Tenor
The plaintiff’s appeal against the judgment of the 31st Civil Chamber of the Regional Court of Cologne – 31 O 397/17 – handed down on 15.01.2019 is dismissed.
The applicant is ordered to pay the costs of the appeal proceedings.
This judgment and that of the Regional Court are provisionally enforceable. The plaintiff may avert enforcement by providing security in the amount of 110% of the amount enforceable on the basis of the judgments, unless the defendant provides security in the amount of 110% of the amount to be enforced prior to enforcement. 110% of the amount to be enforced prior to enforcement.
The appeal is not permitted.
Reasons
I.
The parties are in dispute about the admissibility of the inscription “A” and the stylized image of a B on the cover of a series of five cookbooks with the series title “C”, which the defendant – one of the 30 largest German-language book publishers – sells under the F brand.
The plaintiff has been selling the multifunctional food processor “A” together with cookbooks and recipe booklets directly and via its own online stores for more than 25 years. The trademark “A” is protected, inter alia, by the German word mark No. 3xx01xx30xx2 “A” and the German figurative mark No. 3xx01xx59xx2 with a picture of the model B
Both marks grant protection in class 11 for electronic cooking appliances and kitchen machines, the word mark also grants protection in class 16 for cookbooks and class 9 for electronic publications.
In October 2017, the plaintiff became aware of the “C” cookbook series,
which the defendant offers via its online store as an e-book and hardcover.
Following an unsuccessful warning letter, the plaintiff filed a claim against the defendant in the present proceedings for infringement of trademark rights for injunctive relief, information, damages and reimbursement of pre-trial costs. The defendant uses both trademarks to indicate origin and not merely descriptively. The public will assume that there are economic links between the contested products and the owner of the trademarks. In view of the reputation of the word mark “A”, the claim for injunctive relief also arises from the point of view of exploitation of attention. The protective barrier of Section 23 MarkenG does not apply, as the specific use of the well-known trademark is not necessary to this extent and is contrary to accepted principles of morality. In the alternative, the plaintiff based the claims on misleading advertising.
The defendant requested that the action be dismissed. The defendant argued that the protected elements – name and image – of the challenged works were already not used as a trademark, especially since the relevant public already recognized the well-known trademark F as an indication of origin. In any case, the use was justified under Section 23MarkenG.
By judgment dated 15.01.2019, to which reference is made due to the details pursuant to Section 540 para. 1 ZPO, the Regional Court dismissed the action.
In its appeal, the plaintiff upholds its first instance claim based on trademark law. It repeats and expands on its arguments, in particular regarding the exploitation of attention, Section 14 para. 2 No. 3, § 23MarkenG. According to the most recent BGH case law (GRUR 2019, 265 – keine -D-vertretung), the protective barrier of Section 23 MarkenG must be interpreted narrowly when a well-known trademark is used to determine the purpose of products. The use of the trademark must be limited to the necessary minimum. In terms of whether and how it is used, the trademark must be practically the only means of providing the public with comprehensible and complete information about the intended purpose of the goods.
The applicant claims that the Court should,
to amend the judgment of the Regional Court of Cologne delivered on January 15, 2019 and
1. to order the defendant to refrain from using the sign “A” and/or the sign for cookbooks/recipe books in the course of trade in the Federal Republic of Germany, either itself or through third parties, subject to a fine of up to € 250.000, or imprisonment for up to six months, to refrain from using the sign “A” and/or the sign for cookbooks/recipe booklets in hardcover or electronic form (e-book) in the course of trade in the Federal Republic of Germany, either itself or through third parties, in particular from affixing these signs to cookbooks or their packaging, offering cookbooks under these signs, placing them on the market or possessing them for this purpose, importing or exporting cookbooks under these signs or using the sign in advertising for cookbooks if this is done as shown below:
1.1.
1.2.
1.3.
1.4.
1.5.
2. order the defendant to provide it with information on the quantity of goods manufactured, delivered, received and ordered which are labeled in accordance with para. 1, as well as the turnover achieved with the goods labeled in accordance with para. 1, as well as the scope and type of advertising carried out, in each case broken down by article, number of units, purchase and sales price or medium and distribution period and area, in each case again broken down by the respective calendar quarters,
3. to declare that the defendant is obliged to compensate it for all damage that it has suffered or will suffer in the future as a result of the actions described in section 1,
4. order the defendant to pay her € 2,743.43 plus interest of 5 percentage points above the prime rate since November 7, 2017.
The defendant claims,
dismiss the appeal.
It defends the contested decision.
II.
The admissible appeal is not successful on the merits.
1. the Regional Court rightly and correctly denied a claim for injunctive relief under Sec. 14 para. 5 MarkenG. This is not objectionable on appeal.
