The Düsseldorf Regional Court (LG Düsseldorf) had previously ruled on July 19, 2006, in a different case concerning the domain http://www.cat-ersatzteile.de ('AZ: 2a O 32/06'), unequivocally establishing that a trademark is fundamentally reserved for use by the trademark owner only.
In the Düsseldorf Regional Court case, the plaintiff was the trademark owner of the 'CAT' brand. The plaintiff manufactures, among other things, construction and mining machinery. The defendant was a dealer of spare parts for construction machinery. The defendant was prohibited from using the plaintiff's trademark in their domain name due to the existing likelihood of confusion. No 'permission' for use arose from Section 23 No. 3 of the German Trademark Act (MarkenG) either, as the use of the trademark in the domain name was not necessary as an indication of the goods offered themselves. Such a necessity only exists if the use of the trademark is practically the only means to provide the public with clear and understandable information about the product's purpose (ECJ, judgment of March 17, 2005 - Case No: C 228/03 = GRUR 2005, 509 et seq.). However, this was not the case here, as the use of the trademark on the website itself would have been sufficient to adequately describe the defendant's products. Furthermore, the exhaustion of rights that occurred through the placing of spare parts on the market under Section 24 (I) MarkenG does not apply due to Section 24 (II) MarkenG, as the use of the trademark in the domain name creates the incorrect impression of a contractual relationship between the trademark owner and a third-party owner.
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.
Thus, in this case, the question arose as to whether a service provider not contractually associated with the trademark owner is permitted to use the protected trademark Peugeot within its domain name.
The Higher Regional Court of Düsseldorf ruled in its judgment of november 21, 2006, file reference: I-20 U 24/05, that it is impermissible to use a protected trademark within a domain name if, without clarifying additions, the incorrect impression is created that the tuning service provider in question is in a contractual relationship with the trademark owner, thereby creating a risk for third parties of confusing the services of the trademark owner with those of the tuning company. This risk was affirmed by the OLG Düsseldorf in the present case.
However, the court also pointed out that it would have ruled differently if the defendant had clarified through a small additional element in its domain name that the defendant, and not the plaintiff or an entity authorized by it, was the provider of the service.
The OLG Düsseldorf would have considered it sufficient in this regard if the defendant's web address had been, for example, http://www.tuning-von-peugeotfahrzeugen.de. In this case, according to the OLG Düsseldorf, it would have been sufficiently clear that it was not the plaintiff or an entity authorized by it.
The conclusion drawn from the judgments of the OLG Düsseldorf and the LG Düsseldorf can therefore only be,
either not to use protected trademarks in domain names
or
or to use the trademarks only with such unambiguous additions that clarify that a third party is the provider of a service or product, and not the trademark owner of the protected mark or an entity authorized by them.
Should you require legal advice on the aforementioned topic or on other matters pertaining to industrial property rights, IT law, or other civil law areas, the Goldberg attorneys are at your disposal.
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