We are sometimes asked if the use of a common first name such as Paul, Frank or Suzie can infringe on another company’s trademark. The question typically arises in the context of fashion retail where traders often use male or female first names to identify specific products or designs within their collection.
Surprisingly to many of our international associates, the general answer is yes.
German trademark law allows the protection of first names without imposing any specific requirements as to their distinctiveness, prior use, or recognition in commerce. In particular, the availability of trademark protection for first names is not limited to the applicant’s own personal name, nor does it require the showing of secondary meaning. In fact, many common and not so common first names are protected by trademark registrations in Germany, particularly in the relevant Nice Class 25.
Most German courts have held that using a trademarked first name as a product identifier may be infringing even when the name is used together with the manufacturer’s own brand. In what is arguably the most prominent case to date, the Higher Regional Court of Frankfurt (reference 6 U 141/14) found the combination “Marc by Marc Jacobs Wollmantel Sam“ to infringe on the plaintiff’s word mark “SAM“. The Court did not doubt that consumers would recognize “Marc Jacobs” as a well-known fashion brand. However, consumers were likely to view “Marc Jacobs” as the umbrella brand while perceiving “Sam” as an independent second trademark. This, the Court ruled, amounted to an infringement of the plaintiff’s rights. Most German courts are still following in the footsteps of this precedent.
Now there is new hope for fashion retailers from the District Court of Munich. In a recent decision (reference 33 O 19313/16), the Court granted declaratory judgment to a trader who had been accused of infringing the mark “SAM” by using the name in connection with its own brand “EUREX”. The Court acknowledged that there is a long-standing practice in the fashion industry of using male and female names as product identifiers alongside the main brand. The Court stressed, however, that this type of use served to differentiate between the products of the same manufacturer as opposed to distinguishing between goods from different sources of origin. Accordingly, consumers were unlikely to perceive a male or female first name, when used in this particular context, as an independent indication of origin.
From a practitioner’s point of view, the issue is not finally settled and it would be too early to draw any final conclusions. The case law shows, however, that whether or not the use of male or female first names as product identifiers amounts to trademark infringement depends on the circumstances of the individual case. While fashion companies should remain watchful when using personal names as product identifiers, a number of defense options may be available to them when infringement accusations are made.
If you have any questions, please contact the author of this article at boesling@boesling.com or your regular boesling IP contact.
Dr. Thies Bösling, LL.M. (San Diego)
Rechtsanwalt | Partner
boesling IP Rechtsanwälte GbR
Große Elbstraße 86
D-22767 Hamburg, Germany
Phone: + 49 40 5247624-0
Fax: + 49 40 5247624-25
boesling@boesling.com
www.boesling.com
