Tenor
On the plaintiff’s appeal, the judgment of the 6th Civil Chamber of the Regional Court of Frankfurt handed down on July 18, 2018 is partially amended.
The defendant is ordered to pay the plaintiff € 1,531.90 plus interest in the amount of 5 percentage points above the respective base interest rate since November 11, 2017.
The remainder of the appeal is dismissed.
The defendant is to pay 54% of the costs of the legal dispute at both instances and the plaintiff 46%.
The judgment is provisionally enforceable without the provision of security.
Reasons
I.
The parties are in dispute over trademark claims.
The applicant is the proprietor of the EU word mark “A” registered on 13/02/2015 with priority from 13/10/2014, which claims protection for motorcycle helmets and protective helmets for sports, among other things. A was a German automobile racing driver who died in an accident in 19XX.
The defendant operates an online store for movie merchandise on the eBay trading platform. He is registered there as a commercial seller. In October 2017, he offered a helmet at a price of € 549.99 under the offer heading “A Replica Helmet Full Face Helmet Season 19XX”. The helmet bore the lettering “A”.
The plaintiff issued a warning to the defendant with regard to this offer for alleged infringement of its trademark. The defendant then issued a cease-and-desist declaration with a penalty clause. He did not want to pay the warning costs.
The plaintiff has claimed that it grants annual licenses for its brand, whereby the license fee in 2017 amounted to € 1,000.00. The defendant claimed that he had purchased the helmet privately and placed it on his eBay account for the purpose of private resale.
Reference is made to the contested judgment for further details of the facts of the case and the applications made at first instance (Section 540 I, 1 ZPO).
The Regional Court dismissed the action. The defendant had not infringed the trade mark in suit as he had not acted in the course of trade when making the offer for sale.
The plaintiff appeals against this assessment. On appeal, the parties repeat and expand on their submissions.
The applicant claims that the Court should,
amending the judgment of the Regional Court of Frankfurt/Main delivered on July 18, 2018, ref. 2-06 O 38/18 to order the defendant,
a) to pay the plaintiff an amount of € 1,000.00 plus interest of 5 percentage points above the respective prime rate of the ECB since lis pendens;
b) to pay the plaintiff an amount of € 1,822.96 plus interest of 5 percentage points above the respective prime rate of the ECB since 11.11.2017;
The defendant claims,
dismiss the appeal,
With regard to the further submissions of the parties, reference is made to the exchanged written submissions and their annexes.
II.
The admissible appeal is partially successful on the merits.
1. the plaintiff has a claim against the defendant for reimbursement of the warning costs in the amount awarded under Art. 130 II UMV in conjunction with Section 14 para. § 14 Abs. 6 MarkenG as well as according to the principles of management without mandate (§ 683 sentence 1, §§ 677, 670 BGB). In this respect, the appeal is successful.
a) The warning was justified. The defendant infringed the plaintiff’s trademark rights to the EU word mark “A” with its eBay offer. Contrary to the opinion of the Regional Court, he acted “in the course of trade” (Art. 9 I EUTMR).
aa) A sign is used in the course of trade if it is used in connection with a commercial activity directed to an economic advantage and not in the private sphere. In the interest of trademark protection, no high requirements are to be placed on this characteristic. The commercial activity must be positively established. A mere presumption is not sufficient (BGH GRUR 2008, 1099 para. 12 – afilias.de). However, the only thing that matters is the outwardly recognizable objective of the person acting (BGH loc. cit.). It is not decisive whether the seller wants to book an outwardly appearing commercial offer internally for himself privately. The plaintiff is primarily responsible for presenting and proving the requirement of acting in the course of trade (see BGH GRUR 2008, 702Tz. 46 – Internet-Versteigerung III). The defendant has a secondary burden of proof (BGH GRUR 2009, 871 para. 27 – Ohrclips).
bb) Based on these standards, the offer in dispute fits seamlessly into the defendant’s business sales activities on the eBay trading platform. The defendant placed the offer in his commercial account, which is also identified as such (“registered as a commercial seller”). The account had 6,156 feedbacks, which indicates extensive trading activity. The helmet was described as “New!”. Acting in the course of trade is obvious if a provider repeatedly trades in similar or new items (BGHZ 158, 236, 249 – Internet-Versteigerung I). The fact that the provider is otherwise commercially active also indicates commercial activity (BGH GRUR 2008, 702 para. 43 – Internet-Versteigerung III). The offer is also indistinguishable from a typical commercial online offer in terms of its presentation. This applies to the entire design of the offer, including the indication of the VAT identification number and the information on the ODR platform. A private seller of a (used) item does not use such information. The fact that the defendant inserted the statement “the seller does not take back the item” in the last line under the heading “Cancellation policy” does not lead to a different assessment. The viewer will not conclude from this alone that it is a private sale, especially since the statement “private sale” was not used. The fact that the defendant otherwise allegedly only sells items in the “film fan area” will also not lead the viewer to the conclusion that this is a private offer. On the contrary, the helmet certainly fits into the category of “fan articles”.
