JUNE 2008
Court limits scope of protection of CTMs
Alexander Klett explains why a recent decision could make it harder to enforce CTMs against infringing company names in Germany
| One-minute read |
| Trade mark owners sometimes want to take action against a third-party use that is not on goods or services but in a company or trading name. German law has traditionally understood that such use can amount to infringement, but a recent decision by the highest civil court in a case involving the Home Depot mark has shattered this view as far as Community trade marks are concerned. This decision came just days after the ECJ's ruling in Céline, where the Court said that if the use only relates to a company name, and is not on goods or services, there is no infringement. The situation in Germany appears now to be that national trade marks have broader protection in this respect than CTMs, which may make it desirable to register marks nationally. Other EU member states, however, appear to take different approaches. |
Trade mark owners sometimes become aware of the use of a mark by a third party not on goods or immediately together with the provision of a service, but as a company or trading name. This raises the question whether such use may qualify as trade mark infringement. The understanding under German trade mark law has long been that trade marks cannot only be infringed by the use of an identical or confusingly similar designation by a third party on goods or in relation to the provision of services, but also by the use of the designation as a company name. A recent decision by the highest German civil court, which followed an immediately preceding decision by the European Court of Justice, has shattered this view to the extent it related to infringements of Community trade marks (CTMs). As a consequence, trade mark owners may have to reconsider their prosecution strategy and think twice about whether to rely solely on CTMs for protection in Germany.
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