BGH on "acquired distinctiveness and market surveys" and "trade mark rights vs banking secrecy"

Two recent trade mark decisions by the German Federal Court of Justice (Bundesgerichtshof or short: BGH) have caught this Kat’s eye.

The first case concerned a decision relating to an invalidity action against the trade mark “test” owned by Germany’s famous consumer watch dog "Stiftung Warentest" (case reference: I ZB 65/12 of 17 October 2013). The following report is based on the BGH’s press release 175/2013 of 18 October 2013 which can be found here (in German). 

The test magazine - not distinctive?

What had happened?  Stiftung Warentest, founded in 1964 by the German parliament, is not dissimilar to Which in the UK as it tests all kinds of consumer goods. Stiftung Warentest has been using the mark “test” since 1966 and managed to obtain a trade mark registration for a combined word/logo mark in 2004 after showing acquired distinctiveness through its use.  Axel Springer Verlag, a well-known German publishing house, started invalidity proceedings against this registration in 2006.

While the German Trade Mark and Patent Office agreed with Springer, the German Federal Patent Court saw matters differently on appeal.  The BGH agreed with the German Federal Patent Court that the sign “test” was descriptive for the test magazines and the publication of consumer goods tests since it describes the content of such publications.  Nonetheless this absolute ground for rejection could be overcome by proving acquired distinctiveness of the sign.

However, the BGH disagreed with the German Federal Patent Court regarding the assessment of a market survey according to which 43% of the relevant consumers had recognized the sign test as referring to a specific undertaking.  The BGH deemed this figure as not high enough, bearing in mind also that the sign has not been used as registered since May 2008 so that this percentage could have declined even more since then.  Other factors that are usually relevant when deciding on acquired distinctiveness (market share, circulation numbers, advertising costs and duration of the sales of the magazine) were not sufficient bearing in mind the result of the survey.  In this context, the BGH stressed that market and consumer surveys were the most reliable means when assessing acquired distinctiveness (Kat comment: an opinion not necessarily shared on the other side of the English Channel).  The BGH thus referred the matter back to the German Federal Patent Court, which now also has to determine whether the mark test had indeed had acquired distinctiveness in 2004 when it first achieved registration.  The BGH helpfully reminded the readers of the press release that a registered German national trade mark, which had achieved registration on the basis of acquired distinctiveness may only be invalidated if it had lacked acquired distinctiveness when registered and still lacked it at the time of decision on invalidity.

Surely not the infringer?

The second case concerns a brand new referral from the BGH to the CJEU concerning the interpretation of Article 8(3)(e) Enforcement Directive (Right of Information) in cases of trade mark infringement (see Article 19(2) No.3 German Trade Mark Act.  

The background of the case is as follows: the perfume makers of Davidoff tried to enforce their trade mark rights (here a licencee) by purchasing infringing “fake” Davidoff perfumes ("Davidoff Hot Water") from eBay.  After having paid the agreed price for one of these purchases Davidoff merely managed to obtain the bank account details of the seller but nothing more. After failing to obtain further information from the bank itself, Davidoff decided to sue the bank to force it reveal the identity of the trade mark infringing bank account holder under Article 8(1) Enforcement Directive – but to no avail.  

The BGH is thus, in essence, asking the CJEU for guidance as to whether the bank should be able to reject the information request due to banking secrecy or whether the right to be able to effectively enforce trade mark rights should prevail.  The court signalled that it is of the view that Article 8(3)(e) Enforcement Directive (“3. Paragraphs 1 and 2 shall apply without prejudice to other statutory provisions which: (e) govern the protection of confidentiality of information sources or the processing of personal data”) should be applicable to account information and outweigh the bank’s right to keep the identity of the account holder secret.

An interesting case – lets see whether the CJEU agrees with the Karlsruhe based court. The BGH’s press release 173/13 of 17 October 2013 can be found here; (case reference  I ZR 51/12 of 17 October 2013).