Traffic enforcement

from Wikipedia, the free encyclopedia

Traffic enforcement is the prerequisite for the - subsequent - acquisition of the registrability of a trademark application that is not actually registrable .

Legal basis

The legal basis for the possibility of enforcing a trademark application is Section 8 (3) of the Trademark Act. According to this provision, Section 8 (2) No. 1, 2 and 3 Trademark Law does not apply if the trademark is in the prior to the decision on the registration as a result of its use for the goods or services for which it has been applied for has enforced the relevant public.

The absolute obstacles to protection of Section 8 (2) No. 1, 2 and 3 MarkenG

Section 8 (3) of the Trademark Act severely restricts the possibility that a trademark application that is not actually registrable can still be registered - through public enforcement - and thus be registered as a trademark in the trademark register at the German Patent and Trademark Office . The provision stipulates that only part of the total obstacles to protection listed in Section 8 (1) and (2) No. 1 to 10 of the Trademark Act can be overcome by enforcement. These are: a) the lack of any distinctive character (Section 8, Paragraph 2, No. 1), b) descriptive information (Section 8, Paragraph 2, No. 2) and c) generic names (Section 8, Paragraph 2, No. 3).

The lack of any distinctive character

The highest court rulings understand distinctive character in the sense of § 8 Abs. 2 Nr. 1 MarkenG as the inherent suitability of a trademark to be perceived by the public as a means of differentiating between goods and services of a company compared to those of other companies. The wording of this definition largely follows the legal definition of Section 3 (1) of the Trademark Act. However, it should be noted that the above-mentioned standard speaks of suitability for differentiation . This is a general ( abstract ) ability of a label to distinguish goods or services from one company from those of other companies. This abstract ability to differentiate, if it is missing, cannot be replaced by traffic enforcement. According to Section 8 (3) of the Trademark Act, only the lack of specific distinctive character of the sign with regard to the goods or services it specifically encompasses can be overcome by means of traffic enforcement . If the specific ability of the registered trademark in question is missing , the obstacle to protection (obstacle to registration) of Section 8 (2) No. 1 of the Trademark Act applies.

Descriptive information

Under the collective term “descriptive information”, in accordance with Section 8 (2) No. 2 MarkenG, signs or information are summarized that are used in traffic to designate the type, quality, quantity, destination, value, geographical origin, time of Manufacture of the goods or the provision of the services or to designate other characteristics of the goods or services. In principle, there is a need for market participants to keep such descriptive information free.

Generic names

Section 8, Paragraph 2, No. 3 of the Trademark Act understands this to mean labels that consist exclusively of signs or information that have become common in common linguistic usage or in honest and constant traffic conventions for the designation of goods or services. In principle, the aforementioned signs or information as well as the "descriptive information" explained above are subject to a requirement to be kept clear.

Preconditions of § 8 Abs. 3 MarkenG in detail

use

The obstacles to registration and protection listed above (of Section 8 (2) No. 1, 2 or 3 MarkenG) must have been overcome by using the (registered) trademark for the registered goods or services. This must be a use of the mark as a mark in market competition, in which all functions of the mark that are significant under trademark law can be realized. Examples: Use in product sales as a distinguishing mark and / or in product or image advertising of the company. The duration of use is also essential , whereby use of the trademark over a longer period of time is required.

Enforcement in traffic

As a result of its (serious) use (see above), the registered trademark must have established itself as a distinguishing mark that identifies products or services. In fact, the implementation of the mark as a distinguishing mark for the identification of company products or services in transport , i.e. in market competition, must have been acquired.

Product reference

It is not enough that the trademark applied for has established itself in the market for any goods or services. Rather, the traffic enforcement must have been carried out exactly for those goods or services for which the registration of the trademark is requested. Accordingly, it is also not sufficient if the evidence of traffic enforcement for goods or services is provided in the area of ​​similarity of the goods or services registered.

Participating public

Ultimately, the trademark applied for must have prevailed "in the relevant public". Participating public within the meaning of Section 8 (3) of the Trademark Act are those circles in which the sign “is to be used” or “will have an impact”. Accordingly, the relevant public is primarily the end customer of the goods or services concerned. However, not only the actual buyers, but also all potential consumers of the goods or services concerned come into consideration. Trade circles are also part of the involved public. Traffic enforcement exclusively in this category of stakeholders and not also with the end users is, however, regarded by the above-mentioned case law as insufficient.

It is also not sufficient for proof of public enforcement within the meaning of Section 8 (3) of the Trademark Act if the registered sign has only prevailed in a comparatively small part of the public involved. Rather, the case law basically calls for a share of at least 50% of the public involved, which can, however, be well above this in the specific individual case to be decided.

See also

Individual evidence

  1. ↑ BGH . In: Journal of Commercial Legal Protection and Copyright (GRUR) 1995, p. 408 - PROTECH
  2. ↑ K.-H. Fezer: trademark law. 4th edition, Munich 2009, p. 162
  3. ↑ K.-H. Fezer: trademark law. 4th edition, Munich 2009, (individual ref. 2)
  4. ↑ BGH. In: GRUR 1959, p. 599 f - teapot
  5. ↑ So already A. Baumbach, W. Hefermehl: Trademark law. 12th edition, Munich 1985, p. 360, marginal note 108 on Section 4 (3) WZG old version
  6. ↑ K.-H. Fezer: trademark law. 4th edition, Munich 2009, (individual references 2), p. 386
  7. ↑ BGH. In: GRUR 1986, p. 894 f - OCM
  8. ↑ BGH. In: GRUR 1990, p. 360 f - Apropos Film II

literature

  • K.-H. Fezer: trademark law. 4th edition, Munich 2009
  • A. Baumbach, W. Hefermehl: Trademark law. 12th edition, Munich 1985
  • U. Dreiss, R. Klaka: The new trademark law: creation and expiry, proceedings, collision and judicial enforcement. Bonn 1995