According to § 14 para. 5 MarkenG, anyone who uses a sign contrary to § 14 para. 2 to 4 MarkenG can be sued by the owner of the trademark for injunctive relief if there is a risk of repetition. Although the plaintiff has been authorized by the owner of the two trademarks, D International AG, E Switzerland, to assert the rights arising from the trademarks against the defendant, and the defendant has used the challenged signs without the consent of the trademark owner, none of the infringement facts of § 14 para. 2 No. 1 to 3 MarkenG is fulfilled.
a) Pursuant to Section 14 para. 2 No. 1 MarkenG, third parties are prohibited from using in the course of trade, without the consent of the proprietor of the trade mark, a sign identical with the trade mark for goods which are identical with those for which it enjoys protection. The provision implements Art. 5 para. 1 sentence 2 letter a of the old version of the Trade Mark Directive (corresponds to Art. 10 para. 1 and 2 lit. a of the Trade Mark Directive which entered into force on 12.01.2016) and must therefore be interpreted in accordance with the Directive. According to Art. 5 para. 1 sentence 1 and 2 lit. a Trademark Directive (old version), the registered trademark grants its owner the exclusive right to prohibit third parties from using, in the course of trade, a sign identical to the trademark for goods or services which are identical to those for which it is registered, without the owner’s consent. According to the case law of the Court of Justice of the European Union, the proprietor of a trade mark may only oppose the use of a sign identical with that trade mark if such use is liable to be detrimental to 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. According to the case law of the BGH, a detrimental use of the sign exists if it is used by the third party as a trademark or – correspondingly – as a trademark and this use impairs or may impair the functions of the trademark and, in particular, its essential function of guaranteeing consumers the origin of the goods or services (BGH GRUR 2018, 924 – ORTLIEB, juris para. 24 f., with further references). For the question of the trademark-compliant use of the conflicting signs, the public perception from the perspective of a normally informed and reasonably observant and circumspect average consumer is decisive (see BGH, GRUR 2012, 1040 – pjur/pure, juris para. 16). As the Regional Court has already correctly stated, the public is accustomed to the fact that book titles generally serve solely as an indication of the content of the book and to distinguish it from other books (see Hacker in: Ströbele/Hacker, MarkenG, 11th edition, Section 14 para. 197, with further references).
aa) According to these principles, the defendant used the word “A” as a sign identical to the word mark for identical goods (cookbooks), but not as a mark indicating origin, but only to describe the contents. The challenged sign is part of the book title and for this reason alone, but also because of the unambiguous wording “Die bestens F-Rezepte für den A” (“The best F recipes for A”), it is perceived by the target public – whose perception the Senate can assess without further ado – as a distinguishing feature describing the content of other books and not as a product identifier. The consumer is aware that cooking with the self-heating food processor A requires special recipes which are adapted to the special functions of the food processor with regard to the quantities and the way in which the individual products are processed. In addition, the name of the publisher “F” is not only stated in the body text directly before the designation “A”, but is also prominently highlighted at the bottom left.
It does not matter whether the mark F is a well-known mark. In any case, it is clearly understood as an indication of origin for the publisher. Moreover, the Senate can also easily determine that the sign F is generally known as an indication of origin, in particular for cookbooks (for the requirements for determining a well-known mark, see 1. c) bb) (1) below). The defendant is one of the 30 largest German-language book publishers. Its portfolio includes, in particular, cookbooks which are offered, advertised and distributed under the F brand. The F cookbooks have been widely published on the market for a long period of time and are available to everyone.
bb) The stylized image of the amodel B does not fall under the definition of double identity, § 14 para. 2 No. 1 MarkenG. The challenged sign is at best similar to the protected sign and is not used for identical products. The figurative mark does not enjoy protection for books.
b) The stylized depiction of Amodell B also does not meet the infringement criteria of Section 14 para. 2 No. 2 MarkenG. This requires – just like § 14 para. 2 No. 1 MarkenG – a trademark-like use of the contested signs, which is lacking in the present case, so that the question of likelihood of confusion can be left open, taking into account the similarity of the signs and the different shape of the goods. As the Regional Court rightly assumed, the stylized image of B is used solely for decorative purposes. On all five covers, it refers in its concrete design to the figurative elements loosely scattered outside the title circle, such as ingredients and utensils, which thematically match the content of the cookbook and at least partially have a similar size and/or coloring and/or style as the sketched B. The sketch is not prominently highlighted. The sketch is not prominently emphasized, but is rather small and inconspicuous in the overall presentation as one of numerous decorative elements.
c) The facts of infringement under Section 14 para. 2 No. 3 UWG is also not fulfilled, neither with regard to the figurative mark nor with regard to the word mark.
