Dipl. Biotechnol. Vanessa Bockhorni
Principally, everybody can register a trademark, should then, however, also start using the mark after five years, i.e. after expiration of the so-called “five-year grace period”.
Nevertheless, if there is a lack of intention to use and the applicant has only registered the trademark as a mere speculative trademark or stock trademark, he cannot derive any rights from this mark against others. This is the opinion of the Higher District Court based in Frankfurt am Main according to its judgement dated February 7, 2013. In the view of Higher District Court, there is an abusive enforcement of claims to cease and desist from a registered “speculative” trademark.
In the present case, a trademark agency sent out a warning letter based on their trademarks, whereupon in the legal proceedings, the recipient of the warning letter raised an objection of abusive use. During the proceedings, the agency pointed out that it intends to market the self-developed trademarks to future customers. However, before the Court, the agency could not substantiate a regular marketing of the trademarks, which is why the Court concluded that the trademarks where only registered and administered for the goal of hindering third parties.
According to the Higher District Court, the registration of a respective “stock trademark” is not detrimental in itself nor does it justify an abusive use in itself. However, it is considered abusive when the applicant (e.g. a trademark agency) has registered the trademark as a “stock trademark” in order to keep this trademark on hand for future customers without the service of the trademark agency being based on a comprehensible business principle. In this case, a stock trademark is to be classified as a so-called “speculative trademark” only serving for hindering third parties by enforcing claims (e.g. claims to cease and desist) based on the trademark. In case a claim to cease and desist based on such a trademark should be enforced, the opponent can raise an objection of abusive use.
Higher District Court Frankfurt am Main, (file no. 6 U 126/12)
Definition “grace period”:
The grace period was set up to grant the trademark owner time for initiating the use of his trademark. It is often the case that the products are still under development or a service provider is in the formation phase when a trademark name is chosen. Therefore, at this point in time, the trademark cannot yet be arranged on the goods or the packaging or be used on e.g. stationery for marking the service.
It often becomes problematic when the owner of a more than five year old trademark intends to take action against a younger trademark application by means of filing an opposition and intends to “attack” the younger trademark. In this case, the owner of the younger “attacked” trademark can raise the so-called “objection for non-use” whereupon the owner of the earlier trademark is forced to prove use of his trademark. He will be successful with his proof when, by means of figures of turnover and/or units, he can document that he used his trademark domestically in the registered form for the goods registered in the list of goods for a legally set timeframe. The proof that the goods where actually tagged or “marked” with the trademark is essential here, i.e. that the trademark itself was attached to or arranged on the packaging.
Author: Dipl. Biotechnol. Vanessa Bockhorni (Patent Attorney), Update 2/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
