Anyone registering a trademark is obliged to use such a trademark before a 5-year grace period expires – otherwise, it will “lapse”. This means: The proprietor can no longer assert his trademark rights against third parties, and anyone may apply for a cancellation of the trademark due to non-use. These effects may also occur in part, i.e. with regard to goods or services for which the trademark is not being used.
While most trademark proprietors are aware of the obligation of use as such, it is sometimes forgotten that the trademark also has to be used as it has been registered, and not otherwise. This is the rule. However, it is not intended that it is necessary to register a new trademark for each “lifting”. Therefore, the law states that the registered trademark will not lapse if it is used in a way so that the “distinctive character of the trademark is not altered”.
Facts of the Case
Unfortunately, it is far from clear what constitutes the “distinctive character” of a trademark, and, consequently, also when such “distinctive character” changes, except for very clear cases. The Federal Court of Justice had to give a ruling in a case where someone had the trademark “Dorzo” entered. The trademarks that were used were “Dorzo-Vision®“, “DorzoComp-Vision®“ and “DorzoComp-Vision® sine“. After “Vision”, the letter “R” in a circle (®) followed in each case. It stands for “registered”, it does not exist in German Trademark Law, but it may be used if you actually have such a registered trademark; otherwise, it is misleading, since the public will assume a protection which follows from the registration, but which actually does not exist.
A third party wanted to have the trademark deleted; it would not have been used. The combinations with “Vision” etc. would not constitute a use of the registered trademark, since the “distinctive character” would have been altered in comparison with the registered trademark.
The Trademark Office rejected the application for cancellation, the Federal Patent Court granted the application, the Federal Court of Justice upheld this. A trademark “Dorzo-Vision” would have not been registered, and the same would apply to the two other ones. The fact that “Vision” would have a meaning, and clearly a meaning different from that of “Dorzo”, so that the public would still perceive the term “Dorzo” as such, would not change anything; also for the term “Comp”, one could think of a descriptive addition, e.g. for “composite”. According to the Federal Court of Justice, “Vision” would be understood by the public as an additional, distinctive component – i.e. not only a descriptive one or a component referencing to the company – of a single overall mark, possibly consisting of several elements. In this context, it would be significant that the “®” was in fact not added after “Dorzo”, but after “Vision”. By doing so, the impression was given that the combination would be the trademark, not merely “Dorzo”.
Now this deserves a comment. There are many trademarks that are registered despite the fact that they also have a descriptive component – in addition to the other component or components that account for the “distinctive character” of the trademark and ensure that the trademark was entered at all. If these trademarks are supposed to be provided and used with an “®”, they not just may, but have to be marked “as a whole” with this “®”; it would be misleading to pick one part – regardless of whether this is the actual part that constitutes the “distinctive character” – and to mark just this part with the “®”. The public might then assume, see above, that only a part would have been entered and would be trademark-protected, which is not the case. The Federal Court of Justice has rejected the registration of the trademark shown below in the last instance, since the “®” would give the impression that the word “grill meister” would be protected, whereas in fact, only the combination of the word and the image in the concrete graphical design is trademark-protected. Therefore, if, for example, “DorzoVision” or “Dorzo Comp” had been entered as a trademark, the proprietor would not have been entitled to use a trademark “Dorzo®-Vision”. One case deals with whether a positioning of the “®” creates the impression that there would be a specific trademark (also registered as such), the other case deals with whether the impression is given that there would be protection by registration for a specific sign.
In both cases, it applies: the “®” has to designate the “registered” trademark. It must not designate the part that accounts for its distinctive character. And the trademark should be used as it has been entered. In case of doubt, it should be re-registered. Re-registration regularly is less expensive than not having any trademark protection at all because the trademark that is being used has not been registered, i.e. is not protected, and the trademark that has been registered is not being used, i.e. is not protected either. You can just let the previous (old) registration expire.
(Federal Court of Justice, judgment of 11 May 2017 – I ZB 6/16 „Dorzo“)
Dr Kristofer Bott, Lawyer, Accredited Specialist in Intellectual Property Rights