If the question in infringement cases is usually whether the opposing goods and signs are similar, claims by the trademark owner can, however, also fail at an earlier stage, namely regarding the question of use as a trademark (OLG Düsseldorf, judgment of June 2, 2022, I-20 U 282/20 – FSP).
This was the case in a decision regarding claims of the owner of the trademark “FSP”, protected for submersible motor pumps, who wanted to take action against use of the signs “FSP” and “FSP 300”, also for pumps. The respective goods and signs were thus identical.
The Düsseldorf Higher Regional Court dismissed the claims and ruled that there was no use as a trademark and therefore no infringing use in this case. A trademark infringement is only possible if the contested sign violates one of the functions of a trademark, such as in particular its function to serve as indication of origin, i.e. the function of the trademark to guarantee the origin of the goods or services. Whether the public understands a sign as an indication of origin depends on the labeling customs in the relevant product sector. In this context, prominent use in an eye-catching manner usually speaks for use as a trademark. However, a corresponding understanding by the public must still be positively established in the individual case. The fact that the sign “FSP” cannot be regarded as purely descriptive is not sufficient for the assumption of use as a trademark. If the consumer is familiar with the practice of marking devices with a combination of letters and a sequence of digits in the field of goods concerned, he will not see any indication of origin in such a model designation because he will expect different manufacturers to mark different models with similar or identical combinations of letters and numbers. Use as a trademark and thus infringing use is then excluded.
What is interesting about this case is that the court considered it irrelevant whether “FSP” was actually to be understood as a descriptive acronym for flat suction pumps as claimed by the defendant. It was not even decisive whether the sign was used in a prominent position in the manner of a trademark or in a more subordinate way, for example, in the body text of the offer. According to the convincing opinion of the court, the only decisive factor was whether, from the point of view of the relevant public, the sign was used as an indication of origin and thus as a trademark. A corresponding commercial practice of providing products with letter and number combinations in the sense of a model designation, which is precisely not understood as a trademark, can therefore not be considered a trademark infringement. This applies regardless of whether consumers recognize a certain meaning of the letters and numbers. Companies as trademark owners are therefore well advised to get creative when selecting a trademark and to choose signs other than mere combinations of numbers and letters. Conversely, third parties are well advised to also choose creative signs, especially if there is no customary use of model designations on the relevant market and use of a sign as a trademark thus seems more likely.