What standards apply when assessing whether a certification mark has been infringed? To what extent do these differ from the standards for other types of trademarks? There is virtually no case law on certification marks in the EU. As far as we know, we have brought about the first higher court decision in the EU for our client. The Higher Regional Court of Stuttgart confirms a very broad protection of the certification mark and rejects objections such as exhaustion and authorized use in the event of non-compliance with the trademark statutes.

Certification marks

Since their introduction in Germany and the EU, certification marks still lead a niche existence. There is hardly any case law on certification marks in the EU. However, quality marks, quality seals and certificates that can be protected with certification marks are widely used and are particularly appreciated by many consumers looking for sustainable, environmentally friendly or socially responsible products.

However, many owners of quality marks and seals of approval have still not registered certification marks, but regular trademarks or collective marks.

Global Organic Textile Standard (GOTS)

The Global Organic Textile Standard (GOTS) is a globally uniform and applied standard that defines strict requirements for the ecological and social conditions in textile and clothing production using organically produced raw materials throughout the entire supply chain. The Global Organic Textile Standard (GOTS) is a standard with product chain certification. This means that for goods certified in accordance with the Global Organic Textile Standard (GOTS), each processing step or other change to products and their packaging may only be carried out by certified companies.

In addition, the Global Organic Textile Standard (GOTS) also includes, for example, regulations on transportation, storage and trade in GOTS goods. The Global Organic Textile Standard (GOTS) logo and the GOTS word mark have already been registered as such with the introduction of the Union certification mark. The regulations of the Global Organic Textile Standard (GOTS) are referred to in the trademark statutes of the certification marks.

If a certified product is modified or processed without certification, this product loses its certification. Any use for non-certified (pre)products is not permitted.

The certification mark also warrants compliance with social standards, e.g. the payment of minimum wages or environmental standards such as the absence of certain chemicals, such as those found in printing inks. The consumer can therefore expect that a product advertised or labeled with the certification mark meets these requirements. In the case of processing by non-certified companies, however, compliance with these requirements cannot be verified due to a lack of controls.

Advertising with GOTS

An online retailer based in Dresden sold fabrics by the meter, which it cut according to its customers’ specifications. The online retailer purchased GOTS-certified bolts of fabric and also offered these on its website as GOTS-certified fabrics in such a way that customers could order pieces of fabric cut to their specifications. The retailer then cut these to size, packaged them and sent them to the customer.

However, according to the brand statutes, activities such as cutting and repackaging may only be carried out by certified companies. However, the retailer in question was not a company certified in accordance with the Global Organic Textile Standard (GOTS).

After the regional court in the specific case had assumed that the retailer was still authorized to use the trademark, we appealed to the Higher Regional Court of Stuttgart.

Infringement of trademark statutes is an infringement of a certification mark

The OLG Stuttgart (Judgment of 18.08.2022 – Ref. 2 U 221/21 ) ruled in favor of our client and considered the advertising to be an infringement of a certification mark.

The question of whether someone is authorized to use a certification mark is determined exclusively by the trademark statutes, which specify the persons authorized to use the trademark and the conditions for using the trademark.

Even the repackaging without being certified violates the trademark statutes. The decisive factor was that the defendant did not resell the goods as it had received them.

The use is also unauthorized, as the defendant cannot invoke restrictions on the effect of the EU trademark or exhaustion under trademark law. The use is not in accordance with honest practices in trade or commerce, as it violates the requirements of the trademark statutes. There are also legitimate reasons on the part of the trademark owner to prevent the online retailer from using the trademark.

In the present case, it must be taken into account that the certification mark of the plaintiff is intended to guarantee a certain standard not only in the manufacture of the goods, but also in the trade with the goods, and the certification mark of the plaintiff cannot achieve this if its trademark may be used at further, subsequent stages of trade without the statutory provisions for this being complied with.

Conclusion

We have already registered many certification marks in many countries and have successfully conducted numerous proceedings in cases of infringement of a certification mark.

However, the decision of the Higher Regional Court of Stuttgart is now the first higher court decision and an important success for our client. It strengthens the integrity of the standard and consumer confidence.

The decision confirms the very broad scope of protection of the EU certification mark and takes into account the special features of the certification mark.

The central element is the trademark statute, which trademark owners should pay particular attention to when registering. After all, use is only permitted if the trademark statutes allow it.