§ Section 14 para. 2 No. 3 MarkenG does not require trademark-like use / impairment of the function of origin, but (only) the unfair exploitation or impairment of the distinctive character or repute of a well-known trademark without a justifiable reason. The likelihood of confusion is also irrelevant. It is sufficient that the relevant public associates the opposing signs with each other.
aa) The fact that the figurative mark is supposed to be a well-known mark is not asserted by the plaintiff itself.
bb) Although the word mark “A” is a well-known mark, and § 14 para. 2 No. 3 MarkenG is generally considered to be applicable even if – as here – the goods are identical (see e.g. Hacker in: Ströbele/Hacker, MarkenG, 11th ed., § 14 para. 368, with further references), the defendant has, however, not exploited the trademark unfairly without a justifiable reason.
(1) A trademark is well-known within the meaning of § 14 para. 2 No. 3 MarkenG if it is known as a distinctive sign for certain goods or services by a significant part of the public concerned by the goods or services covered by the mark, without the requirement of a certain percentage of the degree of recognition. All relevant circumstances of the case, in particular the market share of the earlier mark, the intensity, geographical extent and duration of its use as well as the extent of the investments made by the company to promote it, are decisive when examining these requirements. If the trade mark proprietor uses a corresponding company sign in addition to the trade mark, the trade mark regularly also benefits from the reputation of the company sign and vice versa, because the public does not differentiate between the types of signs in its memory. The facts from which the reputation of a trademark results can be generally known and therefore obvious within the meaning of Section 291 ZPO. This can be assumed if the trademark appears on the market on a large scale over a longer period of time and is encountered by everyone (see BGH, GRUR 2014, 378 – OTTO CAP, juris para. 22 and 27, with further references; Hacker in Ströbele/Hacker/Thiering, MarkenG, 12th edition, Section 14 para. 361 f.).
According to these principles, the word mark “A” is a well-known mark. The mark is aimed at all persons who prepare food themselves at home, so that a broad public can be assumed, which also includes the members of the Senate. In this public, the mark is known for self-cooking kitchen machines. In order to assess the reputation, the facts established by the Regional Court can be used as a starting point. The parent company has a considerable reputation. The plaintiff’s parent company is active in over 70 countries worldwide and employs around 650,000 people, of which around 612,000 are self-employed consultants. In 2016, the group of companies generated a consolidated turnover of 3 billion euros. The “A” division made a significant contribution to this. A has been on the market for 25 years. It is open to everyone, which the Senate can easily determine for the entire federal territory despite the special distribution system. It is generally known that a “cult” has developed around the A for many years: There are numerous cookbooks from various publishers that specialize in the presentation of recipes for this food processor. Television programs and public radio broadcasts focus on the “A” appliance and compare it with other self-cooking food processors. Numerous people have already taken part in presentation evenings for the “A”. Recipes for this product are now also offered on video channels with corresponding presentations, which reach numerous interested parties. Against the background of these obvious facts, it is not necessary to take evidence on the reputation of the word mark A. Nor does it matter whether the reputation actually reaches a level of 60%.
(2) The defendant has exploited the distinctive character and reputation of the well-known word mark through the specific nature of the contested uses of the sign “A”. It has used the mark as an eye-catcher for the contested title designs in order to draw attention to its cookbooks. In doing so, it has appropriated the advertising and communication function of the well-known mark and has been drawn into its pull effect in order to profit from the good reputation of others for the benefit of its own sales. The public will associate the sign “A” – as intended by the defendant – with the mark A and perceive it as a reference to the plaintiff’s products. In Germany, a vast number of cookbooks are offered, so that the reference to a well-known trademark clearly serves to stand out from the crowd and to attract the attention of interested consumers. A book with a well-known brand in the title attracts considerably more attention and offers a considerable incentive to buy.
(3) The exploitation of the well-known trademark by the defendant took place in an unfair manner. Unfairness is inherent in the element of exploitation of distinctive character if – as here – the mark is used in an identical or similar form (see BGH GRUR 2005, 583 – Lila-Postkarte, juris para. 22).
(4) However, the use was not without justifiable cause. The defendant can invoke the provision of § 23 no. 3 MarkenG, which excludes the facts of § 14 para. 2 No. 3 MarkenG, which excludes the facts of § 23 No. 3 MarkenG.
§ 23 No. 3 MarkenG, which is Art. 6 para. 1 lit. c Trademark Directive (old version), privileges the open use of another person’s trademark as an indication of the intended purpose of one’s own goods. Accordingly, the owner of a trademark cannot prohibit a third party from using the trademark in the course of trade as an indication of the intended purpose of a product, provided that the use is necessary for this purpose and is not contrary to accepted principles of morality. The use of a trademark is necessary if the information about the purpose of the goods cannot otherwise be meaningfully conveyed. The use of a trademark must be practically the only means of providing the public with comprehensible and complete information about the purpose of the goods. An infringement of accepted principles of morality exists if the use is contrary to honest practices in trade and commerce. The use must therefore take into account the interests of the trademark owner and the user must have done everything possible to avoid harming the interests of the trademark owner, taking into account all circumstances of the individual case (see BGH GRUR 2019, 165- keine -D-vertretung, juris-Tz. 25 f.). An infringement of honest practices can be assumed if the use of the sign creates the impression that there are trade relations between the proprietor of the sign and the third party (see BGH GRUR 2013, 631 – AMARULA/Marulablu).
