The First Civil Senate of the Federal Court of Justice, which is responsible among other things for trademark law, has ruled in five proceedings on the question of how a nationwide advertisement of companies with identical company names must be designed.
The parties are legally and economically independent companies which have been operating numerous clothing stores in Germany under the name "Peek & Cloppenburg KG" for decades. The plaintiff has its registered office in Hamburg and operates in northern Germany. The defendant, which has its registered office in Düsseldorf, operates clothing stores in the west, south and centre of Germany. In the proceedings, the plaintiff brought an action for injunctive relief against the defendant for nationwide advertising. The plaintiff claimed that in northern Germany the defendant's advertising was attributed to it because of the identical company names.
The Court of Appeal prohibited the defendant from the offending advertising. The Federal Supreme Court overturned the decisions of the Court of Appeal in the five proceedings.
Due to the fact that identical company names have been used side by side for decades without objection, there is a situation of equilibrium between the parties under trade mark law to which the principles of the law of persons with the same name are applicable. The defendant disturbed this equilibrium by extending its advertising measures to the North German region, where only the plaintiff is active. However, since the defendant has a recognisable interest in advertising in media distributed nationwide, it cannot be generally prohibited from advertising. Rather, the defendant must inform the readers of the advertisements in an appropriate manner that there are two companies with the identical name "Peek & Cloppenburg KG" and from which of the two companies the advertisement originates. This was also done in the objectionable advertisements. In contrast to the Higher Regional Court, the Federal Court of Justice considered these references to be sufficient. They are marked by the addition of "Düsseldorf" under the company name "Peek & Cloppenburg" in somewhat smaller type and a three-line text below it explaining that there are two independent companies "Peek & Cloppenburg" with registered offices in Düsseldorf and Hamburg and that this advertisement is exclusively information from the Düsseldorf company. The Federal Court of Justice allowed it to suffice that this reference was associated with the company name. In no case did the addition have to correspond in its size and design to the advertising message - for example, to the models depicted there. The Federal Supreme Court therefore denied an infringement of the plaintiff's company name by the defendant's nationwide advertising and a violation of the prohibition of misleading and dismissed the claims in this respect.
However, the plaintiff had also relied on a contractual agreement with the defendant according to which the parties are not allowed to advertise in each other's field of activity. The Federal Supreme Court referred the matter back to the Court of Appeal with reference to the limits under cartel law to which such demarcation agreements are subject, so that the necessary findings could be made in this regard.
Judgment of the Federal Supreme Court of 24 January 2013 - I ZR 58/11
Lower courts:
Hamburg Regional Court - Judgment of April 9, 2009 - 327 O 533/08
Hamburg Higher Regional Court - Judgment of March 17, 2011 - 3 U 69/09
and
Judgment of the BGH of 24 January 2013 - I ZR 59/11
Previous instances:
Hamburg Regional Court - Judgment of November 13, 2008 - 327 O 265/08
Hamburg Higher Regional Court - Judgment of March 17, 2011 - 3 U 255/08
and
Judgment of the BGH of 24 January 2013 - I ZR 60/11
Lower courts:
Hamburg Regional Court - Judgment of July 29, 2010 - 327 O 686/09
Hamburg Higher Regional Court - Judgment of March 17, 2011 - 3 U 142/10
and
Judgment of the BGH of 24 January 2013 - I ZR 61/11
Lower courts:
Hamburg Regional Court - Judgment of July 29, 2010 - 327 O 676/09
Hamburg Higher Regional Court - Judgment of March 17, 2011 - 3 U 139/10
and
Judgment of the Federal Supreme Court of 24 January 2013 - I ZR 65/11
Lower courts:
Hamburg Regional Court - Judgment of July 29, 2010 - 327 O 569/09
OLG Hamburg - Judgment of March 17, 2011 - 3 U 140/10
Source: Press release of the BGH
Goldberg Attorneys at Law 2013
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
