While it is not possible to completely shut out other market participants from indications of origin, a trademark’s reputation must not be unduly exploited according to the Oberlandesgericht (OLG) Stuttgart, the Higher Regional Court of Stuttgart.

Trademark protection is an important issue for a lot of businesses that can potentially prove to be challenging when it comes to indications of origin, as these cannot be completely off limits to others. That said, we at the commercial law firm MTR Rechtsanwälte note that other market participants cannot simply take unfair advantage of the reputation of a trademark that has a designation of origin as one of its characteristics.

This stems from a ruling of the OLG Stuttgart from July 25, 2019 (Az.: 2 U 73/18). A farmers’ cooperative with around 1450 farms as members had its pork and beef produce protected by including the name of the location in the trademark’s name. The members were allowed to use the collective trademarks provided they respect specific criteria as to how the animals were reared, fed, kept, etc.

A meat-processing business from the region in question was supplying its meat products under the same name, yet it was not a member of the cooperative. The latter’s action claiming its trademark had been infringed was subsequently successful.

The OLG Stuttgart held that while indications of origin or descriptive designations that form part of a collective trademark can be used by persons other than the proprietor of the trademark, this must not be contrary to accepted ethical principles or honest practices in industrial or commercial matters. This was found to be the case here.

The Court ruled that in using designations that perfectly matched the collective trademarks, the defendant had failed to make it clear that it was not a member of the cooperative. This was said to give rise to the risk of consumers associating the defendant’s products with those of the cooperative. The OLG Stuttgart went on to state that the use of the two designations in this case constituted unfair exploitation of the reputation the collective trademarks enjoyed in the region.

Experienced lawyers can advise on issues pertaining to trademark law; from registration and trademark protection, to asserting legal claims in response to violations.

https://www.mtrlegal.com/en/legal-advice/ip-law/trademark-law.html