The First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for trade mark law, has ruled in two cases that third parties may affix symbols of former Eastern Bloc states to items of clothing, although these symbols are now protected as trade marks for items of clothing.
The plaintiff in the proceedings I ZR 92/08 is the proprietor of the word mark "DDR" registered inter alia for clothing. He was also the proprietor of a figurative trade mark registered for textiles which depicted the national coat of arms of the GDR. The defendant sells so-called East German products. He advertises and sells T-shirts with the designation "DDR" and its national emblem. The plaintiff filed a claim for injunctive relief against the defendant. The Munich Regional Court I dismissed the action. The Munich Higher Regional Court ordered the defendant to pay the costs.
The second legal action (I ZR 82/08) concerned the use of the letter sequence "CCCP" together with the hammer and sickle symbol on T-shirts. The letter sequence "CCCP" (in Latin letters SSSR) is an abbreviation of the Cyrillic spelling of the former USSR. The plaintiff is the licensee of the word mark "CCCP", which is registered for certain items of clothing (e.g. trousers, overalls). The defendant sells printed garments via the internet. Among the motifs available for selection is a hammer-and-sickle symbol with the sequence of letters "CCCP". The plaintiff filed a claim against the defendant for injunctive relief against the distribution of these products. The Regional Court and the Higher Regional Court of Hamburg dismissed the action for lack of use of the challenged designation as a trade mark.
The Federal Supreme Court confirmed the decisions dismissing the action in the Hamburg proceedings. In the Munich proceedings I ZR 92/08, it overturned the ban imposed by the lower court and dismissed the action.
The trade mark infringement proceedings are no longer about the existence of the trade marks. The Federal Court of Justice denied the plaintiffs' claims under their trade marks because the affixing of the symbols of the former Eastern Bloc states to items of clothing did not infringe the plaintiffs' trade mark rights. Claims under trade mark law presuppose that the public perceives imprints affixed to items of clothing as an indication of the origin of the products from a particular company and not merely as a decorative element that may vary according to the type of motif. The Federal Court of Justice assumed that consumers perceive the symbols of former Eastern Bloc states affixed to the front of T-shirts exclusively as a decorative element and do not see them as a product label.
Judgment of 14 January 2010 - I ZR 82/08 - CCCP
Lower courts:
Hamburg Higher Regional Court - Judgment of 10 April 2008 - 3 U 280/08
Hamburg Regional Court - Judgment of 17 November 2006 - 406 O 133/06
and
Judgment of 14 January 2010 - I ZR 92/08 - DDR
Lower courts:
OLG Hamburg Munich - Judgment of 24 April 2008 - 29 U 4160/07
LG Munich I - Judgment of 31 July 2007 - 9 HK O 3546/07
Source: Press release of the BGH
Goldberg Attorneys at Law
Michael Ullrich, LL.M. (Information Law)
Lawyer and
Specialist lawyer for information technology law (IT law)
E-mail: info@goldberg.de
