Problem of serial marks: Partial copy of a mark an infringement?
Protected trademarks are often used together with other signs. Recently, the Austrian Supreme Court confirmed that trademarks, that are completely included into another trademark, are regularly considered to be confusingly similar. This is often justified by the fact that consumers could assume that it is a variation of the product that was originally marked with the copied part - i.e. it is a serial mark.
Specifically, the OGH decision 4 Ob 32/21s of 21.5.2021 dealt, inter alia, with the question whether the following Austrian trademark No. 293.410:
should be considered as similar to international trademark No. 777429, which is also extended to Austria:
In this case, an opposition against the younger trademark would be successful.
In addition to the question of genuine use, the Supreme Court also dealt with the question of whether the figurative element of the mark is sufficiently secondary to the word element to exclude any likelihood of confusion.
The Supreme Court answered in the negative: There was a likelihood of confusion between the opposing mark (figurative mark) and the opposed mark because the figurative element in the latter was not sufficiently relegated to the background, but because from the viewer's perspective it would be assumed with a certain degree of probability that the combination of numbers and letters as well as the smaller word "IMMOGROUP" were an additional specification of a product or a service originating from that company which could already be identified by the pictured bar chart. Moreover, the Court finds that signs which are not registered in color, such as the marks cited in opposition, are, as a rule, capable of being confused with similar signs in all colors.
We agree with this assessment, in particular with the argument that many companies use their signs as main and secondary marks - often as serial signs. This is particularly popular among manufacturers of motor vehicles, where the company's trademark and the trademark of the specific vehicle line are used in combination.
However, this interpretation of the law is not always followed so clearly; one of the reasons for this is that there are legal weaknesses here. In the current trademark system, there is no way to protect serial marks in a legally secure and cost-effective manner.
First of all, this is due to the "compulsory use": a trademark must always be used as it is registered in order not to run the risk of being cancelled from five years after registration. Continuous use that deviates from the registered use can therefore lead to cancellation of the trademark. If serial signs are used - i.e. main and secondary signs together - it cannot be clearly stated whether this is seen as the use of two individual marks; or only one combination mark. The boundaries are difficult to draw here, which is why, as a rule, all combinations and all single marks must always be registered.
On the other hand, it may be possible to take action against a foreign sign that is similar in itself only if the main and secondary marks have been protected in combination. If the foreign sign is not considered similar to the main or secondary mark by the relevant public, it is possible that a trademark infringement is only affirmed if both individual marks are protected together - i.e. as a combination. In order to obtain ideal protection, one would therefore have to protect all individual secondary marks as well as all combinations between the main mark and the secondary mark.
The case mentioned above shows the problem in particular with regard to the serious use. There, the "Three Stripes" mark was always used only in combination with the word element OVB:
The other side argued that such use was not serious, since the three stripes were not used on their own. The problem was apparently "solved" by the fact that both the Regional Court Vienna and the Supreme Court consider the graphic element (three stripes) to be seriously used, even if the sign was apparently not used in a stand-alone position. Up to now, a sign has generally only been considered to be seriously used if the distinctive character is not affected by the different uses (cf. Section 33a(4)(1) Trademark Act).
In my opinion, however, that is the case here: the use together with the distinctive word part OVB is sufficient to affect the distinctive character of the sign when viewed as a whole. In this respect, previous case law has often been very strict (cf. for example OPMS of 28.11.2007, Om10/07 - Rothmans). However, it could be argued that no combination sign is used here, but two independent signs are involved from the point of view of the public. However, this is not clear from the Supreme Court decision.
Even if the result of the decision is welcome, this does not solve the problem of serial signs. A clarification in the law would be desirable.