The First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for trademark law, has ruled on the scope of protection of a famous trademark.
The plaintiff, Volkswagen AG, is the proprietor of the Community trademark 'VOLKSWAGEN', registered for vehicles, their repair, and vehicle parts.
The defendants are a company affiliated with the Springer Group, which operates the online presence of the BILD newspaper (Defendant 1), and A.T.U. Auto-Teile-Unger Handels GmbH & Co. KG, which maintains a network of brand-independent automotive workshops (Defendant 2).
Since 2002, Defendant 1 has organized campaigns with cooperation partners, marketing vehicles and services that include the prefix "Volks" followed by an additional term (e.g., Volks-Spartarif, Volks-Farbe, Volks-DSL). In 2009, the defendants conducted two such campaigns, where Defendant 2 provided vehicle inspection services under the designation "Volks-Inspektion" and offered tires as "Volks-Reifen". In the promotional material, Defendant 2 was referred to as "Volks-Werkstatt".
The plaintiff initiated legal proceedings against the defendants for infringement of its well-known trademark "VOLKSWAGEN". The Regional Court ordered the defendants to cease and desist, provide information, and pay damages. The Court of Appeal subsequently dismissed the action. However, the Federal Court of Justice overturned the appellate court's decision and remanded the case for further proceedings.
Contrary to the Higher Regional Court, the Federal Court of Justice did not exclude the possibility that the designations "Volks-Inspektion", "Volks-Reifen", and "Volks-Werkstatt" infringe the plaintiff's well-known trademark. Well-known or even famous trademarks are afforded a broad scope of protection. This implies that a considerable distance must be maintained from the well-known trademark when using other signs. Trademark infringement is established if the public, due to the defendants' use of "Volks-Inspektion", "Volks-Reifen", and "Volks-Werkstatt", assumes economic or organizational ties to the plaintiff, or if such use impairs the distinctive character of the well-known "VOLKSWAGEN" trademark. The Federal Court of Justice held that the Higher Regional Court had not sufficiently accounted for this extensive protection afforded to well-known trademarks. Consequently, the Federal Court of Justice remanded the case for the necessary findings regarding trademark infringement to be made.
Judgment of the Federal Court of Justice of April 11, 2013 – I ZR 214/11 – VOLKSWAGEN
Lower Courts:
Higher Regional Court of Munich – Judgment of October 20, 2011 – 29 U 1499/11
(GRUR-RR 2011, 449 = WRP 2012, 354)
Regional Court Munich I – Judgment of February 22, 2011 – 33 O 5562/10
Source: Press release of the Federal Court of Justice
Attorney Michael Ullrich, LL.M. (Information Law)
Specialist Attorney for Information Technology Law
Email: info@goldberg.de
