Facts of the case and decision of the German PTO:
In 2000, the well-known platform Amazon registered a comprehensive word mark “Amazon” in classes 16, 1, 2, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. A cancellation request was filed on 21 August 2022 to challenge this broad trademark, and was successful with regard to most of the goods and services. The trademark was cancelled for all goods and services, except for
Class 35: “Brokerage and settlement of commercial transactions within the framework of an electronic department store; brokerage of sales and their settlement by means of online shopping in computer networks and/or other distribution channels; operation of electronic markets on the Internet through online brokerage of contracts for the purchase of goods” and
Class 39: “Transport and storage services”.
Legal arguments of the applicant:
In support of its cancellation request, the applicant argued that the trademark ‘Amazon’ was eligible for cancellation. Referring to the Federal Court of Justice’s decision in case I ZR 293/02 – Otto, the applicant argued that the trademark was merely understood as a reference to the company, specifically as the company name of the trademark owner, and not as an indication of the origin of its registered goods and services. The documents submitted by the trademark owner in the cancellation proceedings were insufficient to prove the use of the trademark in relation to the products covered by the list of goods and services. The evidence submitted consisted only of advertising measures. In the applicant’s view, there was no evidence that the trademark had been affixed to the goods or their packaging. It was not the responsibility of the Trademark Office to examine extensive documents in order to establish a connection between the trademark and a specific product. Furthermore, the applicant argued that it was clear the trademark owner was not using the trademark in its registered form, but only a brand name called ‘Amazon Basics’, which did not constitute use preserving rights to the disputed trademark.
Regarding proof of use to preserve rights, the applicant also maintains that this is governed by EU law, as summarised in the guidelines issued by the EUIPO, among other sources. For this reason, the German PTO’s role is limited to assessing the documents submitted regarding use. The ex officio determination of the use of the disputed trademark that preserves rights is therefore excluded.
Legal arguments of the trademark owner:
In addition to the alleged formal defects in the cancellation request, the trademark owner’s defence was primarily based on an objection of abuse of rights. In this regard, they referred to a trademark application filed by the applicant for the sign ‘AMAZON’, which was rejected by the German PTO under Section 10 of the German Trademark Act (MarkenG), in conjunction with Section 9(1) No. 2 MarkenG, as ‘Amazon’ is a well-known trademark. Furthermore, the applicant had attempted to register the trademark ‘AMAZON’ in Austria; however, this registration was cancelled by the Cancellation Division of the Austrian Patent Office on 15 January 2024.
Substantively, the trademark owner justified its request for dimsmissal on the grounds that using the trademark ‘Amazon’ for a company that sells products from other manufacturers does not preclude rights-preserving use. Even in such cases, a sign could be used in a manner suitable for distinguishing goods and services according to their commercial origin. This applies, with reference to BGH GRUR 2011, 623, 23–26, Peek & Cloppenburg II, in particular when trading companies offer goods under their own ‘trademarks’ as well as distributing third-party products.
Alongside information on website visits, sales figures and the marketing budget, the trademark owner stated that during the relevant period, the disputed trademark had been affixed to both the goods themselves and their packaging in a clearly visible manner in Germany. The evidence submitted included an unsystematic series of approximately 4,800 pages of printouts of product offerings on the trademark owner’s company website, as well as an affidavit from the trademark owner’s vice president.
Regarding the use of the trademark in connection with services, the trademark owner argues that it is also used in the context of an affiliate marketing programme and refers to supplementary usage documents consisting of individual invoices and printouts of company websites.
Finally, the fact that the disputed trademark is used alongside additional terms such as ‘essentials’, ‘basics’, etc. does not affect its distinctive character. Furthermore, the public is accustomed to secondary trademarks, meaning their use also constitutes use of the main trademark in a manner that preserves its legal rights.
Reasons for the decision of the Trademark Division:
The German PTO found the cancellation request admissible and partially successful on its merits. Specifically, the trademark was declared invalid and deleted, except for:
Class 35: ‘Brokerage and settlement of commercial transactions within the framework of an electronic department store; brokerage of sales and their settlement by means of online shopping in computer networks and/or other distribution channels; operation of electronic markets on the internet through online brokerage of contracts for the purchase of goods’ and
Class 39: ‘Transport and storage services’.
Regarding the objection of abuse of rights, the German PTO noted that the cancellation request was filed under Section 53(2) of the German Trade Marks Act (MarkenG) and that the stringent criteria set out by the Federal Court of Justice (BGH) in its ruling, particularly in BGH GRUR 2010, 231, para. 20 (Lego Stein), were not met in this case. This was because the cancellation proceedings served the public interest of removing unused trademarks from the trade mark register. According to case law (see Federal Patent Court GRUR-RS 2025, 13879, marginal no. 75 – colour mark red), abusive conduct can only be assumed if it is apparent that the applicant is not concerned with safeguarding the public interest, but is exclusively pursuing purposes unrelated to the proceedings.
