Microsoft wins legal battle over Windows software

The applicant is Microsoft Corporation. It is the owner of the word mark "MICROSOFT" under which it markets the operating system software "Windows". In the case of the so-called OEM version, the software is pre-installed on the hard disk of the computers by the computer manufacturer. The buyers of the computers also receive a backup CD with the software (so-called recovery CD). In this distribution channel, the certificates of authenticity that the plaintiff attaches to its products are attached to the computer itself. The defendant trades in software products. It acquired recovery CDs with the software "Windows 2000" from companies dealing in second-hand computers as well as certificates of authenticity which had been detached from the computers. The defendant attached these certificates of authenticity to the recovery CDs and resold them. In the process, data carriers were sold which had certificates of authenticity attached to them which did not originally come from the same package (computer with recovery CD). The plaintiff sees this as an infringement of its trade mark rights.

The District Court ordered the defendant to cease and desist and found that it had to pay the plaintiff an appropriate licence fee. The defendant's appeal against this was unsuccessful. In its appeal, the defendant seeks the dismissal of the action.

The First Civil Senate of the Federal Court of Justice, which is responsible for trade mark law, dismissed the defendant's appeal. The plaintiff's claim for injunctive relief is not precluded by the principle of exhaustion under § 24 Trademark Act. It is true that the data carriers distributed by the defendant and the computers to which the certificates of authenticity used by the defendant were attached entered into circulation in the European Economic Area with the plaintiff's consent. However, the plaintiff can oppose the distribution of the backup CDs bearing the certificates of authenticity on legitimate grounds. The consumer will take a data carrier bearing the certificate of authenticity to mean that it has been marked as genuine by the applicant itself or with its consent. He will attribute the association of the data carrier with the certificate to the plaintiff as the trade mark proprietor and expect that the latter, by means of the association, has assumed the guarantee that the product so marked was manufactured under its control and that it vouches for the authenticity, which is not the case.


Judgment of the BGH of 6 October 2011 - I ZR 6/10 - Certificate of Authenticity

Lower courts:

Frankfurt am Main Regional Court - Judgment of 23 July 2008 - 6 O 439/07

OLG Frankfurt am Main - Judgment of 12 November 2009 - 6 U 160/08


Source: Press release of the BGH


Attorney at Law Michael Ullrich, LL.M. (Information Law)

Specialist lawyer for information technology law (IT law)