Janina Lorenz
At the beginning of this year, the Federal Court of Justice dealt with the matter regarding the requirements that must be observed by a company with a nationwide advertisement in print media in case there is an balanced situation under trademark law between this company and a further legally and economically completely independent company with the same company name, when these companies operate in economic areas separated into North and South by means of a coexistence agreement.
Here, the Court had to clarify whether in an advertisement that is placed in a nationwide newspaper, the indication to the different companies opposes the danger of confusion sufficiently. Below a fashion photograph with the company name “Peek & Cloppenburg” and the location Düsseldorf, the indication contained the following wording: “There are two independent companies Peek & Cloppenburg with the headquarters in Düsseldorf and Hamburg. This information is only by Peek & Cloppenburg KG Düsseldorf having boutiques in the following cities” (a list of cities where the respective boutiques are based follows).
This was objected by the second company with its complaint that the placed advertisement was disturbing the existing balanced situation between the companies and causes consumers to be misled. At first court instance, the complaint was rejected, whereupon the appeals court spoke out the conviction in accordance with the application. The Federal Court of Justice did not follow this opinion and helped the respondent to achieve success.
There was no company name infringement obliging to cease and desist in accordance with §§ 15 II, IV Trademark Act. Due to the registered company symbol existing next to each other without any objection, there is a balanced situation under trademark law where the principles of the law for those bearing the same name must be applied. According to this law, the use of the trademark rights must generally be accepted despite the danger of confusion. Should, however, the balanced situation be disturbed by the fact that the owner of a trademark increases the danger of confusion, this is only permissible when the owner who is increasing the danger of confusion takes all necessary and reasonable steps to counteract this increase.
In the present case, the Federal Court of Justice assumed a disturbance of the balanced situation under trademark law due to the nationwide advertisement. It did, however, ascribe an impression to the advertisement that is sufficiently easy to identify, clearly legible and in sufficient font size in order to counteract a danger of confusion. Contentwise, enough reference was made to the different companies. Measured by the principle of proportionality, the accompanying reference was fulfilling the necessary provisions. It shall further be determined in the frame of an extensive weighing up of interests what, in the single case, is necessary and reasonable with regard to the law for those bearing the same name.
There was also no misleading advertisement according to § 5 II law against unfair competition due to the clarifying reference, as the reference was counteracting a confusion on part of the targeted public.
Federal Court of Justice, January 24, 2013, file no.: I ZR 60/11
Author: Janina Lorenz (Attorney-at-Law), Update 2/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
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