Rat Pack / RatPac – Not All Trade Mark Judges are Movie Producers

Many trade mark cases get decided based on how the "relevant public" understands a given sign in a given context. What public is "relevant" depends, of course, on the goods or services at issue. A recent decision from the German Federal Court of Justice looks into the question whether and when courts need to obtain expert evidence on the relevant public's understanding. 

The case relates to a trade mark infringement case started by German movie production company Rat Pack Filmproduktion GmbH against US-based RatPac Entertainment LLC. Both companies are active in the movie production business but are otherwise unrelated. 

Looking at the evidence
The German company sued the US company for infringement of its "Rat Pack" trade mark, registered in 2002 (inter alia, for distribution and marketing of audiovisual productions). It requested a permanent injunction against the use of "RatPac" and "RatPac Entertainment" in the context of offering or marketing movie production services. 

The Regional Court of Munich (trial court) ruled in favor of the plaintiff and ordered a permanent injunction against the defendant's use of "RatPac", inter alia, in connection with movie production services. However, it rejected the request for monetary compensation. 

Upon appeal, the Court of Appeal observed that movie production services are provided to a public of specialists who recognize the US company as a movie finance entity and part of the RatPac group of companies. In the Court of Appeal's view, the use of "RatPac" or "RatPac Entertainment" on movie posters or DVD-boxes would neither be considered as use in connection with the service "movie production" nor in particular as use by the defendant (as there are many other companies in the RatPac Group). 

The same was considered true of third party sources on websites that referred to "RatPac Entertainment". These sources would not be understood as references to the defendant. Accordingly, the Court of Appeal rejected the German company's claims and overturned the first instance decision. Importantly, the Court of Appeal rejected the German company's request to obtain the opinion of a court expert on the understanding of the sign "RatPac" in the context of its use, both online and offline, by the relevant public. 

Upon appeal by the German company, the Bundesgerichtshof overturned the decision of the Court of Appeal. The Bundesgerichtshof was of the view that if the trial judges are part of the relevant public, there is generally no need to obtain an expert opinion to find out how the relevant public understands a given sign. If the trial judges are not part of the relevant public, they can still opine on the understanding of the relevant public based on their own general experience, but only if no special knowledge or experience is necessary to do so. If special knowledge or experience is necessary, the trial judges need to rely on external evidence (if such evidence either is on file or requested by a party) showing the understanding of the general public. 

In the case at hand, the judges of the trial court are not movie producers and hence are not part of the relevant public. The Bundesgerichtshof considers that the Court of Appeal had no reason to assume that this case could be decided without any special knowledge or experience of the movie industry. Hence, the Court of Appeal should have sought the opinion of a court expert to determine how the relevant public understands the use of the sign "RatPac" in the documents and websites on file. 


A Kat Pack
Who gets to decide how a sign is understood by the "relevant public"? In this case, the Bundesgerichtshof found fault with the lower court, which decided, in its own, how professionals in the movie industry would understand the use of a particular sign in a particular context. In other words, the lower court judges had replaced fact-finding with their own personal views. This was found a violation of the appellant's constitutional right to be heard. 

The lower court decision, as overturned by the Bundesgerichtshof, is certainly not the first trade mark case that has been decided on the basis of the personal views of the judges, when it should be adjudicated based on evidence (such as surveys and expert evidence). This Kat considers the Bundesgerichtshof's decision as a welcome nudge to judges tasked with fact-finding to do just that: find facts. 

Nonetheless, the case still raises several questions that the (very short) decision of the Bundesgerichtshof fails to address. Firstly, the published decision does not explain what evidence, if any, was already on file about the understanding of the relevant public, in particular whether either party has introduced witnesses or conducted a survey. 

In any event, it seems to this Kat that the question before the Bundesgerichtshof would be better addressed by survey evidence than by the report of a lone expert (who may simply substitute his or her personal view for those of the judges' view). Whether either party filed a survey, or asked the court to have a court expert conduct a survey, is not known. 

Finally, German procedural law aficionados may be interested in knowing that this decision is a rare occurrence of the Bundesgerichtshof allowing an appeal against a denial of leave to appeal (Nichtzulassungsbeschwerde) in a trade mark case.

Picture on the left (c) by Dr Judit Banhidi
Rat Pack / RatPac – Not All Trade Mark Judges are Movie Producers Rat Pack / RatPac – Not All Trade Mark Judges are Movie Producers Reviewed by Peter Ling on Tuesday, August 25, 2020 Rating: 5

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