The First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for trademark law, has ruled that apps for mobile devices such as smartphones can, in principle, enjoy title protection for works.
The plaintiff operates a website under the domain name "wetter.de", where it provides location-specific processed weather data and further information on 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 designation "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 designations "wetter DE", "wetter-de", and "wetter-DE".
The plaintiff objects to the defendant's use of the designations for its weather app as an infringement of its title protection rights in the domain name "wetter.de" and the corresponding designation of the app it operates. It sought an injunction, information, reimbursement of cease and desist costs from the defendant, and a declaration of the defendant's liability for damages. The Regional Court dismissed the action. The plaintiff's appeal against this decision was unsuccessful. The Federal Court of Justice has now dismissed the plaintiff's appeal on points of law against the judgment of the Higher Regional Court.
The Federal Court of Justice held that while domain names of internet offerings and apps for mobile devices can be works capable of title protection within the meaning of Section 5 (3) of the German Trademark Act, the designation "wetter.de" lacks sufficient inherent distinctiveness for title protection under Section 5 (1) and (3) of the German Trademark Act. A work title lacks distinctiveness if it is exhausted in a work-related content description based on its choice of words, design, and the meaning attributed to it by the public. This is the case in the present dispute. The Higher Regional Court correctly determined that the designation "wetter.de" is purely descriptive for a website and for apps that offer weather information for Germany.
However, in certain cases, only low requirements are placed on the necessary degree of distinctiveness. This presupposes that the public has long been accustomed to works being identified by descriptive designations and will therefore pay attention to subtle differences in those designations. Such a reduced standard has been recognized by case law, particularly for newspapers and magazines, which have always been characterized by more or less nondescript generic designations specified only by content or geographically. However, these principles are not transferable to the field of designating websites and smartphone apps.
The designation "wetter.de" also does not enjoy title protection for works under the aspect of acquired distinctiveness. While a lack of inherent distinctiveness can be overcome by acquired distinctiveness even for work titles, the plaintiff has not proven that the designation has established itself as a work title within the relevant public. Given the purely descriptive nature of the designation "wetter.de", the lower limit for assuming acquired distinctiveness cannot be set below 50%. The market survey submitted by the plaintiff did not show that more than half of the relevant public perceives the designation "wetter.de" as an indication of a specific website providing weather information.
Federal Court of Justice, Judgment of January 28, 2015 – I ZR 202/14 – wetter.de
Lower Courts:
Cologne Regional Court – Judgment of December 10, 2013 – 33 O 83/13
Cologne Higher Regional Court – Judgment of September 5, 2014 – 6 U 205/13 (GRUR 2014, 1111)
Source: Press Release of the Federal Court of Justice
Goldberg Attorneys 2015
Attorney Michael Ullrich, LL.M. (Information Law)
Specialist Attorney for Information Technology Law
Email: info@goldberg.de
