A reminder of the ugly effects of cross-border transport in German trademark law
A lawsuit between the owners of the American brand Ugg and an Australian leather shoemaker, who apparently sold and shipped 13 pairs of handmade Australian ugg boots to the United States, recently received wide media coverage. . While media reports have mostly focused on whether US trademark protection should be allowed for the term ‘ugg boots’ (that term being a generic term for the type of footwear marketed in Australia), the case also illustrates the risks and opportunities created by global access to products online. In this context, a recent decision of the Higher Regional Court in Frankfurt (6 U 273/19) recalls the potential for German national brand owners to effectively assert their rights against online counterfeiters abroad.
The plaintiff – a manufacturer and distributor of clothing, accessories and footwear – owned the registration of the German trademark MO in relation to clothing. The defendant owned a clothing store in Northern Ireland and offered products for sale through its online store. While the online store was hosted on a UK domain ending in ‘.co.uk’ in English and with prices quoted in UK pounds sterling, international worldwide shipping was offered for £ 20.
The Applicant successfully made a test purchase of a scarf, which had been advertised as a Tommy Hilfiger MO Logo scarf. After an unsuccessful warning letter, the plaintiff successfully sued the owner of the online store for trademark infringement in the district court in Frankfurt.
In its appeal, the defendant argued that the German courts did not have international and local jurisdiction in the case because the offer had not targeted the German public. The Frankfurt courts dismissed the appeal.
The Higher Regional Court in Frankfurt has confirmed that the offer of worldwide shipping – even from an online store operating in English and located in Northern Ireland – may give rise to international and local jurisdiction among German courts if a test purchase results in the delivery of products to Germany. Indeed, the offer already establishes a commercial effect and therefore a trademark infringement in Germany.
The court ruled that the availability of the offer in English would be sufficient in the context of the digital age and the increasing ease of cross-border transport. In addition, the court confirmed that the use of the worldwide shipping option for a test purchase made through a mystery shopper does not constitute an abuse of rights under German law. The court also confirmed that when a model name is part of the prominent title of a clothing offer in relation to a well-known manufacturer’s name, the public would perceive such a name as an indication of origin within the meaning of ‘a secondary brand.
While the ruling does not rewrite the history of German case law, it nonetheless underscores the strength and potential of national trademarks in trademark enforcement efforts. In particular, when it comes to branded final consumer products eligible for mail order, brand owners should never deregister national brands or underestimate the potential of national registrations in their filing strategies. Indeed, national registrations can turn out to be specifically sharp weapons in cases where EU trademarks are not available. In addition, brand owners should keep in mind that Germany is often a relatively efficient and inexpensive jurisdiction for intellectual property infringement litigation.
Gabriel Wittmann, Jana Bogatz
D Young & Co LLP
This article first appeared in Global Brand Review. For more information, please visit https://www.worldtrademarkreview.com/corporate/subscribe
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