GERMANY Trends and Developments Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
the other entities name or trade mark right came into existence. In the present case, the defendant was able to prove such interests worthy of protection, as he had registered the domain before the plaintiff’s right to use the name came into force. According to the BGH, the interests of the other party are not eligible for protection in this case as it can check whether the domain name is still avail - able prior to choosing the company name. The BGH has ruled that redirecting a domain name to another website does not constitute an abuse of rights itself. Nor does an intention to sell a domain name constitute an abuse of rights as trading with domain names is generally permit - ted. In such cases, the competent courts are required to examine whether there is a commer - cial interest in maintaining the domain registra - tion or whether it has been registered for abusive motives. PIERRE CARDIN On 22 February 2024, the German Federal Court of Justice ruled as to the circumstances in which there may be legitimate reasons for publishing a judgment. The facts of the case The plaintiff is the exclusive licensee of the EU trade mark “PIERRE CARDIN”, which is reg - istered, inter alia, for clothing and socks. The plaintiff conducted test purchases for socks labelled “PIERRE CARDIN” in the defendant’s shops in the years 2013, 2014 and 2016 and discovered that the defendant had sold socks bearing the trade mark in question. In December 2016, the plaintiff issued a cease-and-desist let - ter to the defendant due to a test purchase car - ried out in 2013. At the end of 2018, the plaintiff filed a lawsuit for infringement of the trade mark and claimed information, damages and publica -
tion of the judgment on the basis of Section 19c of the German Trade Mark Act. The publication of the judgment was rejected by the Court of Appeal arguing that any market confusion that may have arisen had completely disappeared due to the significant lapse of time. The relevant provision of the German Trade Mark Act Section 19c – publication of judgments: • Where an action has been brought under this Act, the successful party may be entitled in the judgment to make the judgment public at the expense of the unsuccessful party if the successful party demonstrates a legitimate interest. The nature and extent of the publica - tion shall be laid down in the judgment. […] The decision of the BGH The BGH pointed out that the provision must be interpreted in accordance with EU law (Arti - cle 15 of the Directive 2004/48/EC) to the effect that the principle of proportionality must be tak - en into account when determining the required legitimate interest. In this respect, the German Federal Court of Justice clarified that not only the interests of the parties, but also general pre - ventive aspects must be taken into account in the proportionality test. According to the deci - sion of the BGH, the purpose of Section 19c of the German Trade Mark Act is to deter future infringers and to sensitise the public. Therefore, not only the aspect of lapse of time was relevant, but also the aspect of market confusion. Fur - thermore, the extent of fault needs to be taken into consideration. In the present case, a market confusion could be assumed as the defendant had repeatedly sold the socks all over Germa - ny. The BGH also overruled the decision of the previous court of appeal, which only presumed slight negligence of the defendant. According to
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