Germany: Business bases opposition against trade mark on company name

October 19 2018

In a decision handed down on January 16 2018, the German Federal Patent Court confirmed that an opposition against a trade mark can be based on a company name (28 W (pat) 7/16 - eberth/EBERTH).

In 2013, the applicant filed for registration of the device mark EBERTH claiming protection for machines in Class 7. An opposition against this trade mark was filed based on the opponent's company name Eberth. As evidence for the existence of this right, the opponent submitted a business letter from the year 1990, an offer letter from 1992, an order confirmation from 2007 as well as invoices from 2005 to 2015, all referring to either eberth group, www.eberth.com and/or eberth MASCHINEN- UND ANLAGENBAU. The Court found that these documents were suitable to evidence the use and therefore existence of the prior company name eberth in Germany in connection with the production and sale of transportation and packaging apparatus and installations before the application date of the contested mark. The Court therefore upheld the opposition. The Court confirmed that rights to a company name may not only be invoked against another company name but also against use (and registration) of a sign as trade mark, because a trade mark designates the commercial origin of a product of a specific undertaking and therefore, indirectly, also designates the company behind the product.

This decision is in line with the German Trade Mark Act and recent case law. It is therefore not surprising, but it does emphasise the importance of rights for a company name or other business names. Such rights are often ignored or considered to be of minor effectiveness. For example, unlike a national German trade mark, a company name is not automatically protected in the whole territory of the Federal Republic of Germany. Also, rather than simply referring to a registered list of goods and services of a trade mark, it may be more difficult to provide evidence for exactly which goods and services a company name has been used. However, if done correctly, such rights to a company name can be a very effective way of enforcing a company's rights against third parties. For example, the required level of distinctiveness for a company name is lower than that required for a trade mark. Also, single elements of a company name like eberth may be protected even when embedded in a longer name like eberth MASCHINEN- UND ANLAGENBAU. Thus, where appropriate, owners of a company name may wish to consider the possibility of enforcing such rights against third parties, even where trade marks are concerned, rather than other company name rights.