Sufficient documentation and storage of corresponding documents as proof of genuine use of a trademark is frequently neglected. The requirements regarding necessary documents are quite high, especially in proceedings before the EUIPO.
Unfortunately with using a trademark, it is often neglected to ensure that the trademark is used in a form that also constitutes genuine use in the legal sense. There are many aspects to consider, especially when using a trademark in the context or in conjunction with other graphic elements or words.
In the judgement I ZB 6/16 – Dorzo the BGH clarifies the requirements regarding use in conjunction with other words.
The addition of an otherwise unchanged brand by additions does not constitute use of the mark in the registered form in accordance with § 26 para. 1 German Trademark Law, if the additions are discernibly associated with the sign. In this case, it is a use of the trademark in a form other than the registration (§ 26 para. 3 sentence 1 MarkenG).
The ECJ had previously stated in the case C‑252/12 that the issue was similar but nevertheless diverging in detail:
The superimposition of the word sign ‘Specsavers’ over the wordless logo mark changes the form in which that trade mark was registered, in so far as it is not a mere juxtaposition, since certain parts of the wordless logo mark are thereby hidden by the word sign.
It follows that the use of the wordless logo mark with the superimposed word sign ‘Specsavers’, even if, ultimately, it amounts to a use as a part of a registered trade mark or in conjunction with it, may be considered to be a genuine use of the wordless logo mark as such to the extent that that mark as it was registered, namely without a part of it being hidden by the superimposed word sign ‘Specsavers’, always refers in that form to the goods of the Specsavers group covered by the registration, which is to be determined by the referring court.
That conclusion is not affected by the fact that the word sign ‘Specsavers’ and the combination of the wordless logo with the superimposed word sign ‘Specsavers’ are also registered as Community trade marks.
… the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.
It can therefore be stated that individual cases must be carefully examined and that small aspects or additions, such as “®”, can play a decisive role.