In opposition proceedings concerned, the opponent drew upon the older registered word mark “Dorzo”. The proprietor of the contested and more recent trademark pleaded for non-use pursuant to § 43 sect.1 Trademark Act. As prima facie evidence for its use, the opponent submitted that his licensee had generated significant revenue with the trademark. His licensee had used the trademark in the past five years prior to the ruling by the German Federal Patent Court as follows: “Dorzo-Vision®”, “DorzoComp-Vision®” and “DorzoComp-Vision® sine”.
The trademark “Dorzo” was thus used with addenda in commercial practice. The designation used thus deviated from the registered trademark. Pursuant to § 26 sect. 3 Trademark Act, a registered trademark is deemed being used even if said trademark is used in a shape that deviates from the registration if the deviations do not alter the distinctive character of the trademark. The distinctive character of a registered trademark is not altered if the relevant public still generally equates the mark used in a deviating shape with the registered trademark — that is, if the relevant public perceives the shape used as still the same trademark (cf. inter alia BGH GRUR 2013, 840 margin number 20 – PROTI II, with other references.). If the registered trademark is used with additions, as in the present case, a use preserving the rights in the mark is (still) to be assumed if the relevant public perceives the designations in question as separate and thus independent trademarks. If, however, the relevant public perceives the marks used as dependent components of a new uniform trademark, the proprietor of the trademark is not using the component of the new mark that is registered as a trademark in a way that preserves his rights.
The opponent had argued in particular that the registered trademark “Dorzo” played an independent distinctive role in the designations used “Dorzo-Vision®”, “DorzoComp-Vision®” and “DorzoComp-Vision® sine”, which would be sufficient to show use of the registered trademark via the designations used.
According to the author, the trademark “Dorzo” does indeed occupy an independent distinctive role in the designations used (cf. inter alia Ströbele/Hacker, regarding § 9 margin note 452 et seq., with other references), which means that considering the identical nature of the goods in this case, there is a likelihood of confusion between the registered trademark “Dorzo” and the designations used of “Dorzo-Vision®”, “DorzoComp-Vision®” and “DorzoComp-Vision® sine”.
Regarding this argument, the BGH stated that the legal concept of the independent distinctive role needs to be analysed only in case of an infringement. For trademark uses in a different shape, however, the court holds that the independent distinctive role is irrelevant. Rather, what matters is whether the registered trademark is perceived as “independent trademark” in the combined mark used (registered trademark & addition). According to the court, this is not the case here. The relevant public perceives the designations “Dorzo-Vision®”, “DorzoComp-Vision®” and “DorzoComp-Vision® sine” as uniform trademarks. For one thing, the designations are hyphenated, and for another thing, the superscripted “®” was not added after the opposing trademark “Dorzo”, but after the combined designations. According to the court, this points toward a uniform trademarking and speaks against the assumption of two distinct trademarks. The relevant public usually interprets the addition of “®” as an indication that there is a trademark with exactly that name. Thus, since the relevant public does not perceive the registered trademark as independent marks in the full designations used here, the combined designations used here alter the distinctive character of the registered trademark. The opponent did thus not provide credible evidence concerning the use of his registered trademark, with the consequence that his opposition had to be rejected.
Conclusion: When using registered trademarks in commercial practice, additions should be avoided where possible. Care should be taken in particular when adding additional word elements to a registered trademark; however, adding graphical elements is less likely to alter the distinctive character of a registered word mark (cf. Ströbele/Hacker, in § 26, margin note 163 et seq.). In the opinion of the author, the present case would likely have been decided differently if the opponent or his licensee, respectively, had used the registered trademark in commercial practice as follows: “Dorzo® Vision”. In that case, in the author’s view, the relevant public would perceive the registered trademark as an “independent mark” even in the combined designations. If the additional word – here: “Vision” – had been registered as a trademark, it would be expedient to use the two marks as follows in commercial practice: “Dorzo® Vision®”. In that case, the relevant public would perceive each of the two trademarks as an independent trademark (cf. inter alia BGH GRUR 2014, p. 662 et seq., margin note. 25 – Probiotic; BGH GRUR 2013, p. 840 et seq., margin note 35 – PROTI II).
