06. May 16

BGH on registering a trademark in bad faith

One cannot seek to have a nationwide trademark invalidated on account of its registration in bad faith merely because a geographically restricted right has been impaired (BGH, I ZB 44/14).

GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London conclude: According to trademark law, registering a trademark in bad faith can result in its cancellation. Having said that, it recently emerged that the Bundesgerichthof (BGH), Germany’s Federal Court of Justice, drew attention to the limits of invalidating trademarks in a ruling from October 15, 2015. The Court found that the registration of a trademark cannot be invalidated on account of bad faith because of interference with a corporate identifier if the scope of protection afforded to said identifier does not encompass all of Germany but is instead geographically restricted to the company’s local area of activity.

The trademark owner had bid for the lease agreement for a building known by a specific name, but was not awarded the contract. In March 2006, he then registered a word trademark for various services in the building’s name. In December 2007, business operations in the building resumed. The new leaseholder viewed the trademark as a hindrance to its business activities and successfully filed to have the trademark declared invalid owing to its registration in bad faith. The Bundespatentgericht (Federal Patent Court) took the view that the registration of the trademark constituted interference in the acquired rights of a third party that were worthy of protection, with the aim of causing disruption. It stated that the fact that the business name was only used within limited geographical boundaries did not preclude cancelling the nationwide trademark.

However, the BGH took a different view, pointing out that the protection conferred on the corporate identifier was geographically limited. It went on to say that one cannot seek to have a nationwide trademark invalidated by simply referring to impairment of a geographically restricted right. The Court held that registering a trademark can be viewed as having been done in bad faith if the sole purpose of this is to prevent third parties from entering the market without any intention of using the trademark. That being said, the proprietor of rights to a symbol that are geographically restricted is not without any recourse vis-à-vis the trademark owner. The Court stated that the former could object to an anti-competitive obstruction on the part of the trademark owner in the case of a conflict between symbols.

Those businesses that are concerned can turn to lawyers who are competent in the field of trademark law to assist in registering trademarks as well as enforcing or fending off claims in the event of trademark infringements.

For more informations: http://www.grprainer.com/en/legal-advice/intellectual-property-law-and-trademark-law/trademark-law.html

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