The First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for trade mark law, has ruled that apps for mobile devices such as smartphones can, in principle, enjoy work title protection.
The plaintiff operates a website under the domain name "wetter.de", on which it provides weather data prepared for specific locations and other information on the subject of weather for retrieval. Since 2009, it has also offered corresponding information via an application (hereinafter "app") for mobile devices (smartphones and tablet computers) under the name "wetter.de".
The defendant is the owner of the domain names "wetter.at" and "wetter-deutschland.com", under which it also provides weather data on the internet. Since the end of 2011, it has also operated an app with corresponding content under the names "wetter DE", "wetter-de" and "wetter-DE".
The plaintiff complained about the defendant's use of the names for its weather app as an infringement of its title protection rights to the domain name "wetter.de" and the corresponding name of the app it operates. It filed a claim against the defendant for injunctive relief, information and compensation for warning costs and sought a declaration that the defendant was liable for damages. The Regional Court dismissed the action. The plaintiff's appeal against this decision was unsuccessful. The Federal Supreme Court has now dismissed the plaintiff's appeal against the decision of the Court of Appeal.
The Federal Supreme Court held that domain names of internet services and apps for mobile devices can be works eligible for title protection under Section 5(3) MarkenG. However, the designation "wetter.de" did not have sufficient original distinctiveness to be protected as a work title under Section 5(1) and (3) MarkenG. A work title lacks distinctive character if its choice of words, design and the meaning attributed to it by the public are exhausted in a work-related description DeepL. This is the case in the dispute. This is the case in the dispute. The Court of Appeal did not err in law in finding that the designation "wetter.de" for an internet site and for apps on which weather information on Germany is offered, is clearly descriptive.
However, in certain cases only low requirements are to be placed on the necessary degree of distinctiveness. This presupposes that the public has long been accustomed to works being identified by descriptive designations and that it will therefore also pay attention to subtle differences in the designations. Such a lowered standard is recognised by case law in particular for the field of newspapers and magazines, which have always been marked with more or less colourless generic designations that are only substantiated in terms of content or space. However, these principles are not transferable to the area of the designation of internet pages and smartphone apps.
The designation "wetter.de" also does not enjoy protection of a work title from the point of view of reputation. It is true that the lack of an original distinctive character can also be overcome in the case of work titles by establishing a reputation. However, the applicant has not proven that the designation has established itself as a work title within the target public. In view of the plainly descriptive character of the designation "wetter.de", the lower limit for the assumption of acceptance by the public cannot be set below 50%. The fact that more than half of the target public saw in the designation "wetter.de" a reference to a certain internet site with weather information did not emerge from the expert traffic report submitted by the plaintiff.
BGH, Judgment of 28 January 2015 - I ZR 202/14 - wetter.de
Lower courts:
Cologne Regional Court - Judgment of 10 December 2013 - 33 O 83/13
Cologne Higher Regional Court - Judgment of 5 September 2014 - 6 U 205/13 (GRUR 2014, 1111)
Source: Press release of the BGH
Goldberg Attorneys at Law 2015
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
