The Austrian Supreme Court had found in several judgments that a trade mark owner is entitled to the cancellation of a domain registration that infringed the rights of the trade mark owner. The Supreme Court's reasoning was that the risk of recurring infringement could not be avoided solely by changing the content of the website as the content could easily be changed again. This jurisprudence was heavily criticized on the ground that stopping the infringement does not necessarily require the cancellation of the domain registration.

In a recent judgment concerning the domain amade.at, which was found to infringe the Austrian trade mark Amadé, the Supreme Court made a sharp U–turn with respect to its former judgments by declaring that the entitlement to destruction based on the Austrian Trade Mark Act does not automatically lead to cancellation of the infringing domain registration.

As it is one of the basic principles of Austrian case law that the same standards to trade mark protection have to be applied online and offline, the Supreme Court had to distinguish the present case from a former case where it was found that the trade mark owner was entitled to destruction of re–imported original goods (whereas in this case the infringing status could have been easily abolished by re–exporting the original goods). In the view of the Supreme Court, the entitlement of the trade mark owner to destruction is justified if there is a typical risk that the infringing goods and implements may lead to further infringing acts in the future. However, merely being the owner of a domain registration that might previously have been used in an infringing manner does not result in a typical risk as such. However, such circumstances have to be strictly distinguished from other cases, where the mere ownership of a domain registration – as such – does inevitably lead to a trade mark infringement, for example in case of a famous trade mark. In these cases, as well as in cases of domain grabbing, the right owner is still entitled to cancellation of the infringing domain registration.

Thus, in view of this recent judgment, the trade mark owner will have to prove that the mere existence of domain registration or other infringement leads to the typical risk of future infringing acts in order to be entitled to destruction of the infringing goods (that is, cancellation of a domain registration).

Rainer Beetz

SONN & PARTNER Patentanwälte
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