In the present case, the use of the brand is still within the scope of the necessary determination of performance when all relevant circumstances are taken into account.
The designation of the brand “A” (the whether of the brand use) is necessary as an indication of the intended use of the product. The cookbooks are useless for anyone who does not have the multifunctional food processor A. In order to avoid misleading consumers, which is not permitted under fair trading law, the defendant must clearly indicate that the cookbooks are intended exclusively for A. In this respect, the sign A may and must be clearly legible on the cover and must also be highlighted to a certain extent.
The limit of necessity has not yet been exceeded in the cover design (how the trademark is used). In the case of cover design, there is – even according to the view expressly expressed by the plaintiff itself at first instance – an appropriate scope for design. The plaintiff’s view that this leeway has recently been restricted by the BGH decision “keine -D-vertretung” (GRUR 2019, 165) to a stricter assessment standard of the absolutely necessary minimum in the sense that the trademark use must be practically the only means, both in terms of whether and how, to provide the public with comprehensible and complete information about the intended purpose of the product, cannot be accepted. The BGH has not tightened its previous assessment standards. It continues to assume that if the trademark use remains within the limits of the necessary determination of performance, the trademark owner must accept the possibility that the third party benefits from the prestige of the well-known trademark (loc. cit., juris para. 27), whereby a factual and informative use of a sign without impairing the origin function can also be permissible if it is emphasized (see BGH GRUR 2009, 1162 – DAX, juris para. 35 f.). In the decision “keine -D-vertretung”, the BGH does not require that the third party must limit itself to the “absolutely necessary minimum of trademark use” (see BGH GRUR 2019, 165, juris para. 29). The reasonable scope for design within the scope of what is necessary has not yet been exceeded in the present case, even if the running text “Die besten F-Rezepte für den …” is slightly larger and “… A” could have been kept slightly smaller and in the same color as the first part of the sentence. At the same time, the challenged designs do not focus on the claim mark A as the main feature of the work title. The focus is primarily on the titles (C or LOW CARB, WINTERZAUBER, ABENDESSEN and PARTYFOOD) highlighted in the striking white circle in terms of font size, then, in the case of the covers LOW CARB, WINTERZAUBER pp., on the title component C, which is wittily linked to the idiom “C”, and only then (in third place or, in the case of the main title C, second) on the word “A” and the F sign at the bottom left-hand edge.
The plaintiff cannot derive anything in its favor from the combination of the use of the word mark A and the stylized image of the blender. As a relatively small decorative element, the image of A is not eye-catching. Compared to the clear designation of the “A”, it also has no independent meaning or meaning that emphasizes the A mark. The plaintiff itself does not use its figurative mark for its cookbooks, from which the contested image is at a great distance.
The use of the sign A in the title “… Die besten F-Rezepte für den A” does not give the relevant public the impression that there is a commercial relationship between F-Verlag and the manufacturer of A. The title clearly indicates what the cookbooks are about, namely recipes from the defendant’s (well-known) publishing house F-Verlag for the (well-known) multifunctional food processor A from the plaintiff.
2. the claim for injunctive relief asserted by the plaintiff can also not be based on the aspect of misleading advertising inadmissible under unfair competition law, § 8 para. 1 UWG i.V.m. § 8 para. 3 No. 1, § 3, § 5 UWG. The appeal does not raise any objections to the correct statements of the Regional Court in this regard. When applying the provisions of unfair competition law to protect against misrepresentation of origin in accordance with § 5 UWG, contradictions in value with trademark law must be avoided. The owner of the sign must not be granted a protective position under fair trading law that it is not entitled to under trademark law (see BGH GRUR 2018, 924 – ORTLIEB, juris para. 65, with further references).
3. the annex claims for information, Section 19 MarkenG or Section 242 BGB, assessment of damages, Section 256 ZPO in conjunction with Section 14 para. § 14 Abs. 6 MarkenG or § 9 UWG and reimbursement of warning costs, § 14 para. 6 MarkenG or Section 12 UWG, follow the fate of the claim for injunctive relief.
III.
The decision on costs is based on section 97 para. 1 ZPO, the decision on provisional enforceability is based on Sections 708 No. 10, 711 ZPO.
The judgment concerns the transfer of generally recognized principles of interpretation and application of the law to an individual case, so that there is no reason to allow an appeal pursuant to Section 543 para. 2 ZPO to allow an appeal on points of law.
Value in dispute for the appeal proceedings: € 150,000.00.