[co-author: Nikolaus Von Bargen]

In the case “Tork”, for which the judgement was released earlier this year, the Federal Supreme Court (FSC) had to decide to what extent “aiding and abetting trademark infringement” is constituted if paper towels are advertised as being suitable for a particular dispenser.

Background

The plaintiff sells hygiene products worldwide, including a trademark-protected paper towel dispenser. It also sells compatible paper towels under the same trademark.

The defendant sells paper towels and marketed a range of products as “suitable for” the plaintiff’s paper towel dispenser.

The plaintiff considered the filling of the dispenser with the secondary market product to be a trademark infringement and therefore took action against the defendant. However, it was unsuccessful in the proceedings before the District Court and the Higher District Court (HDC).

Decision

After the FSC reviewed the legislation, the case has been handed back to the lower court. The FSC agreed with the HDC in that the defendant could not be the perpetrator of the trademark infringement as it did not fill the dispenser itself, but that it would have been aiding and abetting through its advertising.

However, the FSC disagrees with the lower court’s assessment of the prevailing public, which stated that;

• the average consumer would be used to the fact that a towel dispenser is more than a mere packaging of the products it contains;
• and that, accordingly, the consumer (as, for example, with ink cartridges and vacuum cleaner bags) would not assume that the trademark on the dispenser also refers to the towels inside.

The FSC disagrees with this general approach, stating that the prevailing public understanding must be established in the case at hand. In this context, it would have to be examined, for example, whether the products to be refilled were provided with a trademark (probably not), whether the actual consumer refilled the container (again, unlikely) and whether the public was used to a dispenser being filled with products from another manufacturer.

The HDC therefore must re-assess the public and could then make a final decision.

Comment

With this judgment, the FSC establishes some valuable criteria for assessment of “aiding and abetting trademark infringement”:

• Do the secondary goods (refills) carry the plaintiff’s own trademark?
• Are the secondary goods (refills) installed by the actual consumer?
• What is the common practice for installing the secondary goods (refills)?

On the basis of these criteria, both the suppliers of the original product and the suppliers of the secondary product can examine how they may market their product before costly legal disputes arise.

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