This Class 46 member assumes that most readers of this blog have at least heard of the trade mark "VERSACE", as it is considered to be a (rather) well known trademark. However, would you link the below trade marks to VERSACE as well?

Or would you rather take these signs as being mere depictions of the famous Meduse of Phidias ?

Well, do not be disappointed if you did not recognize the signs as VERSACE's trade marks as apparently only 5% of the German consumers do so.

But lets start from the beginning. VERSACE filed a lawsuit against a producer of mosaics made of marble based on the above trade marks, which also cover "building materials, not of metal; furniture". The products in question were amongst others the mosaics shown below.

The defendant argued that the use of the image was merely decorative as it depicted the above shown Meduse of Phidial (by the way, a Roman copy of the 5th-century BC Greek original, i.e. the "Rondanini Medusa" may be seen in the Munich based Glyptothek). So the consumers would not perceive the images as a trade mark. Further he argued that the use of a work of art which fell in the public domain after having been protected by copyright may not constitute a use as a trade mark. The same should of course apply to works of art being so old that they never were protected by copyright, as in the present case presumably no copyright existed in the 5th century BC.

The plaintiff argued that not only the trade mark "VERSACE" but also the above device trade marks are well known and that therefore the consumers will recognize the images as VERSACE treade marks and would thus assume that the origin of the mosaics lies with VERSACE.

The lower instances (LG Frankfurt/Main, decision of 28.02.2008 - 3/10 O 113/07 and OLG Frankfurt/Main, decision of 01.10.2009 - 6 U 88/08) agreed with the plaintiff. Further the Higher Regional Court (OLG Frankfurt/Main) did deny a leave to appeal to the Federal Court of Justice (Bundesgerichtshof). However, the defendent filed an appeal against the denial of leave to appeal and the Federal Court of Justice decided to accept the case.

The responsible senate of the Federal Court of Justice stated that contrary to the opinion of the defendent a use of a work of art being part of the public domain may very well constitute a use as a trade mark. The question, whether such work of art may be protected as a trade mark at all, which is lively debated in literature, was, however, left unanswered as the Court had to respect the fact that the signs had been registered as Community trade marks in the first place.

With respect to the question, whether the head of the Meduse merely has a decorative effect in the products of the defendant or whether it constitutes a use as a trade mark, the senate pointed out that according to investigations of the Higher Regional Court only 5 % of the relevant public, i.e. average consumers in Germany recognize the images as trade marks of the plaintiff. Thus the Higher Regional Court based its assumption, according to which the head of the Meduse would be perceived as a trade mark (indication of origin) and not as a decorative element, only on a very small part of the consumers and not on the avarage consumer in general. As a consequence the senate came to the decision that the use of the head of the Meduse in the products of the defendent does not constitute a use as a trade mark and dismissed the case.

Case reference: Bundesgerichtshof I ZR 175/09, dating November 24, 2011. The decision can be retrieved from the court’s website by following the above link.