CLASS 46
Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
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WEDNESDAY, 10 SEPTEMBER 2008
German Federal Supreme Court: POST
POST
1. In cases where a trade mark cancellation order, which has been passed in cancellation proceedings before the German Patent and Trade Mark Office based on absolute grounds for refusal under sections 50, 54 of the German Trade Mark Act (MarkenG) has not yet become final, the existence/validity of the respective trade mark has to be further assumed during infringement proceedings, until the [cancellation] decision has become final.
2. In cases where a trade mark contains a term describing the covered goods or services (here: “POST”), a third party's use of the term as an element of a sign ("Kennzeichen"; here: “Die Neue Post”) for identical goods or services does not fall within the ambit of section 23 MarkenG, infringement of bones mores ("gute Sitten"), if the third party has a special interest in using this term after the abolition of the trade mark owner’s monopoly*. However, it is necessary that the third party’s sign sets itself apart from the trademarked term through additions and that it is not based on other designations/signs of the trademark owner (here: post horn, yellow colour).
*Note: The German Post (Deutsche Post AG) still has a partial monopoly for letter delivery.
Case reference: I ZR 169/05 of 5 June 2008
The Bundesgerichtshof's press release for this case can be found by clicking here
The decision is now also available in its entirety (in German) and can be retrieved via the Bundesgerichtshof's website at http://www.bundesgerichtshof.de/.
Posted by: Birgit Clark @ 12.17
Tags: Bundesgerichtshof, German trade marks, POST,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA644
German Federal Supreme Court: POST
POST
1. In cases where a trade mark cancellation order, which has been passed in cancellation proceedings before the German Patent and Trade Mark Office based on absolute grounds for refusal under sections 50, 54 of the German Trade Mark Act (MarkenG) has not yet become final, the existence/validity of the respective trade mark has to be further assumed during infringement proceedings, until the [cancellation] decision has become final.
2. In cases where a trade mark contains a term describing the covered goods or services (here: “POST”), a third party's use of the term as an element of a sign ("Kennzeichen"; here: “Die Neue Post”) for identical goods or services does not fall within the ambit of section 23 MarkenG, infringement of bones mores ("gute Sitten"), if the third party has a special interest in using this term after the abolition of the trade mark owner’s monopoly*. However, it is necessary that the third party’s sign sets itself apart from the trademarked term through additions and that it is not based on other designations/signs of the trademark owner (here: post horn, yellow colour).
*Note: The German Post (Deutsche Post AG) still has a partial monopoly for letter delivery.
Case reference: I ZR 169/05 of 5 June 2008
The Bundesgerichtshof's press release for this case can be found by clicking here
The decision is now also available in its entirety (in German) and can be retrieved via the Bundesgerichtshof's website at http://www.bundesgerichtshof.de/.
Tags: Bundesgerichtshof, German trade marks, POST,
Sharing on Social Media? Use the link below...Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA644
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.
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