Christian W.

Liedtke

March 12, 2014

NEWS FROM GERMANY'S HIGHEST CIVIL COURT

Guidance on domain typosquatting and acquired distinctiveness

Today, Germany's highest civil court, the Federal Court of Justice ("Bundesgerichtshof", BGH) published two important intellectual property decisions concerning domain typosquatting and the issue of acquired distinctiveness. Since Germany is a civil law jurisdiction, these decisions do not formally inict stare-decisis. They are, however, highly persuasive and de facto treated as precedent by the BGH as well as lower courts.! The rst case is in re wetteronline.de (I ZR 164/12 of 20 January 2014). In this case,

Building of the Federal Court of Justice Copyright: Bundesgerichtshof/ Joe Miletzki

the BGH ruled that domain typosquatting can constitute an act of unfair competition according to Sec. 4 No. 10 of the Act Against Unfair Commercial Practices ("Gesetz gegen den unlauteren Wettbewerb", UWG) when customers are directed to a website that merely contains advertisements rather than the expected services. Here, the expected service would have been weather information but visitors were shown advertising for health insurance. !

@cwliedtke

!1

Christian W. Liedtke

March 12, 2014

Yet, the judgment contains a major caveat: No act of unfair competition will typically exist, if a user is notied (1) in a highly visible manner and (2) immediately upon accessing the website that he has not reached the desired site. ! Furthermore, the BGH denied plainti"'s claim based on an alleged "name right" according to Sec. 12 of the Civil Code ("Brgerliches Gesetzbuch", BGB). In fact, the court held that no such right existed in the rst place because the term weather online ("WetterOnline") is generic. ! The case also serves as a reminder to be cautious when drafting cease and desist declarations. While the defendant had signed such a declaration, it was limited to meteorologic goods, services, and information, rendering the use of the domain for health insurance advertising permissible.! The second case is in re test (I ZB 65/12 of 17 October 2013). In re test, the BGH made three key ndings. First, the court conrmed that in in order to overcome the absolute registration bar of Sec. 8 para 2 no. 1 of the Trademark Act ("Markengesetz", MarkenG equivalent of Art. 3 no. 1 (b) of Directive EU 95/2008), a mark must have acquired distinctiveness at the time of application. Sec. 37 para 2 MarkenG provides and exception to this rule if the applicant accepts a later priority date based on the time distinctiveness was actually acquired. ! Second, if distinctiveness is proven by means of a survey that consists of a statistically su#cient sample, conclusions are to be made based on the average value without regard to margin of error. ! The third nding concerns the issue of distinctiveness in cases of combined trademark use, i.e. cases where a trademark is no longer used in isolation at the time respective cancellation proceedings are decided. In these circumstances, the BGH held, distinctiveness requires that the mark in question functions as a source indicator despite its combined use.
The bone of contention in re wetteronline.de.

!
Christian W. Liedtke is an international intellectual property consultant based in Newport Beach (CA), New York and Dsseldorf, Germany. He can be reached at +1-949-478-5429 info@liedtke.de and @cwliedtke

@cwliedtke

!2