GERMANY Trends and Developments Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
ously used in Germany by its proprietor for the goods or services in respect of which it is registered unless there are legitimate grounds for non-use. • (2) If rights within the meaning of sections 14 and 18 to 19c are asserted for an infringe - ment of a registered trade mark by means of an action, the claimant must demonstrate in response to an objection by the defendant that the trade mark has been used in accord - ance with section 26 within the last five years prior to the filing of the action for the goods or services he invokes in order to establish his right [….] Section 26 – use of the trade mark: • (1) Where the assertion of rights from a registered trade mark or the upholding of the registration depends on the trade mark having been used, it must have been seri - ously used in Germany by its proprietor for the goods or services in respect of which it is registered unless there are legitimate grounds for non-use. • (2) The use of the trade mark with the consent of the proprietor shall be deemed as use by the proprietor. The decision of the BGH The BGH has ruled that the competent court must positively determine that the trade mark has been seriously used by its proprietor for the goods or services (Sections 25, 26 of the Ger - man Trade Mark Act). In the present case, the competent court did not examine whether the trade mark in question had been used during the relevant period of use both for motor vehicles and for model and toy cars, but merely assumed that this was the case. As a result, according to the decision of the BGH, German courts are likely to examine more closely whether a trade
mark has been seriously used in a right-preserv - ing manner in accordance with Sections 25, 26 of the German Trade Mark Act. Claims for trade mark rights may only be asserted in the event of corresponding serious use. Energycollect.de On 26 October 2023, the BGH ruled on the ques - tion of whether and under which circumstances a new company may apply for cancellation of an existing internet domain. The facts of the case The plaintiff is a company operating under the name “energy COLLECT GmbH & Co. KG” as a debt collection service provider for energy supply companies since summer 2020. The defendant is a lawyer and the owner of both the domains “energycollect.de” and “energy-collect. de”’ that have been registered with the German top-level provider DENIC since April 2010. The defendant’s domains have never been used for websites with any content. Instead, users are redirected to the website of the company “on- collect solutions AG”, which, like the plaintiff, also operates as a debt collection service pro - vider for energy supply companies. The plaintiff brought an action against the defendant for the domain names to be deleted. The decision of the BGH The BGH clarified that in the case of infringe - ment of name rights, the interests of both parties must be taken into account carefully. According to the BGH, the use of a domain by a person oth - er than a company operating under this specific name can significantly impair the interests of the owner of this company, as a domain with a spe - cific name can only be registered once. Legiti - mate interests in favour of the domain holder arise if the domain was already registered before
166 CHAMBERS.COM
Powered by FlippingBook