The German Federal Court of Justice (Bundesgerichtshof) recently clarified that even minimal use of a trade mark can amount to genuine use under Section 26 German Trademark Act .

Case reference:  I ZR 178/16  of 18 May 2017 - "Glückskäse"; full text now available here (in German).

The case

In the underlying case a third party had tried to revoke the registered trade mark "Glückskäse" covering cheese.  The owner of the mark had sold 94 loafs of "Glückskäse" cheese between December 2011 and January 2016 (overall 550 kg, turnover per loaf of cheese 60 Euro) against an annual overall turnover of 25 - 27 Million Euro).

The decision

The Bundesgerichtshof explained that use of a trade mark may be genuine under Section 26 German Trademark Act even in cases of extremely small consignments provided such use can be viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark (referring to Ansul C-40/01).   Citing the CJEU's decision in Vitafruit (C-416/04 P) the German court explained  even minimal use of the trade mark can be sufficient to establish genuine use if economically justified. A de minimis rule did not exist.

Applying this to the case at hand the court decided as follows: even though the supply relationship with the client was extremely small when compared to the overall volume of the trade mark owner's production this did not mean that use of the mark was not genuine. The fact that the trade mark owner only delivered the cheese in question to one client, did not change this assessment since use of the mark served a real commercial purpose at least with regard to this one client, which was to keep an albeit very small share of the market (citing its own precedent in Orion I ZR 156/10).  Whether the use was genuine was not to be assessed with a view of profitability or whether or not the business strategy was plausible. Finally there was no evidence of token use.  The court therefore referred back to the Court of Appeal for renegotiation and decision.

Comment

Noteworthy are the Bundesgerichtshof's comments on the irrelevance of profitability or plausibility of the trade mark owner's business strategy and its comment that use of a mark in delivering good to just one client was sufficient to amount to genuine use.