Model designation or trademark? – An overview of the change in case law on trademark infringements by model designations in the clothing sector

1. Secondary marks and model designations

In general, the requirement for any trademark infringement is that an identical or similar sign is used by the infringer "as a trademark" and not, for example, as a mere description, decorative or as a mere model designation. Roughly speaking, use as a trademark means the use of a sign as an indication of origin from a specific company in order to distinguish it from goods originating from other companies. It does not depend on the intentions of the user of the sign, but on the understanding of the relevant public.

Use as a trademark as an indication of origin is considered to be the case if the sign in question is the only element that the public perceives as a distinctive indication of origin and there are no other signs. However, use as a secondary sign is also sufficient for infringing trademark use. If there is a practice of using several signs or trademarks to identify a product or service, both signs may be perceived as an indication of origin depending on the circumstances of the case.

According to the public's understanding, model designations, unlike trademarks, do not claim to be used only by a single company in the corresponding product area and thus indicate the origin of this manufacturer, but can also be used by other companies to subdivide their model range according to different articles, designs, models and types. If a sign is understood by the relevant public as a model designation in this way, it is not used as a trademark.

2. Outdated jurisprudence

In the past, the use of first names for fashion items in the context of product information has been regarded as trademark use and thus as trademark infringement in a large number of decisions.

Based on the Tosca decision of the Federal Court of Justice from 1960 (see BGH, judgment of 19 December 1960, I ZR 39/59 – Tosca), the courts set the threshold for the assumption of use as a trademark  in this area quite low. They regularly assumed that the public would at least see an indication of commercial origin in the product name, provided that the product name was originally distinctive and not simply used descriptively. In the textile sector, this applied in any case to first names that were not known and readily recognizable as such. However, in the case of article names that corresponded to common first names known as such, it should be obvious that they were perceived as model designations, at least in the textile sector (see BGH, judgment of 26 November 1987, I ZR 123/85 – Gaby).

As a consequence, first names used as model designations were easily capable of trademark infringements and, especially in the textile sector, numerous companies received warning letters.

3. Latest developments in jurisprudence

Following two divergent decisions by the Court of Appeal of Frankfurt am Main and the Court of Appeal of Munich on the same facts, the case was referred to the German Federal Court of Justice for clarification. The question was whether the reference “Model: Sam” in the product description of an online store could be understood as an indication of origin and therefore constitute an infringement of rights to the “SAM” trademark. The Court of Appeal of Frankfurt a. M. had affirmed a trademark infringement, the Court of Appeal of Munich had denied it.

In 2019, the BGH overruled the decision of the Court of Appeal of Frankfurt a. M. and ruled that the mere finding that a sign is distinctive and is not used purely descriptively is not sufficient to assume that it is understood as an indication of origin for clothing and is therefore used as a trademark (see BGH, judgment of 7 March 2019, I ZR 195/17 – SAM). It emphasized the customs of the respective industry as a relevant factor and stated that the use of first names to designate models is quite common in the clothing industry and in retail. The relevant public is likely to perceive a sign as an indication of origin if a specific model designation is well-known (such as the sign “501” for jeans) or if the model designation is used in direct connection with the name of the manufacturer or an umbrella brand. Otherwise, the perception of the relevant public must be determined on a case-by-case basis.

In the same year, the BGH issued a second decision on this topic (see BGH, judgment of 11 April 2019, I ZR 108/18 – Damen Hose MO). The owner of the trademark “MO” sued Amazon for trademark infringement due to the use of the sign “MO” in the product heading “Bench Damen Hose MO”.

Although the designation “MO” is rather unusual in Germany, it was placed in the title of the offer and there was no concrete indication that it was a model, the court demanded a closer examination of the question of whether the name would be perceived as an indication of origin.

4. Implications for the practice

This change in case law means that, depending on the specific circumstances of the concrete case, the use of first names as model designations, which previously constituted trademark infringements under German case law, may now be permissible. In the event of warning letters, this should lead to better defence options in many cases in the future.

