Model labeling for fashion: Trade mark infringement?

In the clothing and fashion industry, again and again warnings are sent against the specific model labeling of clothing. The German case law of the Federal Supreme Court and the Higher Regional Court of Frankfurt provides clarity on the question: Trademark infringement as a secondary mark?

Everyone is familiar with the usual assignment of model labeling in the fashion industry. However, this fact alone does not constitute a trademark infringement, not even if a trademark-protected term is used as a model name. A trade mark infringement can only occur if a trade mark protected sign is used commercially by another person without authorisation in relation to the same or similar goods and services.

Model labeling: umbrella brand and secondary mark

However, a model labeling on an item of clothing is not at all a “sign used as a trade mark” in all cases; this in turn depends on whether the model designation is seen by consumers as proof of origin in the sense of a trade mark. It should be noted in this context that it is more likely to be seen as not being a mark of origin if the sign is only used as a decorative design element or in a purely descriptive sense (see BGH GRUR 2014, 1101 marginal no. 23 – Gelbe Wörterbücher).

In 2019, the Federal Court of Justice (BGH) issued two judgments providing current case law on the question of whether, in the case of an umbrella brand with a model labeling, this model labeling should also itself be seen as an indication of origin, i.e. as a secondary mark.

BGH: Model labeling SAM

In the SAM decision (BGH, judgment of 07.03.2019 – I ZR 195/17), the court basically determined that the affixing of a model labeling to the goods themselves or on labels can be understood by the targeted public as an indication of origin – if model labelings are common in the industry. The better known the umbrella brand is, explained the BGH, the more likely it is that a model labeling will be understood as an indication of origin and, accordingly, the more likely it is that a trade mark infringement will be assumed in the use of this model labeling. According to the BGH, even a model labeling that is not well-known can be perceived as a trade mark if it is used in direct connection with the manufacturer’s brand or umbrella brand. The BGH added that consumers would, however, mostly see the indication of origin in the manufacturer’s designation preceding it.

The fact that a sign is recognised by the addressed public as a trade mark and thus as an indication of origin must be positively established on the basis of the circumstances of the individual case, the BGH explained. It was not sufficient for the assumption of use as a trade mark if a sign was originally distinctive and the specific use was not merely descriptive with regard to the goods or services in question.

BGH: Amazon model labaling MO

In the second important BGH decision in this context, the Amazon model labeling MO for women’s trousers, which was used for sales offers on the internet, was the trademark in suit.

The plaintiff was the owner of the national word mark “MO” with priority from 6 July 1999 and claimed that the Amazon offer was a trade mark infringing identical sign for identical goods. Amazon, on the other hand, argued that the public neither understood the designation “MO” as an abbreviation for the word “model” nor saw it as a company-internal order mark.

But the BGH disagreed with Amazon. According to the BGH, the public would recognise the words “Bench” and “MO” in the contested overall designation “Bench Damen Hose MO” as two independent signs, because the term in the middle “Damen Hose” (engl: Trousers for women) is mere descriptive. Through the design, according to court MO was perceived as the name of the specific trouser model. Therefore, not the overall designation but the independent sign “MO” of the trade mark applied for had to be included in the comparison of the signs. Even if the public sees the fashion label or the manufacturer’s information in the preceding sign “Bench”, it does not follow that subsequent distinctive indications can no longer have a distinctive function, said the BGH.

In particular, the OLG Frankfurt should clarify the question whether the contested model labeling MO was to be regarded as a secondary trade mark as part of the highlighted offer heading. The BGH ruled in its MO decision that highlighting or eye-catching emphasis could be indicative of use as a trade mark, especially in the case of a model designation in sales offers on the internet.

Finally, the BGH (BGH, MO, April 2019, I ZR 108/18) referred this case back to the lower court of appeal (OLG Frankfurt), which ruled in 2020 (OLG Frankfurt, 6 U 94/17).

The OLG Frankfurt explained that in case of model labeling in sales offers in catalogues or on the internet, the offer must be considered in its entirety. In particular, the prominence or eye-catching emphasis could speak in favour of use as a trade mark, especially if the type of use gives consumers an indication of a certain manufacturer.

This was the case in the MO case in the Amazon offer. The indication “MO” was regarded as the name of the specific trouser model, which was apparent from the entire design of the offer.

OLG Frankfurt: „Sam“ in „SUPERDRY SAM SHORTS Uni“

This was further clarified by another recent decision of the Higher Regional Court of Frankfurt (19.11.2021 – 6 W 97/21), which also concerned the question of a secondary trade mark by the term SAM in relation to the sign “SUPERDRY Stoffhosen SAM SHORTS Uni”. In its decision, the court emphasised that not every model labeling had the function of a secondary trade mark. If there is a lack of brand-typical prominence of the model name, and also if an umbrella brand is prominently displayed, then it must be assumed that consumers do not understand the model labeling as a secondary brand.

First names as model labeling

Finally, it should be noted that first names are also frequently used as model labeling. Here, some special features of case law must be taken into account:

The Federal Court of Justice (BGH) had already given case law on this in 1988: in the case of frequently occurring first names, the BGH had ruled that it was possible that the assumption of use as a trade mark was excluded because the public understood them as mere model designations and not as an indication of commercial origin (BGH GRUR 1988, 307 – Gaby).

However, this does not apply to the model name “Enna”, ruled the Higher Regional Court of Frankfurt (10.05.2021 – 6 W 29/21). Enna is predominantly perceived as a fancy name. Even if individual consumers recognise that it is a first name, this first name does not appear as an arbitrarily interchangeable order mark without an origin function due to its unusual nature.

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