On 14 April 2011, the First Civil Senate of the Federal Court of Justice (BGH), which is responsible, inter alia, for trade mark law, ruled that a car manufacturer can prohibit a brand-independent repair shop from using the manufacturer's figurative trade mark to advertise the repair and maintenance work it offers on the basis of its trade mark law.
The plaintiff, Volkswagen AG, is the proprietor of the figurative mark registered for motor vehicles and their maintenance, which reproduces the VW sign in a circle. It objects to the fact that the defendants, ATU Auto-Teile-Unger Handels GmbH & Co. KG, which operates several hundred brand-independent repair workshops, uses the plaintiff's figurative mark in its advertising for the inspection of VW vehicles.
The Regional Court and the Higher Regional Court prohibited the defendant from using the figurative mark. The defendant's appeal was unsuccessful.
The Federal Court of Justice affirmed an infringement of the plaintiff's registered trade mark. With the plaintiff's figurative mark cited in its advertising for inspection work on VW vehicles, the defendant used a sign identical to the plaintiff's mark for identical services (maintenance of vehicles). In doing so, the defendant has impaired the advertising function of the plaintiff's trade mark. The use of the plaintiff's well-known figurative sign is associated with an image transfer that weakens the plaintiff's trade mark.
However, trade mark law provides that the trade mark proprietor cannot prohibit a third party from using the trade mark as a necessary indication of the subject-matter of the third party's services as long as the use does not infringe honest practices in trade and commerce. In the case in dispute, however, the requirements of this restriction of the property right are not fulfilled because the defendant can easily use the word signs "VW" or "Volkswagen" to describe the subject matter of the services it offers and does not have to rely on the use of the figurative sign.
Judgment of the Federal Supreme Court of 14 April 2011 - I ZR 33/10
OLG Hamburg, judgement of 16 December 2009 - 5 U 47/08
Hamburg Regional Court, Judgment of 21 February 2008 - 315 O 768/07
Source: Press release of the BGH
Goldberg Attorneys at Law 2011
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law