Federal Supreme Court of Germany: Requirements to consider model designations for apparel as trade mark use

In this case, the Claimant owns the trade mark "SAM" for clothing. The Defendant sold men's jeans under the trade mark "EUREX BY BRAX" in its online shop. In the product description, he described the trousers as "Model: Sam".

The Claimant argued that the Defendant used the trade mark "SAM" as a second trade mark, and thus infringed the Claimant's trade mark rights. The Federal Supreme Court has found that the Defendant used a sign identical with the registered German trade mark for identical goods pursuant to sec 14 (2) no. 1 German Trade Mark Act.

However, the trade mark's function as an indication of origin was not impaired, since the targeted public would not understand the Defendant's use of the sign "SAM" as an indication of origin. According to the Federal Supreme Court, the Court of Appeal misconceived the trade mark's function as an indication of origin.

Contrary to the view of the Court of Appeal, it is not sufficient that a sign is distinctive and that it is not used in a descriptive way. Rather, the Court must positively establish that the public considers the concrete use of the sign as an indication of origin.

In particular, the Federal Supreme Court rejected the pivotal argument of the Court of Appeal that, although the relevant public would know that first names are used as model designations for apparel, this would only apply to certain first names that are well-known to the public.

In this instance, as "Sam" is a rare name in Germany, it will therefore be considered an indication of origin. Although the Federal Supreme Court admitted that common names in particular will not be considered indications of origin, the opposite – that less common names will be considered indications of origin irrespective of the specific circumstances of their use – does not hold true.

Case Ref: Ruling of 7 March 2019 – doc no I ZR 195/17