BGH, Judgement of the 10th January 2008, Filing Number: I ZR 38/05 – Akademiks
The above-mentioned case is an example of the actuation of the German Act against Unfair Competition (UWG).
The case can be briefly summarised as follows: the applicant of a trademark that is already registered abroad and used for identical or similar goods is acting anti-competitively.
The applicant, a US company founded in 1999 according to its own statements, is engaged in the manufacture and distribution of clothing articles in the ‘Urban Street Wear’ segment. The clothing, also known as “Hip Hop Fashion”, is usually characterized by a wide cut.
On 4 June 1999, the applicant filed an application in the United States for registration of a word and figurative mark containing the word element ‘AKADEMIKS’ in respect, inter alia, of the ´clothing´ class. The application was published on 4 July 2000. In 2002 further trade mark applications were filed in the USA, also for clothing, including an application for a word mark “AKADEMIKS” and other signs containing the element “AKADEMIKS”.
In addition, on 25 June 2002, the applicant filed an application with the Office for Harmonisation in the Internal Market for the following Community trademarks in respect, inter alia, of clothing:
– Word mark No 002 749 430 ‘AKADEMIKS’,
– Figurative mark No 002 749 455 .
On 29 August 2003, the plaintiff filed an application with the German Patent and Trade Mark Office for the following trademarks, which were registered in the trademark register, inter alia, for clothing:
– Word mark No 303 44 335 “AKADEMIKS”, registered on 17.11.2003,
– Word mark No 303 44 337 ‘JEANIUS LEVEL PRODUCTS’, registered on 14.11.2003,
– Word mark No 303 44 338 ‘AKADEMIKS STADIUM’, registered on 17.11.2003,
– Word and figurative mark No 303 44 340, registered on 1 December 2003.
The defendant, who founded its business on 8 September 2000, operates a wholesale and retail trade for textiles. It also sells hip-hop fashion. On 18 October 2000, it had already filed an application with the German Patent and Trade Mark Office for the word mark No 300 77 217 “AKADEMIKS” for clothing, footwear and headgear. Registration took place on 1 March 2001.
In February 2003, the defendant, through its licensee, issued a warning to the plaintiff´s European exclusive distributor concerning the use of the ‘AKADEMIKS’ trademark. In its reply, the applicant stated that it was not currently selling any goods bearing the name “AKADEMIKS” in Germany and that the earlier rights to that name were, moreover, held by the applicant because of the earlier US application.
The applicant has argued that it has had a big success since its creation with the ‘AKADEMIKS’ collection. For the year 2003 it expects retail sales of USD 100 million. However, the “AKADEMIKS” brand had already been known in the USA in 2000 and among experts in Europe. Against this background, the defendant’s application for registration of the trade mark “AKADEMIKS” was an abuse of rights. The plaintiff had planned from the outset to offer its products also in Germany under the trademark “AKADEMIKS”. This should have been imposed on the defendant, who had knowledge of the establishment of the trade mark in the USA, since fashion developments are generally carried from the USA to Europe. The fact that the defendant largely imitates its products also speaks in favour of bad faith on the part of the defendant with regard to the trademark application. In addition to the infringement of the word mark “AKADEMIKS” and the figurative mark, there is also an anti-competitive imitation, since the defendant imitates individual features and thus causes an avoidable deception of origin and unfairly exploits the good reputation of the plaintiff.
This case is used as an example of a case of trademark and anti-competition law mixed in one and unique legal dispute of the last decade.