The First Civil Senate of the Federal Court of Justice, which is responsible among other things for trade mark law, has ruled on the question of the scope of protection of a famous trade mark.
The applicant, Volkswagen AG, is the proprietor of the Community trade mark "VOLKSWAGEN", which is registered for vehicles and their repair and vehicle parts.
The defendants are a company belonging to the Springer group, which operates the website of the BILD newspaper (defendant 1), and A.T.U. Auto-Teile-Unger Handels GmbH & Co. KG, which has a branch network of brand-independent motor vehicle workshops (defendant 2).
Since 2002, the first defendant has organised campaigns with cooperation partners in which vehicles and services are sold with the component "Volks" and an addendum (such as Volks-Spartarif, Volks-Farbe, Volks-DSL). In 2009 the defendants carried out two promotions in which the second defendant provided inspection services for motor vehicles under the name "Volks-Inspektion" and offered tyres under the name "Volks-Reifen". In the advertising, the 2nd defendant was referred to as "Volks-Werkstatt".
The plaintiff filed a claim against the defendants for infringement of the rights to its well-known trademark "VOLKSWAGEN". The District Court ordered the defendants to cease and desist, to provide information and to pay damages. The Court of Appeal dismissed the action. The Federal Supreme Court reversed the decision of the Court of Appeal and referred the case back to the Court of Appeal.
Unlike the Upper District Court, the Federal Court of Justice did not rule out the possibility that the signs "Volks-Inspektion", "Volks-Reifen" and "Volks-Werkstatt" infringe the plaintiff's well-known trade mark. Well-known or even famous trade marks have a wide scope of protection. As a result, when using other signs, a wide distance must be kept from the well-known mark. An infringement of the well-known mark already exists if the public assumes economic or organisational links to the plaintiff due to the use of the signs "Volks-Inspektion", "Volks-Reifen" and "Volks-Werkstatt" by the defendants or if this sign use impairs the distinctive character of the well-known mark "VOLKSWAGEN". In the opinion of the Federal Court of Justice, the Upper District Court did not sufficiently take into account this broad scope of protection of well-known trade marks. The Federal Supreme Court therefore referred the case back so that the findings necessary for a trade mark infringement could be made.
Judgment of the Federal Supreme Court of 11 April 2013 - I ZR 214/11 - VOLKSWAGEN
Lower courts:
OLG Munich - Judgment of 20 October 2011 - 29 U 1499/11
(GRUR-RR 2011, 449 = WRP 2012, 354)
LG Munich I - Judgment of 22 February 2011 - 33 O 5562/10
Source: Press release of the BGH
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