In the following, we show some exemplary decisions and which principles have developed in case law for the assessment of first names as model designations for fashion articles:

4.1 No use as a trademark

In the following cases from the textile sector, the courts did not accept any trademark use and therefore no infringement of law:

Use of a first name in the offer heading “Chiemsee Damen Kleid Rock Isha” (English: “Chiemsee Ladies Dress Skirt Isha”) with the subheading “von Chiemsee” (see OLG Hamburg, judgment of 28 November 2018, 5 U 65/18 – ISHA):

• The connection between the signs “Chiemsee” and “Isha” is largely dissolved by the specific arrangement of the signs, namely the purely descriptive indications “Damen”, “Kleid” and “Rock” placed between them.
• In addition, the subline “from Chiemsee” makes co-branding seem unlikely. This is also made clear by the following product description, which refers to “high Chiemsee quality” and the scope of delivery “1 Chiemsee dress”.

• Use of a first name in a descriptive text in tabular form with the line “Model: Sam” (see OLG Frankfurt a.M., judgment of 1 October 2019, 6 U 111/16 – SAM):

• The term “Model: SAM” only appears in an inconspicuous place as part of a descriptive text in which the public primarily expects factual information.
• It is not emphasized in any way. It is also not directly connected with the umbrella brand, but only appears in a subordinate position in the description.

Use of a first name in an invoice within a longer string of characters: “Bench Damen Hose MO Large walnut marl I ...” (English: “BENCH Ladies´ Trousers MO Large walnut marl”) (see OLG Frankfurt a.M., judgment of 13 August 2020, 6 U 94/17 – MO)

• In the case of a long string of characters on an invoice containing letters and numbers, among other things, the public would see the indication of origin only in the preceding manufacturer's indication.
• Due to the nature of the representation within a line, the public has no reason to separate the distinctive element “MO” from the combination of signs and to separate it from descriptive elements.

Use of a first name in the offer heading “Barbour Barbour Heritage – Steppjacke mit Druckknöpfen Modell ‘Sam-Olivgrün’” (English: “Barbour Barbour Heritage – Quilted jacket with buttons model ‘Sam-Olive green’”) (see OLG Frankfurt a.M., judgment of 9 February 2021, 6 W 10/21 – SAM)

• The model designation “Sam” is neither eye-catching nor is it emphasized in any other way. Rather, it is part of a subheading containing a large amount of information. The connection to the umbrella brand is dissolved in terms of content by the inserted descriptive text.

• Use of a first name in the subheading “Stoffhosen SAM SHORTS Uni” (English: “Cloth pants SAM SHORTS Uni” under the eye-catching heading “SUPERDRY” (see OLG Frankfurt a.M., judgment of 19 November 2021, 6 W 97/21 – SAM)

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• The public would not assume that the name “SAM” would be used in addition to the prominently displayed umbrella brand “SUPERDRY” to identify the specific shorts model by origin.
• The model designation “SAM” is neither particularly eye-catching nor otherwise emphasized, but is included in a subheading containing several pieces of information, whereby the terms of the subheading are partly written in capital letters and partly in small letters.
• The public usually does not expect an indication of origin in the context of a list of product characteristics.

4.2 Use as a trademark

In the following cases in the textile sector, on the other hand, the courts assumed use as a trademark and thus an infringement:

Use of a first name in the offer heading “Damen Damenkleid Kleid Cocktailkleid NEU Studio MO Schwarz Größe 38 M” (English: “Women's Ladies Dress Cocktail Dress NEW Studio MO Black Size 38 M”) (see LG Hamburg, judgment of 14 May 2020, 327 O 434/19 – MO)

• In addition to the merely descriptive indications “Women's Ladies Dress Cocktail Dress NEW” before and “Black Size 38 M “ after, “Studio MO” is the only indication that can be considered as an indication of origin.

Use of a first name in the offer designation “Bench Damen Hose MO” (English: “BENCH Ladies´ Trousers MO”) (see OLG Frankfurt a.M., judgment of 13 August 2020, 6 U 94/17 – MO):

• The manufacturer's designation “Bench” is used in the same line and additionally directly above the word combination “Bench Damen Hose MO”. Thus, there is a clear spatial connection. The connection is not completely dissolved by the descriptive words “Damen Hose” between the signs; on the contrary, they make it clear that there are two independent signs, namely an umbrella brand and a secondary mark specifically for the specific item.
• The name “MO” is part of the highlighted offer heading. Although it is placed after the word combination, it is not hidden; rather, it is additionally emphasized by the use of capital letters.