In the opinion of the Trademark Division, the facts presented by the trademark owner are insufficient to meet the specific requirements of case law. In particular, bearing in mind BPatG GRUR-Prax 2018, 466 – ‘Netzwerk JOKER’, an application to register an identical or similar sign as a trademark does not in itself constitute evidence of abusive conduct. Furthermore, the reputation of the contested sign is irrelevant to the assessment of possible abuse of rights, since even well-known trademarks can be revoked if they are not used in a manner that preserves their legal status. Similarly, the applicant’s unwillingness to engage in informal clarification or cooperation cannot lead to the assumption that the sole purpose is to pursue objectives unrelated to the proceedings.
Regarding evidence of use, the Trademark Division noted that the trademark owner had failed to prove that the disputed trademark was used functionally as an indication of origin, nor had they demonstrated which of the registered goods the trademark was actually used for. The Trademark Division emphasised that, in cases involving trademarks for goods that are typically affixed to the goods themselves or their packaging, it is essential to submit photographs, catalogue extracts, or other evidence demonstrating the trademark’s actual form in relation to specific goods. The Trade Mark Division required evidence to satisfy itself, based solely on the submission and documents provided, that the mark had been used in a manner consistent with its function for goods falling within the scope of the registered goods. Illustrations of goods were therefore only suitable as evidence if, possibly in conjunction with the submission and supplementary information (for example, in an affidavit), they clearly showed how the trademark was used for specific goods, and to which goods the terms entered in the register were assigned. This regularly required a subdivision of the information according to goods and service groups (BPatG GRUR-Prax 2017, 462 – O2 Flow/flow; BPatG BeckRS 2015, 14896 – meddix/MEDATIXX).
In this case, the Trade Mark Division noted that the trademark owner had submitted a 4,800-page appendix comprising an unsystematic collection of printouts of product offerings from the trademark owner’s company website. The affidavit submitted alongside this merely referred to the comprehensive appendix, stating that the use or affixing of the trademark for the goods and services in question could be seen in the appendix. Under these circumstances, the Trademark Division was unable to establish the trademark’s genuine use. Citing BGH GRUR 2012, 534, note 21 (Landgut Borsig) and BPatG GRUR-Prax 2022, 113 (RMS ASCONEX/ASCONEX), the Division stated that it was under no obligation to review the extensive appendix independently to gather facts relevant to the decision, and was therefore entitled to disregard it entirely. Regarding the additional submission of individual invoices broken down by product group, which also featured the ‘Amazon’ sign, the Trademark Division noted that the use of trademarks in invoices alone was insufficient to demonstrate functional use.
Furthermore, the trademark owner had not provided any specific information on the extent of use with regard to some of the goods. The general sales figures submitted by the trademark owner did not satisfy the requirements for proving the extent of use.
For these reasons, the Trademark Division concluded that the trademark owner had not used the trademark in a way that would preserve their rights for the registered goods in classes 01 and 02, and classes 04 to 34.
Regarding the services also registered in classes 35 (in part), 36 to 38, and 40 to 42, the Trademark Division concluded that the trademark had not been used in a manner consistent with its function as an indication of origin in this respect either. The trademark owner’s reference to substantial use in the areas of logistics, software, entertainment, and payment services, as well as the use of the trademark within the affiliate marketing programme ‘Amazon Associates’, was also deemed insufficient. In particular, no sales figures had been submitted for any of the services that could be attributed to specific categories. Furthermore, the office was unaware of sufficient facts indicating that the trademark had actually been used in its registered form for these services to a relevant extent within the relevant period.
Regarding the partially rejected cancellation request, the Trademark Division stated that, based on facts known to the authorities, it could be assumed that the trademark had been used in a manner that preserved its legal validity with regard to these services. The Division pointed out that it was common knowledge that an extensive online trading platform was operated under the name ‘Amazon’, on which goods were offered and sold on a large scale. It is also well known that logistics services are offered under this trademark, including the storage and shipment of goods via the company’s own logistics centres and vehicle fleets. Referring to BPatG GRUR-Prax 2012, 555 – ROSSEN/ROCHER and BPatG BeckRS 2016, 10067 – STUDIO 7/Pro 7, the Trademark Division stated that these facts were assumed to be known to the authorities, and that the EUIPO’s different procedural guidelines did not prevent this as they are not binding on the German PTO. The German PTO conducts proceedings in accordance with national regulations, particularly the Trademark Act (MarkenG).
Conclusion:
In this case, the Trademark Division took a position on both formal and substantive legal peculiarities. Regarding the objection of abuse of rights, the Office reiterated that, due to the general interest in purging the trademark register of unused trademarks, conduct contrary to good faith on the part of the applicant would only be considered in special circumstances. Previous trademark applications for identical signs, combined with an applicant’s request to participate in an out-of-court settlement, are insufficient for this purpose.
The Trademark Division also confirmed that submitting comprehensive evidence of use is not sufficient to prove use that preserves rights. The trademark proprietor must prepare the evidence accordingly, explaining to the Office exactly what it shows and its relevance to the genuine use of the trademark.
As expected, the EUIPO’s procedural guidelines are not binding on the Office in proceedings before the German PTO. In this case, it was also possible to demonstrate use that preserves the proprietor’s rights with regard to services that were not declared revoked.
