The applicant in this case is the holder of a community trade mark applied for on 15 Novem-ber 2004 and registered on 25 January 2006, consisting of the word element “Grillstar” with the images of an arrow and a fire bowl held, mainly in red colour. The defendant is the holder of a community trade mark applied for on 13 August 2008 and registered on 13 November 2008, which consists of the word element “Grillstar.de”, with the image of a star bow in the colours yellow and black.
On appeal, the plaintiff also asserted the cancellation of the defendant’s mark for “retail services, including online, namely in respect of barbecue equipment and accessories”. Its action for cancellation was primarily based on the revocation of the defendant’s mark pursuant to Sec. 49 para. 1 MarkenG and, in the alternative, on its prior community mark pursuant to Sec. 51 para. 1 MarkenG.
The action again proved unsuccessful in the 2nd instance.
Pursuant to Sec. 49 para. 1 MarkenG, a registered trademark is cancelled on grounds of ex-piry if the trademark has not been put to actual use for a continuous period of five years after the date of registration.
The plaintiff had apparently only presented the following declaration in this context: “The defendant is not utilising the German word/figurative mark No ……………….”GrillStar”.”
The court initially made some general remarks on the use of a service mark necessary for maintaining the protection of rights. As opposed to a trademark, service marks lack the physical connection between the mark and the “product”. Acts of use for a service mark are thus generally limited to affixing the mark on the business premises, and to use on objects used in the course of service provision, such as particularly on work wear, business correspondence and documents, brochures, price lists, invoices, announcements and printed advertising.
The court further stated that the burden of proof for presence of the cancellation conditions on grounds of expiry is generally borne by the applicant for deletion. As part of the primary burden of proof, the applicant must at the very least set out all evidence indicating the lack of use of the mark. Possible indications would be an internet search or an on-site visit for a physical business.
In the present case, the applicant had not submitted any such indications. The mere assertion that the defendant did not utilise its mark actually within the prior five years was not sufficient in the court’s opinion. For this reason, the court dismissed the action for cancellation on grounds of expiry.
Note 1: If the applicant had set out all available evidence for non-use of the mark by the defendant, it would have been up to the defendant to respond. The defendant would then have been required to demonstrate the actual use of the mark in the scope of its secondary burden of proof pursuant to Sec. 138 para. 2 ZPO [Code of Civil Proceedings].
Note 2: As a guide what proofs are “accessible” to the applicant and must be furnished, the court cited an internet search or possibly on-site visit. The author of the present paper, before filing of a cancellation action for expiry, always has a use search made, and only initiates the action for cancellation if the research indicates non-use of the contested mark. A use search is also deemed “accessible” to the applicant. Since the Higher Regional Court [OLG] of Hamm requires the applicant to submit all evidence available to it, it also stands to reason that the applicant be required to have a use search done. If it fails to do so, it would not meet the burden of proof consistent with the opinion issued by OLG Hamm, and lose the case for this very reason.
Note 3: Claims asserted by owners of marks that are expired may initially be opposed by asserting that the opponent’s mark is not in use. In this case, the extent of the burden of proof differs from that of the applicant’s in deletion proceedings on grounds of expiry. The defendant’s mere objection to non-use must then be countered by the applicant by way of demonstration of actual use of the “attacking mark”.
In the alternative, the applicant supported the action for cancellation on its prior community mark consisting of the word element “Grillstar” with the images of an arrow and a fire bowl, mainly in red color. The defendant’s contested mark consists of the word element “Grill-star.de” with the image of a star bow in the colours yellow and black.
The court denied any similarity between the marks at issue, and made the following remarks in this regard:
In case of coincidence or similarity of individual components in marks with multiple components, similarity between the marks only applies if the matching (or at least similar) individual components dominate the overall impression of the mark under objection. The characterisation of a mark with several components by one or more components applies if the remaining components recede into the background in such a way that they are negligible in terms of the overall impression. A component that is of merely descriptive character or otherwise unsuitable for protection does not suffice to characterise a mark in this sense (ongoing case-law, cf. especially Ströbele/Hacker, Sec. 9, para. 364 et seq. with citations).
The court continues by stating that the word “Grillstar”, for the services in the barbecue sector at issue here, only has a purely descriptive or advertising significance. The word “Grillstar” was said to be lacking any distinctive character. The public would not interpret the compound term “Grillstar” consisting of the word elements “Grill” and “star” to be no more than a general promise of quality in the field of barbecuing and associated products. The word element “Grill” was to be regarded as purely descriptive in relation to the services in question. The public would easily and without further analysis understand the word element “star” as a mere general promise of quality with respect to the products described by the word element “Grill” (“top-quality products for your BBQ”).
The word element “Grillstar” was thus ruled to be negligible when considering the likelihood of confusion between the marks at issue.
Accordingly, solely the respective image components were of significance in the present case. These image components, an arrow and a fire bowl on the one hand, and a star bow in different colours on the other, were dissimilar, which means that no overall similarity between the marks at issue was present.
Consequently, the court also denied the grounds for cancellation due to the presence of prior rights pursuant to Sec. 51 para. 1 MarkenG.
