The Regional Court of Düsseldorf (LG Düsseldorf) had already clearly stated in its judgement of 19.07.2006 "AZ: 2a O 32/06 " in another case concerning the domain http://www.cat-ersatzteile.de that, in principle, only the trademark owner is entitled to use a trademark.
The plaintiff in the Düsseldorf Regional Court case was the proprietor of the trade mark "CAT". The plaintiff manufactures, inter alia, construction and mining machinery. The defendant was a trade in spare parts for construction machinery. The defendant was prohibited from using the plaintiff's trade mark in its domain name because of the existing likelihood of confusion. Permission" to use the trade mark was also not granted under § 23 No. 3 MarkenG, as the use of the trade mark in the domain name as a reference to the goods offered was not necessary. Such a necessity only existed if the use of the trademark was practically the only means to provide the public with comprehensible and intelligible information about the intended purpose of the product (ECJ, judgement of 17.03.2005- Az: C 228/03 = GRUR 2005, 509 et seq.). However, this was not the case in the present case, as the use of the trade mark on the website itself would have been sufficient to describe the defendant's products adequately. Furthermore, the exhaustion under § 24 II MarkenG resulting from the marketing of the spare parts under § 24 I MarkenG did not apply because the use of the trade mark in the domain name gave the incorrect impression of a contractual relationship between the trade mark proprietor and the third party proprietor.
Now the Düsseldorf Higher Regional Court had to deal with the same legal issue. In this case, the plaintiff was the German subsidiary of the vehicle manufacturer Peugeot. The latter used the business name "Peugeot", which is also protected by the plaintiff's parent company as an international trademark and EU trademark.
The defendant used the domain http://www.peugeot-tuning.de and provides tuning services for Peugeot vehicles.
In this case, too, the question therefore arose as to whether a service provider not contractually associated with the trade mark proprietor was permitted to use the protected trade mark Peugeot within its domain name.
The Higher Regional Court of Düsseldorf ruled in its decision of 21 November 2006, Ref: I-20 U 24/05, that it is illegal to use a protected trademark within a domain name if, without clarifying additions, the incorrect impression is created that the tuning service provider present in this case has a contractual relationship with the trademark owner, so that there is a risk for third parties to confuse the services of the trademark owner with the services of the tuning company. This danger was affirmed in the present case by the OLG Düsseldorf.
However, the court also pointed out that it would have ruled differently if the respondent had made it clear that the respondent and not the claimant or a company authorised by it to do so was the provider of the service by adding another small addition to its domain name.
In this respect, the OLG Düsseldorf would have considered it sufficient if the web address of the defendant had been e.g.http://www.tuning-von-peugeotfahrzeugen.de. In this case, in the opinion of the OLG Düsseldorf, it would have been sufficiently clear that it was not the plaintiff or a company authorised by it to do so.
The conclusion from the judgements of the OLG Düsseldorf and the LG Düsseldorf can therefore only be,
either not to use protected signs in domain names
or
to use the marks only with such unambiguous additions that make it clear that a third party is the provider of a service or product and not the proprietor of the protected mark or an enterprise authorised by him to do so.
If you would like legal advice on the above topic or on other topics of intellectual property law, IT law or other areas of civil law, Goldberg Rechtsanwälte will be happy to assist you.
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