The claimant owns the trade mark SAM in Germany for clothing. The defendant sold men's jeans under the name EUREX BY BRAX in its online shop. In the product description, the trousers were marked "model: SAM". The claimant argued that the defendant is using the trade mark SAM as a secondary trade mark and infringing its trade mark rights.

According to the BGH, the defendant is using a sign identical with the claimant's trade mark for identical goods within the meaning of section 14(2) no. 1 of the German Trade mark Act (Markengesetz, MarkenG). However, the trade mark's badge-of-origin function was not impaired, if the defendant's specific use of the sign SAM was not understood by the relevant public as use of the trade mark as a badge of origin which was not (yet) clear in this case according to the Appellate Court's findings.

Contrary to the Appellate Court's view, it is not sufficient to find that a sign is distinctive and that its use is not purely descriptive in order to find that the use of the sign indicates its origin. On the contrary, it must be established whether the public regards the use of the sign as an indication of the origin of the product.

In particular, the BGH rejected the argument of the Court of Appeal that the targeted public would know that first names are used as model designations for clothing, but that this would only apply to particularly well-known first names, and "Sam" was not particularly well-known.

Although it is true that common first names may not be understood as indications of business origin, it cannot be inferred from this, conversely, that less common first names are always understood as indications of business origin, irrespective of the specific circumstances of the individual case.

The BGH has referred the matter back to the Court of Appeal.

Comment

On the one hand, the decision clearly states that not every non-descriptive use of a designation in connection with the offer of goods is automatically regarded as an indication of origin.

On the other hand, certain principles are established for assessing the question of distinctive use of model names in the clothing industry.

Decision of the German Federal Court of Justice (Bundesgerichtshof, BGH) of 7 March 2019 – I ZR 195/17)