In its ruling of June 14, 2017, the Higher Regional Court of Karlsruhe (case reference: 6 U 125/16) decided that the word mark “STIHL” and the designation “STL” are too similar. As a result, the OLG prohibited Sudheimer Car-Technik Vertriebs-GmbH (Mannol) from using this abbreviation on products and in advertising. The risk of the consumer confusing the product with those of Andreas Stihl AG & Co KG was too great.
Statement “AGRO FOR STIHL” violates trademark law
Initially, Mannol advertised its products with the claim “AGRO FOR STIHL” and marketed an engine oil under this name. Following a successful warning from Stihl, the company issued a cease-and-desist declaration with a penalty clause and undertook not to use the information again.
AGRO STL” also infringes trademark law
As a result, Mannol changed the labeling on the engine oil bottles. Instead of “AGRO FOR STIHL”, the label now read “AGRO STL”. But Stihl also sued against this. After all, Stihl is a brand known for chainsaws, which also sells suitable engine oils itself. The use of the abbreviation “STL” led to an enormous risk of confusion with the well-known company Stihl and was therefore inadmissible.
OLG: Likelihood of confusion between “STIHL” and “STL” too great
The judges at the Karlsruhe Higher Regional Court upheld Stihl’s claim – as had the Mannheim Regional Court. Accordingly, Mannol was ordered to cease and desist, provide information, pay damages, destroy and recall the goods.
The sign “STL” is also regarded as a separate sign if it is used alongside the designation “AGRO”. With the sale of engine oil under the very similar designations, two identical goods are simultaneously confronted, which leads to a not inconsiderable likelihood of confusion.
Similarity of signs between “STIHL” and “STL”
The sign “STIHL”, registered inter alia for engine oil, benefits from the reputation of the mark “STIHL” registered for chainsaws. Finally, such a combination of the individually registered marks is also quite possible, since engine oil is mandatory for the operation of chainsaws. In addition, there is a similarity of signs between the Stihl mark and the designation “STL” which leads to a likelihood of confusion on the part of the consumer.
Information on non-existent release also misleading
Furthermore, the Mannol company must also refrain from stating “Corresponds to the following approvals / specifications / products […] STIHL HP 07813198410 […]“. This is because Stihl does not issue approvals or specifications for engine oils. Mannol’s statement is therefore false and misleading.