POOLish Handels GmbH, represented by SKW Schwarz, has come out victorious in the dispute over the “POOL” trademark. In the second instance, Berlin Court of Appeal rejected likelihood of confusion between the trademarks POOL and POOL (Berlin Court of Appeal 5 U 148/17, November 20, 2018).
The action was brought by the owner of the word and figurative mark “POOL” that had been registered at the German Patent and Trade Mark Office in 1976 (registration no. 947413) with the aim of prohibiting POOLish GmbH, which operated an online presence and a retail shop in Munich, from using its trademark POOL, registered in 2011 (registration no. 302010067182). POOLish had been using the POOL mark for over 20 years as the company name for a clothing store in Munich. In addition, it operated an online store at verypoolish.com, which had been ranked no. 1 in Google search hit lists for the search term “pool” since 2009. The sign “VERYPOOLISH.COM” was used on the website itself. In addition, the POOL brand was applied to “Moon Boots” and T-shirts.
The Court of Appeal denied likelihood of confusion between POOL and POOL on several grounds. In essence, it held that POOLish GmbH had not used the contested designation POOL as a trademark, but only as a company name. This applied both to the use of the sign “VERYPOOLISH.COM” on the defendant’s website and to the use of the sign POOL on the company nameplate. One of the shoes featured the POOL sign, however, only in conjunction with the sign “Moon Boot” next to it. According to the court, the relevant public would therefore only consider POOL as a model designation. One of the T-shirts showed the sign POOL jointly with the number 12, where POOL would only be perceived as a decorative element, however.
Ultimately, the Court of Appeal also did not see that the earlier trade mark POOL has been genuinely used, which the applicant intended to base on the sale of T-shirts. Even considering a sale of 4,427 units, the court found that this could not justify use preserving the proprietor’s rights relating to T-shirts. Since T-shirts are mass-produced goods, such small quantities merely indicated a symbolic act of use.
As a result, SKW Schwarz client POOLish may continue to use the “POOL” sign and will not be forced to delete the trademark.Contact for additional questions:
Margret Knitter, LL.M.
Rechtsanwältin, Certified Specialist in IP
SKW Schwarz Rechtsanwälte
T +49 (0)89 28 64 firstname.lastname@example.org