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German Federal Supreme Court on title protection on the basis of the use of a domain name

Fri, 28 Jan 2011 17:39:00 +0100

Following the first German domain name decisions in 1997, more and more cases reach the Federal Supreme Court who mainly confirms the established practice of the instance courts and provides certain legal guideline in German domain name law. In the present case published in January 2010, the Federal Supreme Court has confirmed that the use of a domain name, eifel-zeitung.de (eifel-newspaper.de) whereas Eifel is a region in the western part of Germany, can create a designation right. The facts, in particular the procedural roles of the parties are somewhat complicated, but important to understand the case:

Facts:

The dispute was decided amongst two regional newspapers. One newspaper had obtained a decision against the other newspaper in 1998 based on a part of their newspaper called “Eifel-Zeitung” against the newspaper “Eifelzeitung” of the other newspaper publisher. After this decision, the former plaintiff changed the name of his newspaper whereas the former defendant changed its name to Eifel-Zeitung and occupied the domain names “eifel-Zeitung.de” and “eifelzeitung.de”. The former plaintiff and later defendant changed, to complete the story, back to “Eifel-Zeitung” at the end of 2004. Now the former defendant sued the former plaintiff based on the argumentation that it has now better and prior rights since the former plaintiff lost his title right due to the lack of use. In March 2005, the (current) plaintiff obtained a decision against the defendant to stop the enforcement of the decision of 1998.

Decision:

The Federal Supreme Court used this possibility to comment on the general line of trademark and domain name law indicating that the internet use for a newspaper work can create a title right, here for the plaintiff. However, the priority of such rights was still with the defendant, at least for his restart with the title in 2004 since the plaintiff was until 2005 prohibited to legally use the title due to the former decision for which the enforcement was only abandoned in 2005. Necessary is in accordance with this decision not only the start of a serious use in the course of business. The use must also be allowed. Since the plaintiff was – due to the first decision against him – hindered to legally use the title until 2005, and the defendant re-started his use again in 2004, the former plaintiff and later defendant succeeded again in this remarkable regional newspaper battle.

Although the decisive details of the decision might not be often at stake, the clarification of the Federal Supreme Court with regard to the requirements to create a title right will be welcomed by German practitioners.

Interflora, Inc. v Marks & Spencer:

Fri, 28 Jan 2011 17:37:00 +0100

the English High Court has decided to refer a number of questions to the European Court of Justice for a preliminary ruling in relation to the use of “Interflora” as a Google AdWord – the proposed reference further underlines the current uncertainty as to the effect of trade mark law on key word advertising, such as that offered by the Google Adword service and is one of several cases on this topic before different European courts.

L’Oréal v eBay:

Fri, 28 Jan 2011 17:36:00 +0100

the English High Court has held the eBay is not jointly liable with individual sellers with regard to the sale of counterfeit products on its auction site on the ground that there was insufficient evidence to show that eBay had actively participated in a common plan in order to procure trade mark infringement. The decision demonstrates that it is hard to succeed with such claims unless the evidence is very clear.

IT Law Group Europe meets India

Fri, 28 Jan 2011 17:13:00 +0100

ITLAW GROUP EUROPE members Kim Hansen from Denmark, Pietro Tamburrini from Italy, Kristian Voss from Norway, Etienne Wery from Belgium, Michael Wolner from Austria, John Warchus from the UK, Dietrich Beier from Germany and Emil Neff from Switzerland will attend the 7th International Asian Conference of ITechlaw in Bangalore, India from the 3rd to 4th of February 2011 which is held under the slogan "Technology Law in the Era of Changing Business Paradigms".

Please contact the members attending the conference at your convenience.

UDRP Decisions from the Chech arbitration court

Tue, 29 Jun 2010 12:25:00 +0200

Since the Chech Arbitration Court was appointed as a further provider of UDRP services by ICANN, the first decisions (see inter alia Novotelvietnam.com) were rendered by panelists of the Chech Arbitration Court. Several members of the ITLAW GROUP EUROPE, Etienne Wery, Enrique Batalla, Dietrich Beier are panelists in the Court´s UDRP service.

Czech Arbitration Court as a new UDRP provider

Tue, 29 Jun 2010 00:05:00 +0200

ICANN, the internet corporation for assigned names and numbers managing the administration of the IP addresses and the domain names in the internet, has approved the application of the Czech Arbitration Court to become the third arbitration provider for domain name disputes in accordance with the UDRP (uniform dispute resolution policy) which is the basic legal body for such disputes for most of the generic top level domain names such as .com, .info, .net, .pro, .biz amongst others. So far, the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF) and the Asian Domain Dispute Resolution Centre are providing domain name dispute resolution proceedings.

The Czech Arbitration Court (CAC) is already the - so far - sole provider for domain name dispute resolutions for the recently introduced .eu domain name and successfully issued over 700 decisions since June 2006 with panellists from all European countries. Against some resistance of its competitors, the CAC succeeded now in obtaining the general approval to expand its activities also to the UDRP following the special meeting of the ICANN board of directors of January 23, 2008. The next months will show which approach the CAC will follow to establish a serious alternative for international trademark owners to enforce their rights against domain name grabbers in the heart of Europe.

Zybnek Loebl and Dietrich Beier are members of the advisory board of the CAC as well as panellist with the CAC and the WIPO.

ITLaw Group on European Fashion Law!

Wed, 02 Jun 2010 12:49:00 +0200

As a premier, the ITLaw Group Europe holds a seminar for in-house counsels of European Fashion companies in Lille France organized by our French member Andre Bertrand. The seminar will cover comparative insides into Fashion law from members of the ITLaw Group representing various member states of the European Union.