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In online retail, many designers give their garments and accessories names in order to individualise them for consumers. The shock is great, however, when it turns out that the name, intended purely as decoration, is protected as another’s trade mark. We have worked out when trademark infringement occurs according to case law.

In online retail, many designers give their garments and accessories names to give their own range more appeal and to individualise the pieces for consumers. For example, different models of trousers are given their own first names such as “Lucy” or “Tom”.

The shock is great, however, when it turns out that the model name you wanted to use purely decoratively is protected as another’s trademark and a trademark infringement is in the offing. To give you a little more security in these waters, we have evaluated the relevant case law for you. Particularly important is the decision of the German Federal Court of Justice (BGH) of 7 March 2019, which concerned a trade mark infringement by the model name “Sam”.

In order to be able to infringe another’s trade mark at all, your model designation must first constitute use as a trade mark. This is the case if a significant part of the targeted public sees the model designation as an indication of the origin of a product or service from a certain company.

This is particularly the case if the designation is found on sewn-in labels on the inside of items of clothing or on the packaging.

But even if you only use it in advertising or in the design of offers, for example in an online shop, you have to be careful. Use as a trade mark and thus a trade mark infringement exists if one of the three groups of cases is fulfilled:

1. If the model designation is also rarely used by competitors and the public does not recognise it as such, but as an operational indication of origin

2. If a model designation is used which is identical with a well-known trade mark (the well-knownness of the foreign trade mark is a knock-out criterion)

3. If the trade mark is not known and the model designation is only used in a superior position in the offer. The latter is the case if the model designation is used in connection with a manufacturer’s or umbrella brand and is not only part of a descriptive text in which the public primarily expects factual information.

If your model designation already appears in the offer heading and not only in the subordinate descriptive text, where the more detailed characteristics of the product are described, this speaks for a trade mark infringement. This is because in an online shop the trademark is regularly emphasised in the menu bar. And if the foreign trademark appears in the offer heading, it is visually related to the trademark and is often perceived as a reference to the origin of the goods, which in most cases constitutes a trademark infringement.

The legal classification is therefore apparently not that complex. But one should always check fictitious designations that one uses for products beforehand, and not just superficially. Many people are not even aware whether their model designations are in conformity with trademark law. When is another person’s trademark “known”? And how is the perspective of the “public” to be determined? Based on our experience, we can answer such detailed questions at any time. Please do not hesitate to contact us!