cc) Contrary to the opinion of the Regional Court, nothing else results from the fact that the defendant stated in his pleadings and during his oral hearing that he had purchased the helmet privately on eBay in 2007 or 2008, worn it once while karting and otherwise displayed it in a showcase. He wanted to part with the helmet for reasons of space. This is not relevant, as these circumstances were not externally recognizable. It is true that the objective overall circumstances – even if they are not outwardly recognizable – may well be suitable in individual cases to rebut a factual presumption of commercial activity (see – on competition law – BGH GRUR 1993, 761 – Makler-Privatangebot, para. 16). However, this only applies if the underlying offer itself does not yet reveal the nature of the commercial activity. If, on the other hand – as in the present case – a product is expressly offered in the context of a business operation with a view to the recognizably outwardly appearing objective, there is in any case an act in the course of trade (see BGH loc. cit. – Makler-Privatangebot, para. 18).
b) There is a case of double identity. The defendant has used the trademark in the headline of the offer in an identical form for a product which is identical to the registered goods. Whether the likelihood of confusion is also fulfilled with regard to the lettering “A” on the helmet can be left open.
c) There is also trade mark use. The proprietor of a trade mark may only oppose the use of a sign identical to that trade mark for identical goods for which the trade mark is also registered if such use is liable to impair one of the functions of the trade mark. In addition to the main function of guaranteeing the origin of the goods or services, the functions of the trade mark also include its other functions, such as guaranteeing the quality of the goods or services identified with it or the communication, investment or advertising function (established case law, most recently BGH, judgment of 7.3.2019 – I ZR 195/17, para. 24 – SAM). The offer in dispute impairs the origin function of the trade mark in suit.
aa) The use of a trademark in the headline or in the text of the sales offer on a sales platform to designate the goods on offer regularly constitutes a use of this trademark with reference to origin. It is not excluded by the designation of the product as a “replica”. It does not matter whether it is claimed in the offer that it is an original product of this trademark or a replica (ECJ GRUR 2003, 55 – Arsenal/Reed).
bb) Something else could arise at most if the designation “A” were to be understood by the public only as a descriptive reference to the former racing driver of the same name. This cannot be assumed. In the case of signs that have a non-trademark origin, use as a trademark is more likely than in the case of designations that originally only come into consideration as a product-related indication of origin (BGH GRUR 2017, 730 para. 26 – Sierpinski-Dreieck). However, the public knows that the names of well-known athletes are generally protected and may not be used to advertise or designate products without consent. Everyone is familiar with articles that are sold at a higher price than the “bare” product if they bear the names of famous athletes, which indicates that the name has been licensed. The designation “A replica helmet” indicates such use and thus corresponds to this experience of the trade.
d) The object value of € 50,000.00 applied in the warning letter and the 1.3 fee applied do not appear excessive. In addition to the headline of the offer, the warning also included the labeling of the helmet with the lettering “A” (Annex K 4). The defendant also did not object to the amount in dispute. Contrary to the plaintiff’s view, however, she can only claim the net amount, as she is entitled to deduct input tax according to the defendant’s uncontradicted submission. The claim for interest arises from §§ 286, 288 I BGB.
2. the plaintiff is not entitled to claim damages from the defendant in the amount of € 1,000.00. In this respect, the appeal had to be dismissed.
a) In the calculation of damages – chosen by the plaintiff – according to the principles of the license analogy, it is assumed that the infringed party would not have permitted the use without consideration. The decisive factor is therefore what reasonable contractual partners would have agreed as remuneration for the use of the trademark when concluding a license agreement. For this purpose, the objective value of the presumed right of use must be determined. This consists of the reasonable and customary license fee (BGH GRUR 2010, 239 para. 20 – BTK).
b) The plaintiff has not explained in any way to what extent a license fee of € 1,000.00 for a one-time use of the trademark is customary in the market. Her assertion that she herself demands a corresponding annual license from licensees is not relevant for two reasons: Firstly, it is the general customary market practice that matters, not the specific conditions of the plaintiff; secondly, there is no use for a whole calendar year in question here. These circumstances have already been pointed out by the defendant and the Regional Court. Based on the information provided by the plaintiff, the Senate is also unable to estimate minimum damages (Section 287 ZPO). The customary license fee that would have to be paid for the granting of the right to use the trademark must be taken into account. This is usually a percentage-based sales license (BGH GRUR 2010, 239 para. 26 – BTK). The plaintiff has not made any corresponding submission.
3. the decision on costs is based on Section 92 I ZPO, the decision on provisional enforceability on Sections 708 No. 10, 713 ZPO.
4. the requirements for admission of the appeal are not met.