H 15 - Too unusual to be used as a trade mark?
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Marcel Pemsel
Feb 13, 2026, 12:28:30 PM (3 days ago) Feb 13
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H 15 - Too unusual to be used as a trade mark?
In its decision H 15/Hecht H 15
(case I ZB 30/25), the German Supreme Court dealt with several core
issues of trade mark law: the relevant period for proof of use in
opposition proceedings, the relevance of pharmaceutical regulation for
defining “medicinal products”, the standard for assessing genuine use
where an “unusual” mark is used together with a company name, and the
concept of independent distinctive position.
Background
In 2012, Hecht Pharma GmbH (“Hecht”) filed for registration of German trade mark “HECHT H 15” for “food supplements” in class 5.
Gufic Biosciences Ltd. (“Gufic”) filed an opposition on the basis of its earlier German trade mark “H 15”, which was registered in 2008, inter alia, for “medicinal products” in class 5.
Hecht disputed the genuine use of Gufic’s earlier mark. Gufic claimed that it had used “H 15 Gufic” for an anti-inflammatory Ayurvedic medicinal product for the treatment of arthritis, osteoarthritis and rheumatoid spondylitis.
The German Patent and Trade Mark Office (“GPTO”) upheld the opposition. Hecht’s appeal to the German Patent Court (“GPC”) was unsuccessful, so they appealed to the German Supreme Court.
The German Supreme Court’s decision
The judges upheld the appeal and referred the case back to the GPC.
The Court did not approve the GPC’s finding that Gufic had established genuine use. This issue had to be decided under the German Trade Mark Act that was in force until 2019 (which was based on the Trade Mark Directive 2008/95/EC (“TMD 2008”)) because the opposition proceedings commenced in 2012 under the old law.
1. Rolling period of use
The old German Trade Mark Act provided that the opponent had to establish genuine use for (1) the five-year period prior to the publication of the registration of the earlier mark and (2) the five-year period prior to the hearing or, if no hearing is held, the decision of the GPTO or, upon appeal, the GPC, in both cases (1) and (2) provided that the earlier mark has been registered for more than five years (Sec. 43(1) German Trade Mark Act). This last period is also called “rolling period of use” (“wandernder Benutzungszeitraum”) because the longer the proceedings take, the further it moves.
Since the earlier trade mark was registered in 2008 and the contested mark’s registration was published in 2012, Gufic was not required to establish genuine use for the five years prior to the contested mark’s publication.
However, Gufic’s trade mark was registered for more than five years at the hearing before the GPC in November 2024.
The first interesting question was whether the “rolling period of use” was in compliance with the TMD 2008. The judges acknowledged that the Court of Justice of the EU (“CJEU”) held in Husqvarna that the rolling period of use in German law for a non-use revocation action was not in compliance with Art. 51 EUTMR 2009. The CJEU argued, inter alia, that the revocation of a trade mark may not depend on the duration of the national proceedings.
However, the German Supreme Court considered that they could maintain the rolling period of use for opposition proceedings under the TMD 2008. They found that this directive did not provide rules for opposition proceedings. Recital 6 allowed Member States to enact their own procedural rules, including for oppositions. The rolling period of use was based on Art. 11(2) TMD 2008, which allowed Member States to provide that oppositions may be rejected if the earlier mark has not been used for a consecutive period of five years without mentioning the relevant period.
Thus, TMD 2008 did not harmonize for which five-year period for which genuine use must be established.
The judges acknowledged that the situation is different with respect to the currently applicable Trade Marke Directive 2015/2436. It stipulates that proof of use can only be requested in opposition proceedings for the five years prior to the filing or priority date of the contested mark (provided that the earlier mark has been registered for more than five years at that date).
2. Genuine use established?
Now that the relevant period was clear, the Court assessed Hecht’s attacks on the GPC’s decision to accept genuine use.
a. Sale to German importer
Gufic sold and shipped its products to a German reseller, who sold them to German pharmacies but also exported them. The Court deemed the subsequent export irrelevant for the finding of genuine use. The goods reached Germany and were objectively capable of creating or preserving a market share.
b. Illegal import
The Court left open the question whether genuine use can be accepted where the goods may not be lawfully marketed in Germany. Even though the pharmaceutical sold by Gufic was not admitted in the EU, they could rely on an exception under German law and sell it to pharmacies in small quantities.
c. Use for medicinal products
Hecht argued that the GPC wrongly considered the product, for which Gufic used its trade mark, to be a medicinal product.
For the purpose of defining “medicinal product”, the Court referred to Art. 1 Nr. 2 of Directive 2001/83/EC and confirmed that Gufic’s good qualifies as a medicinal product by presentation, i.e. it was presented as having properties for treating or preventing disease in human beings.
Hecht argued that only objective criteria may be considered in the assessment whether a good is a medicinal product under trade mark law. The judges rejected this argument, holding that this would run counter to the legislator’s intention in pharmaceutical law. Art. 2(2) of Directive 2001/83/EC states that in cases of doubt where a product, taking into account all its characteristics, could fall under the definition of a “medicinal product” as well as under the definition of a product regulated by other EU legislation, Directive 2001/83/EC shall apply. This reconciles the requirements of legal certainty for economic operators with the requirements of quality, safety and efficacy of medicinal products for human use.
d. Use of “H 15” as “H 15 Gufic”
The main issue of the decision was whether the following use constitutes genuine use or whether the earlier trade mark’s distinctive character was altered:
The judges recalled that trade marks need not be used in isolation.
Consumers are accustomed to two marks being used on the same product. A
composite sign in which one part is a company name is likely to be
perceived as consisting of two separate trade marks.
