New ways of chasing trademark infringers - The “Tork” decision and unauthorised refills
Everyone has experienced no-name refills for brand products in his daily life, such as when getting in touch with liquid soap, beverage and candy dispensers, coffee capsules, ink cartridges and many more. Is there a way to pursue infringers if such refills infringe trademark rights?
Yes, there is - according to the recent decision of the German Federal Court of Justice (Bundesgerichtshof - BGH), 17 October 2018 – I ZR 136/17.
The BGH decided that a trademark infringement is given if a refillable container marked with the original manufacturer's trademark is refilled with goods from another manufacturer, provided that the consumer understands the mark on the container as an indication not only of the commercial origin of the container but also of the commercial origin of its content. Whether the consumer perceives the latter is influenced by whether the refillable product itself bears a recognisable mark and whether the public is accustomed to the container being filled with goods from other manufacturers. Moreover, the relevance of trademarks in the product area at issue can also influence the perception of consumers.
In the “Tork” case all prerequisites have been met regarding the refill of “Tork” containers with no-name, non-branded paper towels.
Does this mean that every refill not authorized by the owner of the trademark on the container is an infringement? Of course not, “it always depends” as the lawyer likes to say. The BGH stated explicitly that this does not account for refillable containers where the consumer is accustomed to replacing the refill by himself, inter alia with vacuum cleaner bags, razor blades, coffee capsules, ink and toner cartridges etc. The court argued that regarding the “Tork” dispenser, the consumer does not have any insight into the refilling process.
Another exception are refills that are visibly branded by another company. In the past the BGH (16 March 2006 – IZR 51/03) decided that a metal soap dispenser that maintains the visibility of the detergent’s brand does not lead to a likelihood of confusion.
Who do you chase if you own a well-established brand that is hit by cheap and ruthless refills? One option is to go after the direct infringer who enacts the refills himself (this would include the possible targets of e.g. operators of public washrooms, hotels, restaurants and companies). Another strategy to pursue would be suing the manufacturer of the “no-name” or third-party refill product who aids the direct infringer. As in the “Tork” decision, the manufacturer that even advertised to produce paper towels that fit especially into “Tork” paper towel dispensers and supplied the direct infringer is aiding the trademark infringement.
How on the other hand can manufacturers of “no-name” or third-party refill products protect themselves: In order to fall out of the BGH’s set grid, manufacturers could think of branding their “no-name” refill products in a way that excludes a likelihood of confusion. However, this remains difficult if the product itself cannot be branded due to its nature and outward appearance.
