According to a decision of the OLG Nuremberg, the use of a sign for a company’s own customer loyalty system does not constitute use as a trademark, unlike in the case of a cross-company customer loyalty system (OLG Nuremberg, decision of September 26, 2022, 3 U 1101/22).
Facts
The plaintiff is the owner of the trademark “Bärentaler” (“bear coin”) for pharmaceutical products, dietetic food and “handling of bonus and reward programs for customer loyalty by issuing discount stamps (for others)”. The defendant operates a pharmacy and issued “Apotheker M2 s Bären-Taler” to its customers there, which could be exchanged for loyalty rewards such as breakfast boards with snack boxes or toothbrush sets. After the plaintiff issued a warning based on its “Bärentaler” trademarks, the defendant signed a cease and desist declaration. The plaintiff then claimed damages and a contractual penalty.
Judgment
The OLG Nuremberg found that there was no trademark infringement. On the one hand, the plaintiff did not prove genuine use of its trademarks. While the plaintiff submitted evidence that it offered a customer loyalty program, information on the sales achieved with the discount program, was missing. Second, the defendant offered the discount program only within the scope of its own pharmacy and thus not as a service for third parties. However, the requirement that discount stamps be issued and that the discount program be carried out “for others” already follows in part from the wording of the list of goods of the prior marks, and in any event also from the nature of the corresponding services. The consumer perceives the sign “Bärentaler” as a designation for the coin provided with a bear, but not as indication of origin regarding the originator and provider of a corresponding marketing model for others, especially since this is not a cross-company bonus system. A trademark infringement was therefore denied due to the lack of offering a service “for others”.
Conclusion
Trademark owners sometimes overlook the fact that they cannot achieve absolute, all-encompassing protection for a sign with a trademark. In addition to the requirement of similarity of goods and signs, further barriers apply. Purely descriptive use is just as free for third parties as non-trademark use. The latter is the case with a purely decorative use, but also if no goods or services are offered to third parties. It is therefore systematically correct to assume, for example, that there is no genuine use where the concerned service is merely provided to affiliated companies but is not offered to third parties outside the related companies.
In addition to the observations described here, the court also touches on other highly interesting points. For example, the court casually but convincingly points out that repeat trademark filings are not entitled to their own grace period for genuine use. The court also makes important comments on the assessment of a contractual penalty.
