BPatG: Revival of the SIMCA trade mark is permissible and not in bad faith
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The Federal Patent Court (BPatG) has decided in a current cancellation proceeding, decision of 12 April 2011, ref.: 28 W (pat) 13/10, in which we successfully represented our client, that the trademark ‘Simca’ registration number 307 58 265 will not be cancelled.
In the decision, the BPatG states in particular that the requirements of Section 50 (1) in conjunction with Section 8 (2) no. 10 MarkenG for a cancellation request are not met. § Section 8 (2) No. 10 MarkenG for a cancellation request are not met, as the defendant was not acting in bad faith.
What had happened before?
In the proceedings cited here, PSA Peugeot Citroen initially initiated cancellation proceedings against the owner of the ‘Simca’ trademark. When this remained unsuccessful, PSA Peugeot Citroen lodged an appeal with the BPatG.
PSA Peugeot Citroen justifies the cancellation claim primarily on the grounds that
‘it has owned the IR trade mark ‘SIMCA’ since 1959 and the French trade mark ‘SIMCA’, which has been registered since 1990. Although these had no longer been used in recent years, they had nevertheless been maintained. Furthermore, the degree of recognition of the trade mark ‘SIMCA’ must also be taken into account in this context. The trade mark proprietor had worked for the applicant’s German subsidiary in the 1990s and then applied for the trade mark at issue shortly after the termination of the mutual contractual relationship.’
It was argued in our client’s favour that, contrary to PSA’s assertion, the conditions for cancellation of the trademark do not exist:
‘The applicant already lacks a vested right worthy of protection in relation to the sign ‘SIMCA’ in Germany, as the sign has not been used by the applicant for many years. The trade marks ‘SIMCA’ and ‘Sunbeam’ had already been replaced by the applicant with the trade mark ‘Talbot’ in 1979. A revival of the ‘SIMCA’ mark was not under discussion at the time of the application for registration of the contested sign.’
and
‘Although he had not pursued any immoral objectives with the trade mark application, the applicant has since tried everything possible to force him out of his rightful position as trade mark proprietor. He was already using the trade mark for the sale of electrically powered bicycles via his online shop and was also planning to use the trade mark for a special segment of the motor vehicle market, specifically for the production of niche vehicles. In this respect, he does not intend mass production, but rather the production of so-called fun and functional cars in small quantities.’
The Federal Patent Court has followed the argumentation put forward by our law firm and has clearly worked out in the reasons for the decision why a previous use of the respective disputed sign does not necessarily mean that the new application for a trade mark formerly used by another trade mark proprietor is made in bad faith.
Here, the requirements for a trade mark application in bad faith are clearly stated by the BPatG:
‘The requirements for an application in bad faith are not already fulfilled if the applicant is aware at the time of filing that a third party is using or has previously used the same or a similar sign for the same or confusingly similar goods. Rather, additional circumstances must always be present in order for a trade mark application to appear to be immoral within the meaning of Section 8 (2) No. 10 MarkenG. An applicant acts in bad faith, for example, if his intention from the outset is to have a trade mark protected for himself without legitimate self-interest in order to be able to disturb the property of a third party in this way (vgl. BGH WRP 2009, 1104, Rdn. 16 – Schuhverzierung; sowie Ströbele in Ströbele/Hacker, MarkenG, 9. Aufl., § 8 Rdn. 547 m. w. N.). In order to assess whether such an unfair practice has occurred, the highest courts have ruled that consider all relevant factors of the individual case (vgl. EuGH, a. a. O., Rdn. 37 – Goldhase). The following aspects are of particular importance: Did the sign in question have a vested right worthy of protection at the relevant time for the assessment of bad faith? If the answer is in the affirmative, was the applicant aware of this vested right at the relevant time or should he have been aware of it under the circumstances? If this is also the case, can it be established that the applicant intended to interfere with this vested right in an immoral manner or can justification for his actions be established?“ [Emphasis added by the undersigned]
After the following subsumption, the judges came to the conclusion that bad faith did not exist in this case:
