Luxury brands such as Bottega Veneta, Rolex and Ferrari are not only symbols of first-class craftsmanship and exclusivity, but also of decades of strategic brand management. The legal protection of these brands is essential in order to preserve their value and uniqueness. In Germany and at European level, the German Trademark Act (MarkenG) and the European Union Trademark Regulation (EUTMR) provide effective protection for all trademarks against (1) identical signs used for identical goods and services and (2) signs that are likely to be confused and used for similar products.
For trade marks whose reputation has been invested in over a long period of time and which are therefore well-known themselves, the law grants even more extensive protection. On the one hand, the trade mark must have established itself in wide sections of the population and, on the other, the trade mark must have acquired such an economic value, such an image, that this good reputation would be diluted by the use of a third party, even in a completely different area of goods or services. Such famous trade marks also have a significant intrinsic value beyond the specific sector in which they have been registered, which must be preserved and increased.
In its L'Oreal/Bellure decision, the European Court of Justice noted that competitors of such luxury companies attempt to exploit ‘without any financial consideration and without having to make any effort of their own to do so, the economic efforts made by the trade mark proprietor to create and maintain the image of that trade mark’. The law therefore also grants such trade marks protection against the exploitation or dilution of their reputation outside of the specific products for which they are registered.
For example, a manufacturer of luxury watches could protect its trade mark against use by a company offering inferior electronic products if such use could damage the distinctive character or reputation of the luxury trade mark. And this even though luxury watches and, for example, pocket calculators are not similar. The extended protection of well-known trade marks under §§ 9 (1) No. 3, 14 (2) No. 3 MarkenG and Art. 9 (2) (c) EUTMR therefore applies here.
Another striking example from German practice is the Jumping Poodle case: Puma successfully took action against a trademark parody artist who used the Herzogenaurach-based company's logo in a modified form with a poodle without authorisation. Puma argued that the use of the logo diminished the value and reputation of the brand. The value of the trade mark protected under Article 14 of the Basic Law must also prevail over parodies protected by artistic freedom. The Federal Court of Justice confirmed this and prohibited the use.
Incidentally, the highest level of protection among the trade marks affected is afforded to well-known trade marks under § 4 No. 3 MarkenG, Art. 6bis Paris Convention. Such global trade marks, which are known to almost everyone internationally, even enjoy protection in countries where they are not registered - without any trade mark registration.
For owners of luxury brands, legal trade mark protection is an essential instrument in the management of brand reputation. It is the only way to ensure that the exclusive positioning and image of the brand are not undermined by unauthorised third parties. Consistent protection against trade mark infringements helps to maintain customer trust and ensure the long-term success of the brand. Luxury brands should therefore always remain vigilant and actively defend their trademark rights in order to preserve their uniqueness and exclusivity. This applies not only to classic products, but also in the digital space, where counterfeiting and fakes such as NFTs pose a growing threat. A proactive legal strategy and regular monitoring of the market are therefore essential to safeguard the brand's first-class reputation and integrity in the long term.