The Court confirmed the GPC’s finding that “Gufic” will be perceived as a company name. This was clear from the indication of the manufacturer on the packaging.
However, the judges found that the GPC applied too low of a threshold for accepting that “H 15” was understood as a separate trade mark. The lower court merely argued that “H 15” will be perceived as “an indication of the product” or “a product name”. Such findings are not, according to the judges, sufficient to conclude that “H 15” functions as an indication of commercial origin. Due to the character of the sign (a single letter followed by a double-digit number), it is conceivable that the public merely understands it as the name of the product within the manufacturer’s product range and only sees “Gufic” as an indication of commercial origin.
Likewise, the judges were not convinced by the argument that “H 15” is distinctive and not used in a descriptive manner. This does not allow the conclusion that it is perceived as an indication of origin.
Further, the fact that consumers are used to secondary marks in the pharmaceutical sector was, in itself, not sufficient to justify the finding that “H 15” was perceived as a separate indication of commercial origin.
For this reason, the Court annulled the GPC’s decision and referred the case back.
3. Sailing instructions
As the Court frequently does, it provided guidelines for the GPC's new decision (commonly called “sailing instructions”).
If the GPC considered genuine use to be established, the judges agreed that a likelihood of confusion existed.
The goods “food supplements” of the contested mark were of average similarity to “medicinal products” of the earlier mark.
The distinctiveness of the earlier mark was slightly below average.
The judges also confirmed the finding of indirect confusion between the trade marks because “H 15” retained an independent distinctive role in the contested sign.
Hecht argued that the CJEU required identical goods and services for a finding of an independent distinctive role in Medion (IPKat here). The judges disagreed. The CJEU’s reasoning was deemed general in nature. The owner of an earlier mark would lose its exclusive right if the earlier mark could simply be combined with a later well-known mark or company name and not constitute infringement. Therefore, it is sufficient for a likelihood of confusion that the public, on account of the independent distinctive role retained by the earlier mark in the later mark, also associates the proprietor of that mark with the origin of the goods or services covered by the composite later mark.
Further, the Court interpreted BGW (case C-20/14) in a way that the CJEU confirmed an independent distinctive role where the goods and services are only similar.
Comment
The key takeaways from the decision:
1. Once goods are placed on the market in the territory of protection, it does not matter what happens to them. They can be exported out of that territory right away and never reach the end-consumer.
2. The regulatory classification of a product under EU norms can be decisive in the assessment of whether a specific good is covered by the specification of the trade mark. This is in line with the case law of the EU courts. While regulatory provisions are generally not decisive for the interpretation of the Nice classification and terms in the list of goods and services, they are relevant for classifying the actually used goods (e.g. case T-346/21 at paras. 95 et seq.).
3. Registration does not guarantee that a sign will function as a trade mark in practice, especially where it looks like a mere product code.
The Court confirmed the GPC’s finding that “Gufic” will be perceived as a company name. This was clear from the indication of the manufacturer on the packaging.
However, the judges found that the GPC applied too low of a threshold for accepting that “H 15” was understood as a separate trade mark. The lower court merely argued that “H 15” will be perceived as “an indication of the product” or “a product name”. Such findings are not, according to the judges, sufficient to conclude that “H 15” functions as an indication of commercial origin. Due to the character of the sign (a single letter followed by a double-digit number), it is conceivable that the public merely understands it as the name of the product within the manufacturer’s product range and only sees “Gufic” as an indication of commercial origin.
Likewise, the judges were not convinced by the argument that “H 15” is distinctive and not used in a descriptive manner. This does not allow the conclusion that it is perceived as an indication of origin.
Further, the fact that consumers are used to secondary marks in the pharmaceutical sector was, in itself, not sufficient to justify the finding that “H 15” was perceived as a separate indication of commercial origin.
For this reason, the Court annulled the GPC’s decision and referred the case back.
3. Sailing instructions
As the Court frequently does, it provided guidelines for the GPC's new decision (commonly called “sailing instructions”).
If the GPC considered genuine use to be established, the judges agreed that a likelihood of confusion existed.
The goods “food supplements” of the contested mark were of average similarity to “medicinal products” of the earlier mark.
The distinctiveness of the earlier mark was slightly below average.
The judges also confirmed the finding of indirect confusion between the trade marks because “H 15” retained an independent distinctive role in the contested sign.
Hecht argued that the CJEU required identical goods and services for a finding of an independent distinctive role in Medion (IPKat here). The judges disagreed. The CJEU’s reasoning was deemed general in nature. The owner of an earlier mark would lose its exclusive right if the earlier mark could simply be combined with a later well-known mark or company name and not constitute infringement. Therefore, it is sufficient for a likelihood of confusion that the public, on account of the independent distinctive role retained by the earlier mark in the later mark, also associates the proprietor of that mark with the origin of the goods or services covered by the composite later mark.
Further, the Court interpreted BGW (case C-20/14) in a way that the CJEU confirmed an independent distinctive role where the goods and services are only similar.
Comment
The key takeaways from the decision:
1. Once goods are placed on the market in the territory of protection, it does not matter what happens to them. They can be exported out of that territory right away and never reach the end-consumer.
2. The regulatory classification of a product under EU norms can be decisive in the assessment of whether a specific good is covered by the specification of the trade mark. This is in line with the case law of the EU courts. While regulatory provisions are generally not decisive for the interpretation of the Nice classification and terms in the list of goods and services, they are relevant for classifying the actually used goods (e.g. case T-346/21 at paras. 95 et seq.).
3. Registration does not guarantee that a sign will function as a trade mark in practice, especially where it looks like a mere product code.
4. The concept of idependent distinctive role also applies where the goods and services are only similar.
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