GERMANY Trends and Developments Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
the BGH, when trade mark infringements of the same kind are repeatedly committed over sev - eral years, there is no room for the assumption of only slight negligence. Cologne Cathedral On 12 October 2023, the BGH ruled on the ques - tion under which conditions a trade mark appli - cation lacks the distinctive character required for registration under Section 8 Para. 2 No. 1 German Trade Mark Act. The case in question concerns a trade mark for the well-known build - ing Cologne Cathedral. The facts of the case The applicant, the “Hohe Domkirche zu Köln”, has applied for registration of the sign “KÖLNER DOM” as a word mark for various goods and services in classes 14, 16, 25 and 35. The appli - cation was refused by the DPMA on the ground that the trade mark lacked distinctive character required for registration. The relevant provision of the German Trade Mark Act Section 8 – absolute grounds for refusal: • (1) Signs eligible for protection as a trade mark within the meaning of section 3 which are not capable of being represented on the Register in a manner which enables the competent authorities and the public to deter - mine the clear and precise subject matter of protection shall be excluded from registration. • (2) The following trade marks shall not be reg - istered: 1. which are devoid of any distinctive character in relation to the goods or services; [...] The decision of the BGH According to the BGH, the trade mark applied for lacked any distinctive character. This finding
is based on the fact that, due to the high profile of the Cologne Cathedral, the relevant public associates the term “KÖLNER DOM” with the building only in connection with travel souvenirs and accessories and therefore does not perceive it as an indication of origin. In this regard, we would like to refer to the contra - dictory decision of the European Court of Justice (ECJ). In 2018, the ECJ dealt with the question of whether the EU trade mark “Neuschwanstein” could be registered for the sale of souvenirs and ruled that the sign was not descriptive for sou - venir articles (ECJ, 06.09.2018 - C-488/16 P). Copyright Legal Developments Freedom of panorama In its ruling of 23 October 2024, the BGH had to decide whether the publication of aerial pho - tographs taken by drones was allowed due to the so-called limitation of works in public places (Section 59 of the German Act on Copyright and Related Rights ( Urheberrechtsgesetz or UrhG), the so-called Panoramafreiheit ). According to this limitation, it is permitted to reproduce, dis - tribute and make available to the public works located permanently on public paths, roads or open spaces. The facts of the case The defendant is a book publisher and publishes two leisure guides. They contain aerial photo - graphs of various works of art protected by cop - yright taken by a drone. The plaintiff, an asso - ciation set up to enforce copyright claims, sued the defendant for damages and an injunction for infringement of the copyright in the works of art. The plaintiff was successful at first instance and on appeal.
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