Defense of non-use

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The objection of non-use is a means of defense of a mark user or owner of a trademark with a younger seniority against an attack by the owner of a trademark with an older seniority.

Legal dogmatic basis

Legally dogmatically, the objection of non-use is based on the principle of inadmissible exercise of rights that applies throughout the legal system . This states that it is an abuse of law to assert rights against others based on a formal but not materially tenable legal position and thereby cause damage to them. The principle of inadmissible exercise of rights also applies to trademark law. Applied to this, it means that attacks based on a registered trademark are to be regarded as illegal if the trademark should only represent a formal right. The trademark law has created the criterion of so-called right-preserving use as a prerequisite for avoiding the mere formal character of a registered trademark.

The principle of right-preserving use

The legal basis for the objection of non-use is therefore the requirement of legal use . This is standardized by Section 26 of the Trademark Act (MarkenG). Paragraph 1 of the aforementioned provision reads: “Insofar as the assertion of claims from a registered trademark ... depends on the trademark being used, it must be used seriously in Germany by its owner for the goods or services for which it is registered unless there are legitimate reasons for non-use ”.

Use by the trademark owner

The wording of Section 26 (1) of the Trademark Act indicates that the older trademark must have been used by its owner . However, according to Section 26 (2) of the Trademark Act, “the use of the trademark with the consent of the owner ... is considered to be use by the owner”. This exception is intended in particular for use by the licensee of a trademark license agreement .

Use for the related goods and / or services

It is not sufficient to use the mark for any goods or services. Rather must rank earlier mark for those goods or services have been used for them in the trademark register is registered to the a right-sustaining made use of legal requirements to meet (see above). If the mark has only been used for part of the associated goods or services, there is only legal use of the mark with regard to the corresponding part of the list of goods and services.

Use in Germany

The ranking earlier mark must MarkenG prompted by the § 26 para. 1 (see above) in the domestic have been used. “Inland” is the area of ​​application of the German trademark law, ie the territory of the Federal Republic of Germany . It follows from this that the exclusive use of the mark abroad cannot in principle be a legal preservation within the meaning of (i. S. d.) § 26 MarkenG. However, Section 26 (4) of the MarkenG states that “use in Germany ... also includes the affixing of the mark to goods or their presentation or packaging in Germany”, “if the goods are intended exclusively for export”.

Serious use

In order to meet the legal requirements for legal use, it is not sufficient in particular to use the trademark only for appearances, for example to circumvent the legal obligation to use it. Rather, serious actions must be given. Sufficient to fulfill the criterion of seriousness of use, according to constant rulings of the highest court, only those acts of use that correspond to the purpose of the compulsory use in terms of type, scope and duration, namely to prevent the assertion of merely formal trademark rights. Whether an act of use is to be assessed as "serious" in a specific individual case depends on the respective circumstances. Here you have to orientate yourself on what is customary and economically appropriate. As a rule, a noticeable duration, as well as a certain extent of the actions of use, must be demanded. In any case, the actions of use must be "functional", i. H. The brand must be able to identify the marked products and to distinguish them from the same or similar products from a different origin.

Deviations from the registered form of the trademark

If the senior trademark is not used in the form in which it is registered in the trademark register, but in a form that deviates from this, it can nevertheless be used in a way that preserves the rights. According to Section 26, Paragraph 3, Clause 1 of the Trademark Act, such use is deemed to preserve the right “insofar as the deviations do not change the distinctive character of the trademark”. The aforementioned standard "also applies if the trademark is also registered in the form in which it was used".

Exception to the requirement of use

In accordance with Section 26, Paragraph 1, last half-sentence of the Trademark Act, use is not required for the preservation of the rights of a registered trademark , if “there are legitimate reasons for non-use”. It is incumbent on the trademark owner to present such "legitimate reasons" if necessary. A justification for non-use comes primarily into consideration if use of the mark would be unreasonable. The special circumstances of the specific individual case must be taken into account here. Acts of force majeure such as natural disasters, war, the consequences of war and the like, but not general economic difficulties of a company, for example as a result of wrong entrepreneurial decisions, are to be recognized as legitimate reasons for non-use.

Use cases of the non-use objection

Opposition proceedings against the registration of a later trademark

If the owner of a struggling earlier registration (opposition mark) against registration of a later mark contradiction ( § 42 Trademark Act) because of (alleged) priority rights (see. § 9 , § 10 and § 11 rises Trademark Act), so you can him the proprietor of a later Mark the objection of non-use of the opposing mark, Section 43 (1) sentence 1 MarkenG. In this case, the aforementioned provision stipulates that the opponent must make the legal use of the opposition mark "within the last five years before the publication of the registration" of the challenged younger "mark credible", provided that the older opposition mark "at the time of publication of the registration the 'younger trademark' ”“ has been registered for at least five years ”.