Use of a first name in the offer heading “Tommy Hilfiger MO LOGO SCARF” (see OLG Frankfurt a.M., judgment of 11 March 2021, 6 U 273/19 – MO)

• The manufacturer's designation “Tommy Hilfiger” is used at the beginning of the same line next to the sign “MO”, so there is a clear spatial connection between the two signs.
• The word “MO” is part of the highlighted offer heading, it is placed after the word combination, but is not hidden.

• Use of a first name in the offer heading “SIR RAYMOND TAILOR Pullover Enna, Rundhals” (English: “SIR RAYMOND TAILOR Pullover Enna, round neck” (see OLG Frankfurt a.M., judgment of 10 May 2021, 6 W 29/21 – Enna)

• The name “Enna” is part of the highlighted offer heading. Although it is embedded between two descriptive terms (“Pullover” and “Rundhals”), it is clearly recognizable within the word combination as a more detailed description of the fashion item and is not hidden.
• The subheading is clearly structured. It is readily apparent that the sign “Enna” is intended to designate the item of clothing (sweater). With this type of use, the public would not assume that another manufacturer could also offer an “Enna sweater”. The sign therefore not only serves to distinguish the goods within a collection within the company, but it is also an indication of origin in the sense of a secondary mark.
• The fact that there is a geographical connection to the designation “SIR RAYMOND TAILOR”, which is recognizable as the primary manufacturer's designation, also supports that the sign serves as an indication of origin.

Use of a first name in the offer heading “Balmain Herren T-Shirt / T-Shirt MO / UH11601” (English: “Balmain Men T-Shirt / T-Shirt MO / UH11601”) (see OLG Frankfurt a.M., judgment of 2 September 2021, 6 W 58/21 – MO)

• The manufacturer's designation "Balmain" is used in the same line as the term “T-Shirt MO”, so there is a clear spatial connection between these two.
• The name “MO” is part of the highlighted offer heading. Although it is placed after the word combination, it is not hidden; on the contrary, it is additionally emphasized by the use of capital letters.

Use of a first name in the offer heading “Threadbare Rundhalspullover “Sam”” (English: “Threadbare round neck sweater “Sam””) (see OLG Frankfurt a.M., judgment of 17 September 2021, 6 W 51/21 – SAM)

• The name “Sam” is part of the highlighted offer heading. Although it is subordinated between the manufacturer's name and a descriptive term, it is clearly recognizable within the word combination as a more detailed designation of the item of clothing. It is also not hidden.
• In addition, there is a spatial connection with the sign “Threadbare”, which is recognizable as the primary manufacturer's designation.

Using a First Name in the Subheading”SAM — COAT WITH MULTICOLOR EFFECT“Under the indicative description”SET“(see Higher Regional Court Frankfurt a.M., Judgement of July 7, 2022, 6 U 239/21 — SAM)

• The sign”SAM“Be part of the highlighted offer heading and additionally emphasized by its position at the beginning and the separation by a hyphen.
• The heading is clearly structured and has a descriptive meaning of the term”SAM“Not discernible. In addition, there is a spatial connection with the name that can be identified as the primary manufacturer's information”SET”.

Use of a first name in the offer heading “Le Temps Des Cerises Jackenblazer <MIMO> in tollem Design” (English: “Le Temps Des Cerises jacket blazer <MIMO> in great design” (see OLG Frankfurt a.M., judgment of 19 January 2023, 6 U 38/22 – MIMO)

• The sign “MIMO” is part of the highlighted offer heading and is only separated from the umbrella mark by the purely descriptive element “Jackenblazer”.
• In addition, the headline is clearly structured, there is a spatial connection with the primary manufacturer's designation, and the sign is also highlighted from the rest of the text of the offer headline by quotation marks and capital letters.
• The "double" emphasis of the manufacturer's mark (in word + graphic) is compensated by the fact that the sign “MIMO” in the highlighted offer heading is in turn highlighted again by quotation marks.

5. Conclusions for your company

If your company wants to use a first name as a model designation for a fashion item, we recommend that you observe the following principles when positioning the model designation in advertisements and sales offers in order to avoid legal disputes:

• The model designation should not be used directly next to the name of the manufacturer or an umbrella brand.
• The model designation should not be used as the only possible indication of origin between purely descriptive statements.
• The model designation should be explicitly stated as such, for example “Model: “X””.
• The model designation should not be emphasized by bold print or the use of capital letters.

We will be happy to provide you with comprehensive advice in this area in advance of any legal disputes. In the event of a dispute, we will defend you against unjustified warnings from trademark owners.