Background
The plaintiff is the German association of the Red Cross (‘German Red Cross’), which is entitled to use the emblem of the Red Cross in accordance with Artt. 38, 44 of the Geneva Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces in the Field (1949) (I. Geneva Convention). As a charity and aid organisation, the plaintiff carries out extensive tasks in Germany, including rescue, first aid and health services such as blood donation service, care for the elderly, child, youth and family assistance, the search service and the Youth Red Cross.
The plaintiff owns German figurative mark no. 30614013 for the following sign:
The defendant is a publishing company, which published a book with the following cover:
The book criticises the German healthcare system. The German Red Cross is not mentioned therein.
The plaintiff sued the defendant claiming, amongst others, infringement of its German trade mark. The action was successful before the District Court of Hamburg. The defendant appealed.
The Higher Regional Court’s Decision
The Higher Regional Court of Hamburg dismissed the appeal (5 U 112/23). The judges found that the use of the bleeding red cross on the book cover infringed the rights to the plaintiff’s trade mark with a reputation (Sec. 14(1) sentence 1 no. 3 German Trade Mark Act).
1. Non-use defence
The defendant’s non-use defence was unsuccessful. The Court held that the use of the red cross mark was obvious to consumers inter alia for ‘medical services’ in class 44 as well as for ‘personal and social services to meet the needs of individuals’ in class 45. If a fact is obvious to consumers (such as the use of a trade mark), no further evidence is required to establish that fact.
2. Reputation
The judges held that the plaintiff’s trade mark enjoyed a reputation. It was obvious again that the Red Cross has been operating ambulance and health services, elderly care, child, youth and family assistance, the search service and the Youth Red Cross to a significant extent for many years. The red cross mark was used for these services and perceived as an indication of the commercial origin.
3. Link
Consumers would establish a link between the German Red Cross’ trade mark and the use on the contested book cover.
Since the defendant itself stated that the use of the bleeding red cross was intended to create a link with the German Red Cross’ trade mark, the Court merely confirmed the lower court’s finding of a link.
4. Exploitation
The judges also confirmed that the use of the red cross on the book cover took unfair advantage of the repute and distinctiveness of the plaintiff’s trade mark.
The Court referred again to the defendant’s statement that the use of the bleeding red cross was intended to create a link with the plaintiff’s trade mark. The cover was meant to show the bleeding out of the healthcare system, of which the plaintiff is a part. The judges considered this sufficient to accept an exploitation of the distinctiveness and repute of the German Red Cross’ trade mark. The fact that there is no relevant similarity between personal and healthcare services on the one hand and books on the other was deemed irrelevant because the book dealt with the healthcare system and the defendant intended to create a link.
5. Detriment to the repute
The Court also confirmed that the use of the bleeding red cross was detrimental to the earlier mark’s repute. The judges found that repute meant more than just being well-known. It required a positive image, which the efforts of the trade mark owner created. The Court drew on the fact that only the plaintiff is allowed to use the German Red Cross’ sign by virtue of the German Red Cross Act. Further, the unauthorized use of the red cross constitutes an administrative offence. The judges concluded that this protection manifested a repute of the German Red Cross’ sign.
This repute was tarnished by the defendant’s use because the bleeding red cross symbolized the bleeding dry of the healthcare system and the earlier mark was used as a representation of that system. This caused inappropriate associations, which were detrimental to the attractiveness of the earlier mark.
6. No due cause
In assessing whether due cause for the infringement of the German Red Cross’ mark existed, the Court weighed the interests of the parties.
The defendant could rely on the freedom of the arts. This right can also be invoked by a publishing company in its function as an intermediary between the artist and the public.
On the other hand, the plaintiff could invoke its trade mark rights, which are protected by the right to property.
The judges held that the freedom of the arts had to take a backseat vis-à-vis the right to property because the contested book cover was disparaging to the German Red Cross’ sign. Beyond that, the defendant did not use the sign for the purpose of criticism, satire or any other discussion of the German Red Cross. The defendant’s book did not deal with the plaintiff’s organization or services at all.
The Court also found an overwhelming public interest in the protection of the red cross.
The fact that the defendant might not have intended to disparage the plaintiff’s trade mark was deemed irrelevant.
The judges applied similar considerations to the plaintiff’s right to freedom of expression.
Comment
Even though the case is unique, in particular due to the protection of the German Red Cross’ trade mark by legislation, which helped support the infringement claim, the decision provides important guidelines:
The use of a trade mark with a reputation as a part of a book cover or title will, in principle, be infringing if there is no or very little connection between the content of the book and the trade mark or its owner.
If, on the other hand, the book deals with the trade mark or its owner, the use on a book cover can be lawful. The Higher Regional Court of Cologne, for instance, considered the book title ‘The best […] recipes for the Thermomix’ not to be infringing because the defendant could rely on the exception of the German implementation of Art. 14(1)(c) EUTMD, i.e. referential use of a trade mark (case 6 U 29/19).