The special protection for Olympia under the German Olympic Protection Act does not preclude trademark protection, the Federal Supreme Court ruled in a dispute about the likelihood of confusion between the trademark ‘Retroolympics’ and the IOC trademark ‘Olympic’. Accordingly, in Germany the Olympia Protection Act is in genuine competition with the Trade Mark Act.
Actually, signs and terms related to Olympia are under special protection by German law: the Law for the Protection of the Olympic Emblem and the Olympic Signs (OlympSchG, German Olympia Protection Act) provides special protection for Olympia. Its aim is to protect the Olympic terms “Olympia”, “Olympia”, “Olympic” and the Olympic emblem against free – and often commercial – use by third parties. Ultimately, the Olympic Protection Act is intended to prevent the transfer of an image that runs counter to the goals of the Olympic Idea.
But commerce is inventive (we remember the barbecue patties “Olympia anfeuern” from Lidl in 2016), and even sports associations do not always have an easy time putting Olympic terms under protection. The Verein zur Förderung ehemaliger olympischer Sportarten – Retrolympics e. V., whose legal predecessor applied for the word and figurative mark ‘Retroolympics’ at the German Patent and Trademark Office in 2012 (for Nice classes 28 (games and sporting goods); 35 (advertising) and 41 (sporting and cultural activities)), also had to realise this.
The DPMA initially refused this trademark registration ‘Retroolympics’ with reference to the Olympic Protection Act, but this decision was overturned before the Federal Patent Court (BPatG, decision of 17 June 2014 – 27 W [pat] 547/13) and the trademark ‘Retroolympics’ was published.
Subsequently, an opposition against this trademark was filed by the Comité International Olympique (CIO, Switzerland), better known as the IOC, proprietor of the earlier IR trade mark ‘Olympic’ (IR 1128501) and many other trade marks related to the Olympics. IOC argued, there was a likelihood of confusion between the marks ‘ Olympic ‘ and ‘ Retroolympics ‘, which claimed protection for almost identical goods and services. However, the IOC’s opposition was in vain: the Federal Patent Court ruled that there was no likelihood of confusion, among others because the prefix “RETR(O)-” made a clear difference in the overall impression.
This led to the present ‘Retroolympics’ decision of the Federal Supreme Court (I ZB 6/20), which ruled on the IOC’s appeal against this decision of Federal Patent Court.
Retroolympics v Olympic: Ruling of the BGH
The German Federal Supreme Court (BGH) ruled in this case with a leading judgement: the Olympics Protection Act does not exclude trademark protection. Likewise, the Olympia Protection Act does not preclude protection for Olympic signs that enjoy trademark protection that is ancillary to and goes beyond this particular special right, the BGH ruled, referring to its “Olympiareif” decision of 2019.
Although the protection of Olympic signs under the Olympic Protection Act falls short of protection under trademark law, the highest German court explained, it does not follow from this that the legislator intended to limit the protection of Olympic words and emblems even to the extent that they are under trademark protection. Accordingly, for the question of unfair exploitation of the reputation within the meaning of § 9 para. 1 no. 3 MarkenG, the case law on the Olympic Protection Act can also be referred to, the BGH ruled – however, § 9 para. 1 no. 3 MarkenG, which provides more extensive protection, must be examined independently.
In the appeal itself, the BGH upheld the IOC and overturned the decision of the BPatG. The BPatG had wrongly decided that there was no likelihood of confusion.
In particular, the applicant IOC successfully challenged the BPatG’s assessment of the graphic element of the challenged mark (does the fire of the ‘Retroolympics ‘ mark resemble the Olympic fire, and even if it does, do consumers think of the IOC, even though the familiar Olympic rings are missing?). And the BGH stated that, above all, the Federal Patent Court’s assessment that the challenged sign was not characterised by the word element ‘-OLYMPICS’ was erroneous in law.
The Federal Patent Court had rightly rejected a likelihood of confusion of the opposing signs under the aspect of the serial sign (mental association), the Federal Supreme Court explained. Such a likelihood of confusion of the serial sign exists above all if the signs coincide in an element which the public sees as the stem of several signs of an undertaking.
The question of the direct likelihood of confusion, however, had to be re-examined by the BPatG in reopened appeal proceedings, the BGH ruled. In particular, the distinctiveness and reputation of the opposition mark would have to be reassessed, or assessed at all, and the descriptive content of the prefix “RETR(O)-” would also have to be included in the assessment, the court specified the tasks for the BPatG.
Olympic Protection Act and trademark law
In any case, the BGH added in its reasoning that the opposing IOC could not be denied a need for legal protection, in particular on the grounds that its legal position was sufficiently taken into account by the Olympic Protection Act, so that it could not invoke protection under trademark law in addition. This also applies if, as in the present case, in the registration procedure the possible ground for refusal was initially negotiated with regard to the Olympia Protection Act, but in the opposition proceedings claims under trademark law are made, which in turn are based on a sign covered by the Olympia Protection Act, namely ‘Olympic’ (see § 3 para. 3 OlympSchG).
Although the opposition proceedings are part of the registration proceedings, the Federal Supreme Court explained, the legal force of a decision made in the – initially unilateral – registration proceedings cannot prevent a decision in the opposition proceedings due to the lack of party identity. In the present case, the registration proceedings under § 36, 37 Trade Mark Act and the opposition proceedings under § 42 Trade Mark Act concern different matters in dispute anyway.
The case was referred back to the BPatG for a complete review. However, if the Federal Patent Court again comes to the conclusion that there is no likelihood of confusion, the Federal Supreme Court stated, it will also have to re-examine a cancellation claim under § 9 (1) no. 3 MarkenG.
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