Secondary mark
needs
Indication of origin.
Secondary mark
needs
Indication of origin.
from
Is it sufficient if a sign only functions as a product name? And can “independent distinctive character” also play a role for similar goods?
Product name just decoration or a real trademark?
Do you really use your trademarks in a rights-preserving manner or do you blindly rely on the entry in the register? Especially when a strong umbrella brand dominates the packaging, the product label (the secondary mark) is often degraded to a mere model designation. A recent decision by the Federal Court of Justice shows how quickly trademark rights can be lost here – and why the clock for proof of use never stops ticking.
The danger in the shadow of the umbrella brand
It is common practice in marketing: an umbrella brand vouches for quality, the name of the product as a secondary mark for the specification. However, such duplication can cause legal problems.
If two signs are permanently used together (e.g. “VW Golf” or “Bayer Aspirin”), the decisive question often arises in the event of a dispute: Is the second mark still perceived by the public as an independent indication of origin? Or does it merge with the umbrella brand to form a single entity? There is a lot at stake for the trademark owner: If the right-preserving trademark use is denied, the trademark is ready to be canceled – and the way is clear for competitors . This ruling is particularly relevant in the pharmaceutical and technology sectors, where abbreviations and number combinations are the order of the day.
The case: Dispute over the abbreviation “H 15”
In this case, two parties were in dispute over the likelihood of confusion in relation to medicinal products and food supplements. The owner of the earlier trademark “H 15” took action against the later trademark “Hecht H 15”. The earlier trademark was used for an ayurvedic frankincense preparation, but it almost always appeared on the packaging as “H 15 Gufic” (where “Gufic” referred to the manufacturer).
The competitor argued that the abbreviation “H 15” was not used as an independent trademark, but only as a descriptive addition to the manufacturer’s name. Moreover, the relevant period for the proof of use had long since expired.
After the opposition was successful at the German Patent and Trademark Office and the Federal Patent Court, the case was appealed to the Federal Supreme Court. It was successful there.
The decision of the Federal Court of Justice
The Federal Court of Justice has ruled Decision of 20.11.2025 – Ref. I ZB 30/25 annulled the decision of the Federal Patent Court and referred it back. Although the lower court correctly classified many aspects of the question of use preserving rights (import can be sufficient; product can be a medicinal product; different form of use can be harmless), it did not clearly establish a central point, namely whether “H 15” was used as a trademark at all in the specific case.
The “wandering period of use”
An important aspect of the ruling concerns the period for which use must be proven. As the opposition was filed back in 2012, the Federal Court of Justice still applied the old trademark law here. The court confirmed the principle of the rolling period of use for these “old cases”. This means that the relevant 5-year period is not static, but is pushed back further and further in the course of the proceedings – until the end of the oral hearing in the factual instance. This means that anyone who is still using their trademark at the start of the proceedings but stops using it during the legal dispute, which often lasts for years, loses their claims under the old law.
Note on the current legal situation: For new opposition proceedings (since 14.01.2019), the “wandering period of use” has been abolished. According to the current legal situation, the five-year period prior to the filing or priority date of the challenged trademark is now primarily decisive. Use up to the date of the decision no longer has to be proven separately in opposition proceedings. This creates more legal certainty, but also means that the status of the trademark at the time of the collision is decisive.
The secondary mark must remain “indicative of origin”
In terms of content, the Senate dealt intensively with the question of when a combination of manufacturer’s name and product mark is considered to be use of the individual components. The result: A secondary mark is only used to preserve rights if the public sees it as an independent indication of origin and not just a mere indication of quality or an order code.
A trademark is used in a way that preserves rights if the relevant public equates the goods for which the trademark is actually used with the goods for which the trademark claims protection.
The findings of the Federal Patent Court in this regard were not sufficient. Specifically, the judges in Karlsruhe were bothered by the fact that with a sign such as “H 15” it is plausible that consumers only see a product range or preparation designation in it – and the actual indication of origin exclusively in “Gufic”. It is precisely this alternative that the lower court should have seriously examined and substantiated.
Risk of confusion
With regard to the (subsequent) likelihood of confusion, the Federal Court of Justice backs the Federal Patent Court in its conclusion: The case group “likelihood of confusion in the broader sense” due to the independently distinctive position of the earlier trademark in the later one is not limited to identity of goods; it can also be considered for similar goods.
In the specific case, the Federal Court of Justice held that the Federal Patent Court did not err in law in assuming the independent distinctive character of “H 15” in “Hecht H 15” due to the market circumstances (including proximity between pharmaceuticals and food supplements in the specific constellation).
Effects on practice
This decision means that companies need to take concrete action to prevent the loss of valuable trademark rights.
Visual separation is mandatory
Companies should not rely on their product logo being “somehow” recognized as a trademark alongside the company logo. A clear visual separation, different fonts, colors or a spatial distance on the packaging can help to underline the independent character of the secondary brand.
Be careful with “talking” abbreviations
Combinations of letters and numbers (as in the case of “H 15”) are often perceived by the public as a type designation rather than a trademark. The requirements for proof of use are particularly high here. The more descriptive a sign appears, the more dominant it must be graphically emphasized in order to be considered a trademark.
Conclusion
The requirements for trademark use of a secondary brand can be high. Companies should take appropriate measures to ensure that the secondary brand is understood as an independent indication of origin.
At the same time, the Federal Court of Justice confirmed this: Anyone who integrates third-party trademarks into their own labelling (such as “H 15” in “Hecht H 15”) cannot argue that their own added company name would “neutralize” the situation.
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