In order to preserve rights, a registered trademark should always be used in the form in which it is entered in the register. Deviations are possible as long as this does not change the "distinctive characteristics" of the trademark.
Whether there is a change in the "distinctive character" is always a question of the individual case and, in case of doubt, must be decided by the trademark office or the trial judge. According to case law, the assessment generally depends on whether the relevant public can still easily recognize the same trademark in the form used.
Different use of a word mark
Example: if the registered word mark "Kornkammer" is used in separate spelling and in lower case ("korn kammer"), a change of the distinctive character is not to be assumed.
In the case of word marks, changes in capitalization, the use of a different font or the enlargement of initial letters are harmless. However, the addition and omission of word components or figurative elements is problematic.
Omission of word elements
Example: if only "Photo Prost" is used instead of the registered word mark "Der Photo Prost", it can be assumed that the right has been preserved.
Adding word elements
If word marks are supplemented with additional word elements, the question must always be asked whether the additional word elements have an independent distinctive (individualizing) effect.
Example: If the registered trademark "Ysat" is used in the form "Aconitysat", a deviation altering the distinctive character is to be assumed.
If the word element "Bit" is supplemented with the slogan "Bitte ein Bit", the word element "Bit" remains the relevant distinctive sign and it can be assumed that the use preserves the rights.
Adding image components
If figurative elements are added to a word mark, this generally changes the distinctive character, as the type of mark changes. The situation is different only if the figurative element merely illustrates the meaning of the word mark or, if applicable, the figurative element is clearly distanced (set off) from the word element so that the word and the figurative element cannot be perceived as a "unit".
Deviating use of figurative and/or word/figurative marks
The aforementioned principles also essentially apply to figurative or word/figurative marks. Here, too, care must be taken to ensure that the defining elements of the trademark continue to exist in the context of use that preserves rights.
Examples of the change in the characteristic feature:
Examples of no change in the defining characteristic:
Do you have any questions about the rights-preserving use of a trademark? Have you received an objection or do you want to file an objection? Please send us an inquiry to service@recht24-7.de and we will send you a trademark consultancy quote immediately.
