The I. Civil Senate of the Federal Court of Justice, which is responsible, among other things, for trademark law, ruled today that the trademark "ZAPPA" must be cancelled and therefore the use of the name "Zappanale" for a music festival cannot infringe the trademark.
The plaintiff, a trust based in the USA, administers the estate of the musician Frank Zappa, who died in 1993, and is the proprietor of the Community trade mark "ZAPPA". The defendant organises the music festival "Zappanale", which has taken place annually since 1990, and distributes sound recordings and clothing under the name.
The plaintiff filed a claim for injunctive relief and damages against the defendant based on the trade mark "ZAPPA" for the use of the designation "Zappanale". By way of counterclaim, the defendant requested that the trademark "ZAPPA" be declared revoked for lack of use.
The Düsseldorf Regional Court (LG Düsseldorf) dismissed the action and the counterclaim. The Düsseldorf Higher Regional Court (OLG Düsseldorf) upheld the decision of the Regional Court dismissing the action and, on the counterclaim, declared the plaintiff's Community trade mark revoked for lack of use. The Federal Court of Justice dismissed the appeal against the judgment of the Düsseldorf Upper District Court.
The Community trade mark 'ZAPPA' must be cancelled because the applicant did not use the mark within the meaning of Article 15(1) and (2)(a) of Regulation No 40/94 on the Community trade mark within five years of registration in the European Union. The examples of use cited by the plaintiff did not satisfy the requirements of the Community Trade Mark Regulation for use preserving rights. The use of the domain name "zappa.com" does not constitute use of the designation "ZAPPA" as a trade mark. The public perceives the domain name only as a reference to a website with information about the musician Frank Zappa. The use of the sign "ZAPPA Records" affects the distinctive character of the trade mark "ZAPPA" with the consequence that a use preserving the rights within the meaning of Article 15 (2) (a) CTMR is excluded. Since the trade mark "ZAPPA" has lapsed, the prohibition sought by the plaintiff to use the designation "Zappanale" for a music festival is not justified.
Judgment of the BGH of 31 May 2012 - I ZR 135/10 - ZAPPA
Previous instances:
Düsseldorf Regional Court - Judgment of January 21, 2009 - 2a 232/07
Düsseldorf Higher Regional Court - Judgment of June 15, 2010 - 20 U 48/09 (GRUR-RR 2011, 172)
Source: Press release of the BGH
Goldberg Attorneys at Law
Attorney at Law Michael Ullrich, LL. M.(Information Law)
Specialist attorney for information technology law
E-mail: info@goldberg.de
