A recent decision of the German Federal Court of Justice (Bundesgerichtshof - BGH) concerned not one, but two contentious aspects of trade mark law: 'double identity of black & white vs. colour marks' and the 'limitation of the effects of a trade mark regarding spare parts'.

The defendant marketed spare parts for cars. Among these parts were BMW plaques as depicted on the right, which closely resembled the plaques sold by the claimant, the known German car producer Bayerische Motoren Werke AG (or, for short, BMW). These plaques can be attached to the bonnet or tailgate of the cars produced by BMW. The claimant successfully argued before the BGH that the defendant's plaques infringed BMW's trade mark rights. So far, so good.

Interestingly however, according to the Court, this finding could not be based on Sec. 14(2) No. 1 German Trade Mark Act (implementing Art. 5(1)(a) of the CTM Directive). Luckily for trade mark enthusiasts, the claimant had only brought forward the registered black and white trade mark on the left (covering, inter alia, plaques), without relying on a coloured version of the mark. Consequently, the Court took only the black and white mark in its registered form into account.

Making reference to LTJ Diffusion (see Case C-291/00, para. 54) the BGH pointed out that a sign is identical with an earlier mark where it contains only insignificant differences. Insignificant is a difference that a consumer will only perceive upon a side by side examination of the signs. On this basis, the BGH held that a sign which is registered in black and white is not identical with a coloured version of the same sign, unless the difference in colour is insignificant. Using the colour blue instead of black was, in the present case, held to be 'significant' (i.e., the signs were not identical).

This result, as the BGH stated, was in line with the controversial "Common Communication on the Common Practice of the Scope of Protection of Black and White ('B&W') Marks" of 15 April 2014, presented by OHIM and national trade mark offices (click here). Going one step further, the Court even compared the present case expressly to the below example for a 'significant difference' taken from the Common Communication:

It goes without saying that OHIM's Common Communication did not determine the issue of 'identical signs' for infringement cases (but rather as regards relative grounds for refusal, among other things). Moreover, the strict approach of the Common Communication raised some concerns (as reported by the IPKat here). However, the present decision clearly took the same approach for infringement cases, too. On the bright side, in doing so, the BGH made sure that the question of 'identity' is to be assessed according to the same principles for relative grounds for refusal and infringement issues.

Subsequently, the Court held that the marks at issue were likely to be confused within the meaning of Sec. 14(2) No. 2 German Trade Mark Act (implementing Art. 5(1)(b) of the CTM Directive). No surprises here: The goods under comparison were held to be identical and the earlier mark enjoyed a high level of distinctiveness. In addition, the differences in colour between the marks were not enough to prevent the finding of a high similarity of the signs.

Turning to the issue of the 'limitation of the effects of a trade mark' under Sec. 23 No. 3 German Trade Mark Act (or Art. 6(1)(c) CTM Directive), the BGH found that use of the mark did not indicate the intended purpose of the defendant's plaques. Rather, the mark at issue was seen as the essential and dominant aspect of the plaques' appearance. According to the BGH, affixing a sign (highly similar to the claimant's mark) to a true replica of the claimant's plaques was not intended to indicate any characteristic of those plaques, but was merely an element in the faithful reproduction of the original plaque. Thus, the BGH adopted the CJEU's doctrine established in Adam Opel, which dealt with identical marks on toy cars (see Case C-48/05, para. 44), and extended it [quite elegantly] to highly similar marks on spare parts.

In the Court's view, this result did not fail to adequately balance the conflicting interests of both parties. It was acknowledged that spare parts can only be sold if they include or can be equipped with the BMW badge. Nonetheless, the production of plaques consisting merely of the car producer's trade mark itself fell within the monopoly granted by the exclusivity right of the trade mark proprietor.

Although this decision comes as bad news for the spare part industry, there might be a silver lining for competition yet: The Court mentioned that producers of spare parts that prominently feature the BMW badge may, under certain circumstances, be in a position to request from the claimant to be provided with original BMW plaques, based on competition law. The case at hand, however, did not give reason to assess this aspect further, said the BGH.