A registered German or a Community trademark can lose protection if it has not been genuinely used in five successive years.
In order to prevent this, a trademark must be used in the registered form for the products and/or services it covers. A deviation from the registered form is tolerable if the distinctive character of the trademark is not changed. The question of circumstances, under which this condition is met, is decided on a case-to-case basis. Thus, it is normally harmless to the distinctive character of a trademark if a descriptive reference to the covered goods is added to it (e.g. Federal Court of Justice (BGH), order of 9/7/1998 – I ZB 37/96: Use of the trademark “Holtkamp” through the expression “HOLTKAMP MÖBEL BEISPIELHAFT”)
However, the aforementioned principle does not always apply as shown by a recent judgment of the Federal Court of Justice (BGH) concerning a word mark “Zappa” (decision of 5/31/2012 – I ZR 135/10). This plaintiff’s trademark was registered inter alia for “recorded CDs, disk records and cassette tapes”. The trademark was used as “Zappa Records” on the back of sound carriers. Following the factual finding of the court of lower instance. the Federal Court of Justice (BGH) has considered the term “ZAPPA” as an indication of the artistic origin of the CD content and not as a commercial origin of the CDs themselves. Thus, the commercial origin was only first apparent through an addition of the supplemental part “Records”. However, if the supplemental part was first required to establish that the sign was used as a trademark, then the distinctive character of the sign was changed, as the BGH reasoned.
Trademark proprietors should therefore carefully consider whether their actual use of signs in respective context in fact communicates an indication of the commercial origin of their products. Special care is necessary for all trademarks, which have a specific semantic content, which makes the interpretation ambiguous. Artist names, as was in the case of the Federal Court of Justice (BGH), are just one example.