When is a trade mark just a product designation?

Can a sign that looks more like a product code than a brand really be used as a trade mark. That was the uncomfortable question at the heart of the German Supreme Court’s decision in H 15 / HECHT H 15 (I ZB 30/25), a case that touches on some of the most practical pressure points of trade mark law, proof of genuine use, rolling use periods, regulatory classifications, and the idea of an independent distinctive role.

The dispute goes back a long way. In 2012, Hecht Pharma applied to register the German trade mark “HECHT H 15” for food supplements. Gufic opposed the application on the basis of its earlier German mark “H 15”, registered in 2008 for, among other things, medicinal products. Hecht challenged the opposition head on, arguing that Gufic had not genuinely used its mark.

Gufic’s answer was straightforward. It had been selling an Ayurvedic anti inflammatory product for arthritis related conditions under the designation “H 15 Gufic”. The German Patent and Trade Mark Office and, later, the German Patent Court accepted this as sufficient proof of use. The Supreme Court, however, was not convinced and sent the case back.

One of the first points the Court had to clear up was which period of use actually mattered. Because the opposition proceedings started in 2012, the case was governed by the old German Trade Mark Act, which implemented the 2008 Trade Mark Directive. Under that regime, proof of use can be required not only for the five years before publication of the contested mark, but also for the five years before the decision in the opposition proceedings. This rolling period moves the longer the case drags on.

The Court openly acknowledged that the EU courts have taken a dim view of such rolling periods in revocation actions. Still, it held that, under the 2008 directive, Member States were free to design their own opposition procedures. Since the directive did not harmonise the relevant five year period for use in oppositions, German law could stick with its rolling approach. The judges did, however, point out that this is no longer possible under the current Trade Mark Directive, which clearly ties proof of use in oppositions to the five years before the filing or priority date of the contested mark.

With the relevant period established, the Court turned to the substance of the use evidence and here it became more sceptical than the lower court.

It had little difficulty dismissing some of Hecht’s arguments. The fact that the German importer exported part of the goods was irrelevant. Once the products had entered Germany and were capable of creating or preserving a market share there, use in Germany was established. Likewise, the Court did not rule out genuine use merely because the medicinal product was not authorised EU wide. Under German law, it could still be supplied to pharmacies in small quantities.

The classification of the product as a medicinal product was also upheld. The Court relied on EU pharmaceutical law and confirmed that a product presented as treating or preventing disease qualifies as a medicinal product by presentation. Hecht’s attempt to confine the analysis to supposedly objective trade mark criteria went nowhere. EU pharmaceutical law expressly gives priority to the medicinal products regime in borderline cases, precisely to protect public health.

The real problem lay elsewhere, in the way the mark was used.

Gufic had not used “H 15” on its own, but always as “H 15 Gufic”. Trade marks, the Court emphasised, do not have to be used in isolation. Consumers are used to seeing more than one sign on a product, and a company name combined with another sign can perfectly well amount to the use of two trade marks.

But that does not mean every sign automatically functions as a trade mark in practice.

The lower court had been satisfied with the idea that “H 15” would be perceived as a product name or an indication of the product. For the Supreme Court, that was not enough. A sign only counts as being genuinely used if it is understood as an indication of commercial origin. With a designation consisting of a single letter and a two digit number, it is entirely plausible that consumers would see “H 15” as nothing more than an internal product designation within Gufic’s range, and regard only “Gufic” as the badge of origin.

Nor was the Court persuaded by the argument that “H 15” is distinctive in the abstract or that secondary marks are common in the pharmaceutical sector. Distinctiveness on paper does not answer the decisive question of how the sign is actually perceived in the specific form of use.

Because the lower court had not applied a sufficiently strict standard here, its decision could not stand.

Finally, the Supreme Court offered some familiar sailing instructions for the remitted proceedings. If genuine use were to be established after all, there would be a likelihood of confusion. Food supplements and medicinal products were of average similarity, the earlier mark’s distinctiveness was slightly below average, and “H 15” retained an independent distinctive role within “HECHT H 15”. Importantly, the Court confirmed that such an independent distinctive role does not require identical goods. Similarity is enough. Otherwise, owners of earlier marks would lose protection as soon as their sign was combined with a later company name or house mark.

Seen as a whole, the decision is a reminder of several uncomfortable truths. Once goods are placed on the market in the relevant territory, their later fate does not matter. Regulatory classifications can be decisive when assessing what goods are actually being used. And perhaps most importantly, registration alone does not guarantee that a sign will function as a trade mark in the real world. If a mark looks like a product code, it may well be treated like one by consumers, with potentially fatal consequences when proof of use is required.