Genuine use of a service mark by mere advertising and offering on the domestic market
With its decision of December 11, 2019, the German Federal Patent Court (Case No. 27 W (pat) 72/16) issued a clarifying decision on genuine use of service marks. Therewith, the court stated that it is not necessary for the domestic use of a service mark that the services offered under the mark must also be provided in Germany. If the services are actually provided abroad, it is sufficient to advertise and offer the services in Germany, if a sufficient commercial effect can be established.
In the opposition proceedings on which the decision is based, the opponent had to show evidence of genuine use of the German opposition mark. In class 41, this mark claimed, inter alia, entertainment services. For years, the opponent had organised a ski event called "Alpenglühen" in Austria with an extensive supporting programme consisting of parties and show acts. The event was advertised exclusively in Germany via specialist shops affiliated with the opponent, which had been provided with advertising material by the opponent and where consumers could register for the event. The German Patent and Trade Mark Office was of the opinion that there was no genuine use of the opposition mark. The opponent filed appeal against the decision with the German Federal Patent Court.
Reasons of the Court
The German Federal Patent Court allowed the appeal. In the opinion of the court, genuine use of the opposing mark for the entertainment services concerned was substantiated. It is irrelevant in this respect that the annual skiing event did not take place in Germany but in Austria. It is true that use exclusively abroad does not preserve the rights. However, in the case of a sufficient commercial effect in Germany, the situation may be different. In the opinion of the German Federal Patent Court, the principles of attribution developed in the law of torts can be applied to the question whether use in Germany is nevertheless to be assumed to be genuine. In the case of a service mark, where, due to the incorporeality of the service, the use of the trade mark on business letters and papers, brochures, price lists, invoices and printed matter is of particular importance, the question of the place of use must also be considered. In the case of services provided abroad, it is therefore decisive whether these are advertised and offered in Germany. This was true in the case to be decided.
There was no case law on this subject until now, so that clarity now exists. The German Federal Patent Court has correctly confirmed genuine use of a national trade mark for services provided only abroad. Any other result would also have been unfair to the trade mark owner. Legal certainty has thus been created for companies such as event and travel organisers. The decision deserves approval in every respect.
Author: Dr. Eckhard Ratjen