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OLG Hamm on using a registered trademark

June 2019 - Intellectual Property. Legal Developments by GRP Rainer LLP.

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Anyone registering a trademark needs to actually use it. According to a ruling of the Oberlandesgericht (OLG) Hamm, the Higher Regional Court of Hamm, it may be sufficient to use a wordmark as part of an advertising slogan (Az.: 4 U 42/18).

Anyone who has registered a trademark ought to actually use it, otherwise it may be declared to be revoked or cancelled on request. According to section 26 of the German Trademark Act (Markengesetz), asserting rights arising from a registered trademark or upholding its registration depends on it having been seriously used by its proprietor for the goods or services in respect of which it is registered, unless there are legitimate grounds for non-use. We at the commercial law firm GRP Rainer Rechtsanwälte note that failure to seriously use the trademark in question following registration may result in its cancellation.

For a wordmark to be considered to have been seriously used, it may be enough for the proprietor to use it as part of an advertising slogan, even if the proprietor has not named any products after the trademark. That was the verdict of the Oberlandesgericht Hamm in a ruling from January 24, 2019 (Az.: 4 U 42/18).

The OLG Hamm had to rule on a dispute between a hobby brewer and a brewery. The brewery had registered a term as a wordmark and used it in advertising slogans since the 1960s without interruption or dispute. It was this type of use that was the deciding factor in the German Patent and Trademark Office’s (Deutsches Patent- und Markenamt) decision to approve an application for registration in the trademark register in 2010. However, the hobby brewer requested that the trademark be cancelled, noting that the term was being used not for one of the brewery’s beers but instead only for an ingredient; this meant that it was not being used in manner that preserves its rights.

While the claim was successful at first instance before the Landgericht Bochum, the Regional Court of Bochum, the OLG Hamm dismissed it. The Court stated that the brewery had featured the slogan in its advertising for decades, and that it was on the basis of this type of use that the mark had been registered in the trademark register. It went on to say that if this type of use continues after registration in the trademark register, this should be enough to preserve the wordmark. The OLG Hamm therefore concluded that a request for cancellation of the wordmark could not be entertained.

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