‘Based on the aforementioned criteria, bad faith on the part of the trade mark proprietor cannot be established in the present case. Thus, there is already a lack of vested rights of the applicant in the designation ‘SIMCA’ worthy of protection. The question of whether foreign use is to be considered as a vested right worthy of protection (vgl. hierzu Ströbele, a. a. O., § 8 Rdn. 553)This is not the case here because the trade mark ‘SIMCA’ was no longer used as a trade mark abroad long before the application for the contested sign was filed. For this reason alone, the requirements for acting in bad faith on the part of the trade mark proprietor are not met. The fact that the trade mark proprietor is already using its trade mark for some of the protected goods also speaks against an immoral intention to cause detriment on the part of the trade mark proprietor. According to his homepage, he sells bicycles under the trade mark, so that securing this position by acquiring a property right is a comprehensible measure to promote his own competition and not an unfair practice. How concrete the plans for the production of niche vehicles described by him – which the applicant denies in general terms – actually are, is no longer relevant in this situation, since the trade mark proprietor does not have to use his trade mark for all goods claimed with it in order to refute unfair motives. The applicant’s IR trade mark 218 957 and the German trade mark 30 2008 037 708, which it has newly registered, are also registered not only for motor vehicles and bicycles, but also for paper, clothing and shoes or for aircraft and watercraft and thus for goods for which it is undisputed that use has neither ever been made nor is specifically intended.’
The clear wording of the court’s decision should also be emphasised, which shows that the use of an (old) designation in the sense of a ‘revival’ of a designation that was previously used by a third party is not per se an abuse of rights or anti-competitive, but even corresponds to the legislative ideas and conforms to trademark law:
‘On an objective assessment of all the circumstances of the present case, there are no reliable indications that the trade mark application was not primarily intended to promote the trade mark proprietor’s own economic activity, but to unfairly hinder the applicant for cancellation (vgl. hierzu BGH GRUR 2008, 917, Rdn. 20 – Eros; BGH GRUR 2008, 621, Rdn. 32 – Akademiks). The fact that the trade mark proprietor is proceeding on the basis of its trade mark rights and has filed an opposition against the applicant for cancellation’s word mark ‘SIMCA’, which has a younger priority, is in the nature of trade mark law and is ultimately the motivation for every trade mark acquisition, which is why this aspect in itself cannot be regarded as an indication of unfair intentions. The fact that the applicant previously had a corresponding vested right is also not sufficient in this respect, as trade mark law recognises neither novelty as a prerequisite for protection nor a right of prior use by third parties. The applicant has also not asserted that at the relevant time there were already concrete plans to use the trade mark ‘SIMCA’ on the German market again in the foreseeable future. However, the mere option of wanting to be able to use the designation ‘SIMCA’ again at some point in the future does not constitute a vested right worthy of protection any more than a previous reputation of the trade mark (vgl. hierzu auch BPatG PAVIS PROMA 27 W (pat) 79/06 – Pan Am). Ultimately, the applicant’s position amounts to a claim to permanently secure a trade mark previously used by it without using it in any way. However, this claim has no basis in the MarkenG. Rather, the legislator’s intention in imposing the obligation to use a trade mark pursuant to Section 26 MarkenG was precisely to ensure that unused signs are removed from the register as soon as possible in order to enable other traders to use these or similar signs themselves or to register them for themselves (vgl. BGH GRUR 2000, 890 – Immunine/Imukin). If a market participant takes up a previously used designation or ‘revitalises’ it for itself, this is generally in line with the legislator’s ideas and cannot therefore be regarded as an abuse of rights or anti-competitive in itself. Moreover, trade mark law does not require an independent, creative achievement as a prerequisite for the granting of trade mark rights, unlike is the case in patent law, for example.’
Conclusion:
Essentially, this decision shows that it is always a question of the individual case as to whether a trade mark applicant is acting in bad faith when using an ‘old’ sign. It is also clear that the earlier – i.e. prior – use of a sign does not always lead to a claim to use the trade mark permanently:
‘Ultimately, the applicant’s position amounts to a claim to permanently secure a trade mark previously used by it without using it in any way. However, this claim has no basis in the MarkenG.’
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