Every year again - the regularly underestimated high requirements for the right-preserving use of a trademark

Every year again - the regularly underestimated high requirements for the right-preserving use of a trademark

Brands have a very high value for companies as they fulfill indispensable functions. They create trust and promote loyalty among customers and business partners. Brands enable identification with the company, differentiate it from competitors and offer (potential) customers a secure basis for decision-making.

For this reason, every company, regardless of size and sector, is strongly advised to develop a distinctive brand and protect it in the relevant markets. This is the only way to use the mark exclusively and build a strong brand.

However, a trademark must or should not only be applied for and registered - it must, at least in the case of German and EU trademarks, also actually be used for the corresponding goods and services in a way that preserves the rights no later than five years after registration.

A remarkable decision by the German Federal Patent Court (BPatG) a few months ago has once again made it clear that even large companies have considerable problems with the high requirements of German and European trademark law for the so-called "right-preserving use" when it comes to the question of right-preserving use.

In the "Monster" decision (Ref. 30 W (pat) 78/21), the BPatG ruled that the energy drink manufacturer Monster Energy Company could not sufficiently demonstrate the right-preserving use of its registered word mark EUTM No. 002 784 486 "Monster" in the EU or, in this case, in Germany - with the consequence that the BPatG rejected the opposition of Monster Energy Company against a word/figurative mark application (IR No. 1352854).

among other things due to a lack of proof of use to preserve rights.

What had happened?

Monster Energy Company had submitted a number of documents (including affidavits) to prove the use of its word mark "Monster" to preserve its rights, namely as follows:

The BPatG found that the graphic design of the lettering and the claw element used together had their own special effect and could no longer be identified with the original word mark.

But even if you only use the word elements in the form sign

resp.

the BPatG denied that this constituted a use of the registered word mark "MONSTER" that would preserve rights.

It is true that a word mark registered in the official standard typeface is not generally affected in a legally detrimental way if it is reproduced in another standard typeface. However, according to the BPatG, the lettering used here is not a common font that would have no influence on the distinctiveness of the word mark (see BPatG, decision of August 23, 2024 - 30 W (pat) 78/21, para. 75).

Rather, the signs used were

resp.

"[...] consists of a striking, rune-like font that gives the shape used its own character. This applies in particular to the character element

In it, the slightly jagged element, which is rather rounded at the bottom and flattened at the top, is broken in the middle by a vertical line. [...]. This structure is not immediately recognizable as a letter, but initially appears to the viewer as a fantasy symbol. After some, albeit rather brief, consideration, the public will come to the conclusion that it is a fantasy letter, which allows a reading of the sign [...] such as "MÜNSTER" or - after further brief consideration perhaps more obvious - "MONSTER". However, this is not immediately and easily recognizable. The remaining letters are stylized like runes and are characterized by unusual proportions of the individual letters, e.g. by the unequal length of the legs [...], as well as unequal curves [...]."

    - BPatG, decision of August 23, 2024 - 30W (pat) 78/21, para. 76.

On this basis, the BPatG also came to the conclusion that the form of use submitted could not constitute a use of the word mark "Monster" that would preserve the rights. This is because the graphic design goes beyond mere decoration and thus has its own distinctive and characterizing effect. This independent pictorial character means that the public no longer equates the shape used in the overall impression with the registered word mark "MONSTER" (see BPatG, decision of August 23, 2024 - 30 W (pat) 78/21, para. 77).

Practical advice for trademark owners

Practice shows time and again that companies underestimate the complexity of proving use, which can ultimately lead to unpleasant surprises. Almost every year, there is at least one, if not several, prominent office/court decisions in which a (often large) company was unable to sufficiently prove the use of a particular trademark to preserve rights - which is likely to make the topic of "use to preserve rights" a perennial issue for trademark owners.

Trademark owners are therefore urgently recommended to regularly review the way in which their trademarks are used, to take appropriate precautions and, if necessary, to adapt/improve the documentation or - if no documentation has been prepared to date - to do so as soon as possible and to establish it within the company.

Among other things, companies should ensure that

- every use of their trademarks is comprehensively and meaningfully documented and archived in order to be able to sufficiently prove the use of their trademark in the event of a dispute. Otherwise, in the worst case scenario, the trademark owner could face the cancellation of their trademark. This can mean an economic fiasco and ultimately lead to the loss of the exclusive rights to the trademark - and all the time, effort and costs invested in establishing the trademark would have been in vain.

 - their trademarks can be used as they were registered. In the case of word marks, the scope of protection is and remains the greatest, as the word as such is protected - slight graphic designs / stylizations are therefore possible in principle.

However, if a word mark is used in an unusual or highly stylized font, there is a risk, which should not be underestimated, that such a particularly stylized use of the word mark will not be regarded by the offices or courts as use of the word mark that preserves rights. This risk can be countered if necessary by registering the specific form of use as a word/figurative mark, for example, in addition to the (still preferred) word mark.

Do you have questions about the use of trademarks and their documentation/archiving or other trademark law issues? We are happy to provide you with our expertise at any time and will be happy to advise you.

Final note: In the decision shown above, the Federal Patent Court cited further reasons why the opposition was ultimately rejected as a whole - however, these do not play a decisive role for the topic of "right-preserving use of a trademark", which is why the author of this article does not go into them further - the detailed reasons for the Federal Patent Court's decision are publicly available.

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