Use of the word mark "DAX" for index-related financial products

Deutsche Börse AG is the proprietor of the word mark "DAX". As such, it objects to the use of its mark in connection with index-related financial products (warrants) for the purpose of disclosing the underlying asset, namely the leading index DAX. The action for an injunction brought against Commerzbank in this regard was dismissed by the Federal Court of Justice (BGH) in agreement with the lower court (judgment of 30.04.2009 – I ZR 42/07).

According to the court's reasoning, the use of the word mark "DAX" in this form constituted a trademark use of the sign, which could in principle be prohibited. However, the use here was purely descriptive, namely for the purpose of identifying the underlying value to which the defendant's competing financial product relates. This could not be prohibited to the defendant pursuant to § 23 Nr. 2 MarkenG (use of descriptive matter).

Claims for dilution and unfair imitation of a third party's work product (supplementary competition law protection under § 4 Nr. 9 UWG).