„The North Face“ „The North Face“ vs. „The Dog Face“
Can dog owners who do sports and wear “The North Face” now do their outdoor sports in a partner look with their pet? At least that’s what you might think when dog clothing is advertised with the name “The Dog Face”. The name sounds familiar, because it is associated with the outdoor and lifestyle brand “The North Face” – at least that’s how the well-known clothing manufacturer saw it and went to court.
It is becoming increasingly common for small companies to use the familiarity of major brands to advertise their own products. The exploitation of well-known trademarks or catchy design language creates a familiar feeling among customers and influences their buying behavior. The exploited appreciation gives less established companies a better market position, much to the annoyance of the established brands. After all, a brand’s products are creative services that determine the company’s value. To ensure that companies remain the sole users of their innovative services, they must protect their intellectual property. Trademark law serves to protect against the exploitation of a company’s own reputation. A trademark is protected if it is registered. According to the German Trademark Act, registration can take place at the German Patent Office, or at the EU level – at the Office for Harmonization in the Internal Market. Once the trademark has been registered, the following principle applies: competitors may no longer advertise their products under this brand name. If they do so, they may be entitled to injunctive relief or monetary compensation. It is important to note that not only brand names can be registered. Combinations of words and images or simple figurative representations such as the “Nike Swoosh” can also be protected under trademark law. This is also the case with “The North Face”, whose brand name and logo are protected under trademark law.
In the case in question, the OLG Frankfurt has now ruled by order that animal clothing may not be marketed with “The Dog Face”. Initially, the Frankfurt Regional Court had decided otherwise and dismissed the injunction claims asserted by “The North Face” in an urgent proceeding. On appeal, the Frankfurt Higher Regional Court amended this decision to the effect that the pet clothing company must now refrain from using the brand name and the well-known logo. According to the court, there is a similarity between “The Dog Face” and “The North Face”, which is causing damage to “The North Face” and exploiting its reputation in a “parasitic manner”.
In support of its decision, the court states that “The North Face” is a well-known mark within the meaning of the EU Trade Mark Regulation [Regulation (EU) 2017/1001]. It is known to a significant part of the public.
It is true that there is no likelihood of confusion between the names “The North Face” and the name “The Dog Face” used by the animal clothing manufacturer. This is because the words “Dog” and “North” are recognizably different. However, exact copying is not a prerequisite for injunctive relief under Article 9 2 lit. c) of the Regulation. Sufficient is a similarity which causes the relevant public to form a mental link between the two signs. This is the case, according to the Higher Regional Court of Frankfurt. It is true that the words “dog” and “north” are recognizably different for third parties. The similarity lies in the fact that the word sequence “The Dog Face” is clearly recognizable as being based on “The North Face”. Due to the high degree of recognition of the trademark and the fact that there is a certain similarity between the goods offered, the court assumes that the two companies are mentally linked to each other.
The animal clothing company is now no longer allowed to profit from this link. But perhaps The North Face will soon launch its own animal clothing line. Then sports enthusiasts will indeed soon be able to dress as partners with their dogs.