Are companies allowed to use the Öko-Test seal even if the magazine did not test the product shown, but only a similar product? The BGH was allowed to deal with precisely this question. However, it has now suspended the proceedings for the time being (decision of January 18, 2018 – I ZR 173/16; I ZR 174/16) until the ECJ has answered a similar question from the Düsseldorf Higher Regional Court.

ÖKO-TEST files suit against Otto

The proprietor of an EU trademark registered in 2012 against the mail order company Otto. The EU trademark represents the ÖKO-TEST label, which is registered for the services „consumer advice and consumer information for the selection of goods and services“.

The proprietor only permits manufacturers and distributors of the products tested by it to advertise with its ÖKO-TEST seal if they conclude a license agreement with it for a fee. In this license agreement, the proprietor then regulates all conditions for the use of the label.

Otto lacked the appropriate license agreements for the similar products

The mail order company Otto had now offered a blue baby drinking bottle and a green baby teething ring via its internet portal. The mail order company had also used the ÖKO-TEST label with the rating „very good“.

In another case, Bauer Versand, which belongs to Otto, offered a slatted frame in various sizes and designs as well as a black, white and red bicycle helmet on the internet. The eco-test labels „good“ and „very good“ were also displayed next to these offers, and in the case of the slatted frame even with the reference to the actually tested frame with adjustable head and foot sections.

In both cases, Otto allegedly did not have the required license agreements with the owner of the Union trademark of the ÖKO-Test label. Otto (only) had licenses for baby drinking bottles in different colors, helmets in different colors and slatted frames in different sizes.

Exploiting the value of the ÖKO-TEST label

The injunction proceedings are primarily concerned with the use of EU trademarks. The licenses are not designed to be strict for nothing. A different color of a product has different ingredients and therefore also different properties in some cases.

The different sizes of slatted frames can also significantly influence their function and the resulting test results. If the license agreements were to be applied widely, however similar the products, this could lead to errors on the part of the consumer:

„If we get involved, the consumer will no longer know what has really been tested.“

Contrary to the opinion of the owner of the ÖKO-TEST label, the mail order company Otto does not believe that consumers are being misled as long as reference is made to the product that has actually been tested.

KG Berlin: Use of the EU trademark unlawful

The Berlin Court of Appeal found the conduct to be an infringement of trademark law (judgment of June 21, 2016 – 5 U 136/15 and 5 U 108/16). The Berlin judges assumed that Otto and Bauer had unfairly exploited the reputation of a well-known trademark without a justifiable reason or license by using the label.

The use of the label wrongly leads the consumer to believe that the products offered have been tested and assessed. The assessment of whether similar products are also covered by the ÖKO-TEST label must continue to be reserved to the proprietor of the EU trade mark.

Proceedings before the BGH suspended for the time being

Whether the BGH will follow the opinion of the Court of Appeal remains unanswered for the time being. The reason: The Higher Regional Court of Düsseldorf referred a legal question to the ECJ regarding the infringing use of a well-known trademark, which will also be relevant for the proceedings pending before the BGH. Accordingly, the BGH initially suspended its proceedings due to the preliminary ruling proceedings pending in Luxembourg.