An opposition was filed against German trademark no. 30 2018 000 097 (word mark) “KOSAPRO,” registered on February 26, 2018, claiming, inter alia, signal devices and equipment as well as lighting for vehicles. The opposition was based on the claim that the mark “KOSAPRO” had allegedly been used since 2011 for similar goods, invoking Sections 4 No. 2 and 12 of the German Trademark Act (MarkenG).
According to these provisions, a registered trademark can be canceled if another party has acquired rights to a mark under Section 4 No. 2 MarkenG prior to the relevant date for the priority of the registered mark, and these rights entitling such proprietor to prohibit the use of the registered mark throughout the entire territory in Germany. The establishment of trademark protection under Section 4 No. 2 MarkenG requires the use of the sign in commerce and this resulting in acquired public recognition of the mark among the relevant trade circles. Acquired public recognition means that a significant portion of the relevant trade circles understands the sign as an indication of origin of the goods or services deriving from a specific undertaking.
Anyone claiming a trademark by acquired public recognition through use must provide specific details regarding the type and form, start, duration, and extent of the use of the sign by presenting evidence, such as sales figures, market shares, advertising expenditures, price lists, product samples, promotional materials, and the like. Furthermore, most of the time carrying out a professional market survey is required. As for the percentage of the relevant public, a recognition rate of at least about 20%–25% must be achieved (Hacker in Ströbele/Hacker Commentary on the Trademark Act, 13th edition, Section 4, para. 49).
Since in the present opposition case, the opposing party, in the court’s view, did not sufficiently demonstrate the aforementioned parameters regarding the use, the opposition was rejected.
Note: Experience shows that proving a trademark through use is easier in court than before the Trademark Office or the Federal Patent Court in the context of Office opposition proceedings. Also, unlike in court proceedings, in Office opposition proceedings no award on costs is rendered in favor of the winning party. Moreover, Office opposition proceedings, including appeals, generally take twice as long as court proceedings. Therefore, if there is a good chance of success, a nullity action before the court should be seriously considered, especially as also additional claims may be raised simultaneously, particularly, for information, accounting, and damages.