 343 Rn. 72 = WRP 2007, 1322 – The Bridge Financial / OHIM [BAINBRIDGE]; BGH, Wheat 2010, 729 Rn. 15 MIXI; Wheat 2012, 832 Rn. 49 ZAPPA). Question, whether use is sufficient quantity, order to maintain or create market share for the rights protected by the trademark goods or services, thus depends on several factors and on a case assessment (vgl. ECJ, Wheat 2008, 343 Rn. 73 The Pon-yourself Financial / OHIM [BAINBRIDGE]; BGH, Wheat 2012, 832 Rn. 49 ZAPPA).

b) This Court has adopted, that use of the trademark dispute, at least in the years 2007 and 2008 is seriously done. Were in the two years 13.500 and 15.000 Been sold bottles, which were provided with the Duff Beer Label. At this scale was also taking into account the fact, that the sales of bottled beer was a mass market, no evidence given for it, that only a sham use was made. This outgoing of applicable legal principles the Court of Appeal judgment, its findings of fact not so far taken the revision takes into doubt, is no objection on legal grounds.

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III. After the revision of the plaintiff's costs with the consequence of § 97 Abs. 1 ZPO dismissed.

Bornkamm Schaffert Kirchhoff

Cooking Loeffler

Lower courts:

LG Nuremberg-Fürth, Decision of 03.11.2010 – 3 The 671/10 -

OLG Nürnberg, Decision of 05.07.2011 – 3 You 2534/10 -

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