Blog 1837

Imagine you are the owner of a registered trademark and you have invested significant amounts of money into establishing your trademark and related product(s) in the market. Would it not be very annoying to see third parties offering replacement parts or accessories for your product(s) using your registered mark? It definitely is so for the Philips Group, one of the world's leading developers and manufacturers of electric shavers. Read here what the Higher Regional Court of Frankfurt recently decided in this case (OLG Frankfurt, 6 W 28/22, Decision of 3 May 2022).

[Screenshot taken at www.amazon.de on 25 September 2022;

similar offer to the one decided upon by the Higher Regional Court of Frankfurt]

Background

Earlier this year, a German subsidiary of the Philips Group tried obtaining a preliminary injunction against a Chinese competitor offering replacement shaver heads on its website by mentioning that they fit certain razors originating from the Philips Group. In its advertisement, it used a sign similar to a registered International Registration from Philips Group containing the word part „Philips“ and protected, among others, for razors and accessories.

Decision of the Higher Regional Court of Frankfurt

The Higher Regional Court of Frankfurt, in its decision of 3 May 2022, decided that use of a third party trademark in advertisements for replacement goods was no trademark infringement as long as it was in line with honest practices in trade and commerce.

According to settled case law of the European Court of Justice (ECJ), use of a third party mark is not in accordance with honest practices in trade and commerce if, for instance,

• it gives rise to the belief that there is a commercial relationship between the third party and the proprietor of the registered trademark;
• it takes unfair advantage of the distinctive character or repute of the registered mark, thus deminishing the registered mark‘s value;
• it disparages or discredits the registered trademark;
• the third party product is presented as an imitation or replica of the original product by bearing the mark of which its manufacturer is not the proprietor (see ECJ, Judgment of 17 March 2005, C-228/03 - Gillette, paragraph 49).

Regarding the shaver heads, the Court in Frankfurt acknowledged that use of a registered trademark of the original manufacturer was generally not allowed and considered trademark infringement. At the same time, it confirmed the necessity to refer to the original manufacturer’s trademark to let the consumer know that its own goods can be used as replacements for individual parts of the original product. Such reference was found allowed as it did not create the impression that the offered goods were original replacement parts from the trademark owner. The preliminary injunction sought for was denied.

Conclusion

If a competitor uses the registered trademark of an original manufacturer to say that its goods are non-original replacement parts or accessories for a product manufactured by the trademark owner, the use of the registered mark can be privileged as long as such use is in accordance with honest practices in trade and commerce.

Should you like to receive further information on the legal situation regarding the use of registered trademarks for third party replacement products or accessories or should you like to discuss your own use of somebody else’s mark, do not hesitate to contact us by email to

or by phone: +49 89 55 87 98 70.