BGH for advertising with ECO-test seal

In three appeal proceedings, the Federal Court of Justice considered the use of test seal marks as a violation of the trademark proprietor’s rights in her well-known trade mark.

What is it all about?

Since 1985, the applicant has published the magazine ‘ÖKO-TEST’, in which tests on goods and services are published. It is the proprietor of an EU trade mark registered in 2012, reflecting the ECO-TEST label and providing trade mark protection for the services ‘Consumer advice and consumer information in the selection of goods and services’. The applicant authorises the manufacturers and distributors of the products it tests to be advertised with the ÖKO-TEST label if they enter into a licence agreement for consideration with it.

The defendants are mail order companies and have advertised in their online shops with the ÖKO-TEST label without first having concluded a licence agreement with the applicant.

The defendant in the I ZR 173/16 procedure offered on its internet portal a blue baby drinking bottle and a green baby sidering, which had been tested by the applicant in a different colour scheme. In addition to the product presentations, there was a picture of the ÖKO-TEST seal, which was marked with the name of the tested product, the test result “very good” and the location of the test.

The defendant in the case I ZR 174/16 offered on its internet portal a slatted base of various sizes and embodiments, as well as a bicycle helmet in black, white and red. In addition to the offers, the ECO-TEST seal with the name of the tested product, the test result “good” or “very good” and the location of the test were depicted. The applicant had tested the slatted base in a certain size with an adjustable head and foot part. She had tested the bicycle helmet in a different colour scheme than the helmet offered by the defendant.

The defendant in the case I ZR 117/17 offered on its internet portal a slatted frame and a pillow of various sizes. In addition to the offers, there was a picture of the ÖKO-TEST seal with the addition “Really good living” as well as with the name of the tested product, the test result “good” or “very good” as well as the location of the test. The slatted frame and the pillow had been tested by the applicant in only one of the sizes offered. It was only after the publication of the offer by the defendant that the parties concluded a licence agreement to use the ÖKO-TEST label for the pillow in the tested size.

The applicant considers that the advertising with the ÖKO-TEST label is an infringement of its rights in the EU trade mark. It has claimed that the defendants have incurred an injunction and reimbursement of warning costs.

The Courts of Appeal

The Landgericht upheld the action in proceedings I ZR 173/16 and dismissed the action in proceedings I ZR 174/16. Both appeals were successful on appeal. The Federal Court of Justice rejected the defendant’s appeal in both cases.

In case I ZR 117/17, the Regional Court upheld the action. The defendant’s appeal has been unsuccessful.

The Federal Court of Justice

The Bundesgerichtshof (Federal Court of Justice) rejected the defendant’s appeal in essence and upheld the injunction relating to the specific form of infringement.

In all three proceedings, contrary to Article 9(3). 1 sentence 1 and 2 letter. c GMV and Art. 1 and 2 books. c UMV is the applicant’s well-known trade mark.

The appeals courts did not err in law in affirmative claims. It is not necessary for the investments to be directly beneficial to the brand in the assessment of the reputation of a trade mark in the assessment of the reputation of a trade mark; on the contrary, it is sufficient that the trade mark benefits indirectly from this, as in the case of a dispute by means of publications using the trade mark.

There is also an infringing use of the trade mark because the traffic links the logo used by the defendants with the trade mark. The defendants provided the traffic with information on the nature or quality of their products and referred in that regard to the service of the product test provided under the applicant’s well-known trade mark. In the overall assessment to be carried out in that context, the reputation of the trade mark and the high similarity of signs are so serious that the dissimilarity of the goods and services concerned does not preclude the assumption of a link between the meaning. It is to be assumed that there is a high degree of sign similarity, but not of character identity, because the defendants have each supplemented the ’empty’ test logo, which is protected as a trade mark, with the information on the test result and the test site. The services covered by the trade mark (consumer advice and information) and the commercial services provided by the defendants are not similar. In addition to the commercial service, a trader who informs in the context of his product offer of the characteristics of a product, such as its valuation, in a test carried out by a third party does not provide the service of consumer advice and information.

The Appellate Courts have further erred in law in assuming that the use of the sign under appeal unfairly exploits or impairs the appreciation of the trade mark for no justifiable reason. Does a third party attempt to enter the scope of the suction effect of that trade mark by using a sign identical to or similar to a known trade mark in order to benefit from its attractiveness, reputation and reputation and, without any financial In return, without having to make his own efforts to exploit the economic efforts of the proprietor of the trade mark to create and maintain the image of that mark, the advantage resulting from that use is to be considered an unfair exploitation of the distinctive character or appreciation of the trade mark. In view of the fact that the applicant has made significant economic efforts to establish and maintain the reputation of its trade mark and that the defendants have taken advantage of the resulting advertising effect of the trade mark without any financial contribution it is not legally objectionable that the court of appeal gave the applicant’s interest in checking the advertising with its mark to ensure that it met its test-related standards, higher than the defendant’s interest in ensuring that its customers the applicant’s good or very good valuation of its products.

Author: Marian Härtel

Marian Härtel ist Rechtsanwalt und Fachanwalt für IT-Recht mit einer über 25-jährigen Erfahrung als Unternehmer und Berater in den Bereichen Games, E-Sport, Blockchain, SaaS und Künstliche Intelligenz. Seine Beratungsschwerpunkte umfassen neben dem IT-Recht insbesondere das Urheberrecht, Medienrecht sowie Wettbewerbsrecht. Er betreut schwerpunktmäßig Start-ups, Agenturen und Influencer, die er in strategischen Fragen, komplexen Vertragsangelegenheiten sowie bei Investitionsprojekten begleitet. Dabei zeichnet sich seine Beratung durch einen interdisziplinären Ansatz aus, der juristische Expertise und langjährige unternehmerische Erfahrung miteinander verbindet. Ziel seiner Tätigkeit ist stets, Mandanten praxisorientierte Lösungen anzubieten und rechtlich fundierte Unterstützung bei der Umsetzung innovativer Geschäftsmodelle zu gewährleisten.