Abusive (malicious) trademark application?

The Higher Regional Court Frankfurt am Main has to decide in infringement proceedings in the case “Pfefferspray” inter alia on the plea that the trade mark in dispute is ready for cancellation due to malicious application pursuant to Sec. 8 (2) No. 10 MarkenG. The complete judgment of the Higher Regional Court Frankfurt am Main of 3 May 2018 is reproduced e.g. in WRP 2018, page 1110 et seq.

The decision was based on the following facts:

Since 1994, the plaintiff has used the signs “MK-3”, “MK-8” and “MK-9” for irritant sprayers (popularly known as “pepper spray”). To the applicant’s knowledge, the defendant has also been using those signs since 2000 for irritant sprayers. A third company, the applicant’s former supplier and the defendant’s current supplier, was the proprietor of a Union trade mark “MK” for irritant sprayers. The trademark protection ended in 2011 because the third company did not renew the term of protection of the trademark “MK”.

On 03.02.2016 and 02.06.2016 the plaintiff registered the signs “MK-3”, “MK-8” and “MK-9” as German trademarks for irritant sprayers.
As soon as those marks were entered in the register, the applicant issued a warning letter to the defendant concerning the use of those signs for irritant sprayers. The defendant refused to submit the required cease-and-desist declaration and undertaking. The plaintiff then brought an action for an injunction and also asserted subsequent claims for information, damages, destruction and reimbursement of costs. In the infringement proceedings, the defendant raised the objection that the action marks were ready for cancellation on the grounds of malicious filing pursuant to Sec. 8 (2) No. 10 MarkenG. In principle, the defendant cannot plead in infringement proceedings that the plaintiff’s trademark should not have been registered because of absolute grounds for refusal pursuant to Sec. 8 (2) MarkenG because the infringing judge is bound by the registration of the trademark. An exception applies to the malicious trademark application because this absolute obstacle to protection is not examined in the application procedure. Thus, if a malicious trademark application has been filed, the defendant may plead this in infringement proceedings.

The Higher Regional Court of Frankfurt am Main upheld the action. An infringement of the plaintiff’s trademarks was undisputed because the defendant used identical signs for identical goods. The plea of malicious trademark filing raised by the defendant was, in the opinion of the Higher Regional Court of Frankfurt am Main, unsuccessful.
The Higher Regional Court of Frankfurt am Main stated the following:

The applicant for a mark does not act unfairly simply because he knows that another company uses the same mark in Germany for the same goods without having acquired formal trademark protection (see also BGH GRUR 2008, page 621 et seq. – Academics). There is no right of prior use in trademark law. It is therefore not objectionable in principle if someone applies for a trademark for certain goods or services, although he knows that another person or company has already used this sign for identical goods or services, but has failed to protect this sign as a trademark.

It is only if special circumstances are added that such an application for a trade mark must be contested. Such special circumstances may lie in the fact that the proprietor of the trade mark, being aware of a prior user’s acquis worthy of protection, uses, without sufficient objective reason, the same or a confusingly similar designation for the same or similar goods or services with the aim of disrupting the prior user’s acquis, or with the intention to block the use of the designation by the applicant, or that the applicant for the sign uses the blocking effect arising from the registration of the sign by virtue of trademark law and unobjectionable from the point of view of competition law as a means of competition.

In the opinion of the Higher Regional Court of Frankfurt am Main, the plaintiff had no intention of obstructing the competition in this case. The applicant had a sufficient objective reason for filing the trade mark application. The applicant has been using those signs since 1994, so that it cannot be denied the right to protect the use of those signs by means of trade mark protection. Furthermore, everyone – including the defendant – had the opportunity to have those signs protected as trade marks after the term of protection of the Union trade mark “MK” for the third company had expired in 2011.

Should the trademark applicant be able to demonstrate that he has a factual reason for the trademark application and uses the trademark himself, this objection will generally not be upheld.