The applicant is the proprietor of the Union trade mark reproduced below
The trade mark is registered in particular for paper towels and frames, holders and dispensers for paper towels. Under that trade mark, the applicant markets paper towel dispenser systems and matching paper towels on reels as refills for the catering, industrial and healthcare sectors. The towel dispensers are identified by the trade mark reproduced above.
The defendant operates a wholesale business for hygiene products and offers, inter alia, rolls of paper towels as refills for dispensers with the statement “also suitable for TORK dispensers”. The defendant’s refill product is not marked with a trademark.
The Landgericht and the Oberlandesgericht dismissed the action and stated that the average consumer did not assume that a brand on a towel dispenser also referred to the towels. The public is now accustomed to the fact that, in the case of a large number of goods, there are basic devices whose operation requires the use of materials not supplied by the manufacturer of the basic device (such as printer ink cartridges, vacuum cleaner bags, coffee capsules, razor blades and liquid soap). The public therefore distinguishes between the marking of a device for dispensing goods and the marking of the goods themselves. It will only refer to a marking affixed to the basic appliance if there is a specific reason to do so. There is no such specific reason in the present case, with the result that there is no infringement of the trade mark.
The BGH, on the other hand, took the view that a trademark infringement could not be denied on the basis of this reasoning. First of all, it should be borne in mind that the defendant’s paper towel rolls do not have their own marks, but are unprinted. The function of the mark affixed to the dispensers as an indication of origin is therefore not relativised by a marking on the paper towel rolls. The consumer is not in a position to identify the defendant’s unprinted paper towel rolls which are not visible to the eye. It should also be borne in mind that, unlike the examples cited by the Court of Appeal, such as ink, toner, coffee capsules, vacuum cleaner bags, razor blades and liquid soap, the consumer does not, in the event of a dispute (the rolls of paper towels), replace the refills himself or have them replaced. Rather, the new filling of the towel dispensers takes place outside his area of experience. The consumer himself regularly finds the already filled towel dispensers in the washrooms he uses. In that case, however, the consumer would not already know from the refilling process itself that the product was not the original refill from the manufacturer of the container and the trade mark proprietor.
In addition, the BGH still had to deal with the fact that it was not the defendant itself but its customers who fitted the towel dispensers with the paper towel rolls. It was therefore not the defendant but its customers who carried out the direct infringing act.
The BGH ruled that in the present case the defendant would be liable for aiding and abetting a trademark infringement. It is well known that the question as to whether someone has participated as a perpetrator, accomplice, instigator or accomplice in an unlawful act of a third party is assessed according to the legal principles developed in criminal law. In addition to an objective treatment of the aid, the so-called accessory liability presupposes at least a conditional intent with regard to the principal offence, which must include the awareness of illegality (so-called double accessory intent). In the opinion of the BGH, these prerequisites were fulfilled here. Finally, the defendant offered and distributed the paper towel rolls complained of with the note “suitable also for TORK dispensers”. She had wanted her paper towel rolls to be filled into the plaintiff’s towel dispenser as well and had thus at least accepted the fact that the plaintiff’s trademark had been infringed (conditional intent).
Conclusion: If the defendant had provided the paper towel rolls offered and sold by it with its own trademark, the BGH would possibly have denied a trademark infringement.