"If the period of five years of non-use ends after the publication of the registration, the opponent, if the opponent disputes the use, has to provide credible evidence that the mark was used within the last five years prior to the decision on the opposition pursuant to Section 26 is ”, Section 43 (1) sentence 2 of the Trademark Act.

“Only those goods or services for which the use has been made credible are taken into account in the decision”, Section 43 (1) sentence 3 MarkenG. This means that the objection of non-use only applies to those goods or services of the opposing mark for which the opposing party is unable to substantiate legal use (or justify non-use) within the meaning of Section 26 MarkenG (see above).

Cancellation proceedings due to older trademark rights

Pursuant to Section 55 (1) of the Trademark Act, the person registered as the owner of a trademark (or his legal successor ) can be sued for deletion because of the existence of older rights ( Section 51 Trademark Act). The owner of the attacked later mark is in this case as a defense, the non-use defense available: "If the action is levied on cancellation by the owner of the registered mark with earlier priority, he has in defense of the defendant to prove that the mark within the last five Years prior to the commencement of the action in accordance with Section 26, provided that it has been registered for at least five years at that time ”, Section 55 (3) sentence 1 of the Trademark Act.

"If the period of five years of non-use ends after the action has been brought, the plaintiff must, on objection by the defendant, prove that the trademark has been used within the last five years before the end of the oral hearing in accordance with Section 26", Section 55 para. 1 sentence 2 MarkenG.

In this respect, the prerequisites for the non-use objection to take effect are the same as the corresponding prerequisites for opposition proceedings (Section 43 (1), sentences 1 and 2 of the Trademark Act, see above).

"If the trademark with an older seniority was already registered for at least five years on the day of the publication of the registration of the trademark with a younger seniority, the plaintiff must also prove, on objection by the defendant, that the registration of the trademark with an older seniority on that day was not pursuant to § 49 para. 1 MarkenG could have been deleted ”, Section 55 para. 1 sentence 3 MarkenG.

“Only those goods and services for which use has been proven are taken into account in the decision”, Section 55 (1) sentence 4 of the Trademark Act. In terms of its prerequisites, the aforementioned provision again corresponds exactly to the regulation in opposition proceedings (Section 43 (1) sentence 3 of the Trademark Act, see above).

Trademark infringement proceedings

When someone sends a sign, e.g. B. a business name ( company name , work title , (see. § 5 MarkenG)) or a trademark is used to identify goods or services, the owner of a brand that is identical or similar to the more recent sign can claim against the user of the sign for omission and Compensation for damages ( § 14 MarkenG), for destruction and recall of goods ( § 18 MarkenG), for information ( § 19 MarkenG), for presentation and inspection ( § 19a MarkenG), for securing claims for damages ( § 19b MarkenG) and for the announcement of the verdict ( § 19c Trademark Act). The owner of the earlier trademark can assert these claims in court. However, he is not entitled to the claims if the senior “trademark has not been used in accordance with Section 26 within the last five years before the assertion of the claim for the goods or services on which he relies to justify his claim, provided the trademark has been registered for at least five years at this point in time ”, Section 25 (1) of the Trademark Act. In this case, the defendant (user of the trademark) has the option, in accordance with Section 25 (2) of the Trademark Act, to defend the claimant (owner of the earlier trademark) by raising the objection of non-use. The prerequisites of Section 25 (2) of the Trademark Act for the plaintiff's responsibility to provide evidence that the earlier trademark has been used in a manner that preserves the rights largely correspond to the provisions of Section 55 (3) of the Trademark Act in the event of an action for cancellation against the owner of a later registered trademark (see above) .

See also

Individual evidence

  1. ↑ Gerhard Köbler , Legal Dictionary, 3rd edition, Munich 1983, p. 235, keyword "legal abuse"
  2. ^ Karl-Heinz Fezer , Markenrecht, 4th edition, Munich 2009, Rn 539 on § 14 MarkenG
  3. ↑ Fezer (individual ref. 2), marginal number 64 on § 26 MarkenG
  4. ↑ Federal Court of Justice (BGH), in: Journal " Commercial Legal Protection and Copyright " (GRUR), pp. 50, 52
  5. ↑ So z. B. BGH, in: GRUR 1978, p. 46; GRUR 1979, p. 707, and GRUR 1980, p. 289
  6. ↑ BGH in Zivilsachen (BGHZ), vol. 70, pp. 143, 149
  7. ↑ Fezer (individual ref. 2), marginal number 13 on § 26 MarkenG
  8. ↑ See the justification for the Trademark Act, Bundestag printed paper 12/6581 of January 14, 1994, p. 84.
  9. ↑ Fezer (individual remarks 2), marginal number 42 on § 26 MarkenG

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