The BGH has ruled that advertising with the ÖKO-TEST seal, which is protected as a European Union trademark, constitutes a trademark infringement if this is done without a license agreement. The defendant retailers in the cases decided advertised with the ÖKO-TEST seal in their online stores without having previously concluded a license agreement with the plaintiff. The plaintiff trademark owner considered the advertising with the ÖKO-TEST seal to be an infringement of its rights to the EU trademark and claimed injunctive relief and reimbursement of warning costs from the defendants. The Federal Court of Justice essentially rejected the defendants’ appeal and confirmed the lower court’s injunction relating to the specific form of infringement.
In all three proceedings, the use of the sign complained of infringes the plaintiff’s well-known trademark. There is also an infringing use of the plaintiff’s trademark because the public associates the logo used by the defendants with the plaintiff’s trademark. The defendants provided the public with information about the nature or quality of their products and referred to the product test service provided under the plaintiff’s well-known trademark. In the overall assessment to be made in this context, the reputation of the plaintiff’s mark and the high degree of similarity of the signs weigh so heavily that the dissimilarity of the goods and services concerned does not preclude the assumption of a link between them. It must be assumed that there is a high degree of similarity between the signs, but not that they are identical, because the defendants have each supplemented the “empty” test logo protected as a trademark with the information on the test result and the test location.
In addition, the respective challenged use of the sign takes unfair advantage of or impairs the reputation of the plaintiff’s trademark without justification. If a third party attempts to use a sign that is identical or similar to a well-known trademark in order to benefit from its appeal, reputation and prestige and to exploit the economic efforts of the trademark owner to create and maintain the image of this trademark without any financial consideration and without having to make any efforts of its own, the advantage resulting from this use is to be regarded as an unfair exploitation of the distinctive character or the reputation of the trademark (BGH, judgment v. December 12, 2019, Ref.: I ZR 173/16).