EUR 280,000 amount in dispute for trademark infringement via domain?

The Higher Regional Court (OLG) had to decide in the course of a dispute value appeal procedure whether this amount of EUR 280,000.00 was justified in a trademark-related domain dispute.

A law firm had advertised using the name of a bank to acquire new mandates for asserting claims arising from investment transactions. In doing so, the firm registered a "de" domain bearing the bank's name and used its business mark in the context of an Adwords advertisement. The bank regarded this as damaging to its reputation, sent a cease-and-desist letter to the firm regarding the trade mark use of its mark with a demand for payment, and demanded an injunction.

The first instance before the Regional Court (LG) Frankfurt confirmed the bank's claims and set an amount in dispute of EUR 280,000.00 for this mark dispute. The law firm now had this decision reviewed.

Court's decision
The Hessian Higher Regional Court (OLG) rejectedOrder of 28.04.2011 – Az. 6 W 30/11 the appeal of the law firm and thus confirmed the amount in dispute of EUR 280,000.00 set by the Regional Court (LG).

The Regional Court (LG) was correct in classifying the value of the bank's trade-mark-protected name as high in light of the size and significance of the enterprise. Although the use of the domain and the Adwords campaign had not permanently impaired the origin function of the mark, as the relevant public ultimately attributed it to the bank, the objected-to use of the plaintiff's mark in the context of client acquisition was nevertheless suitable to cause lasting damage to the bank's reputation with both existing and potential new customers, since in this manner a multitude of internet users who were interested in the bank's offerings could be intercepted, as it were, and redirected to the firm's website, which dealt critically with the plaintiff.

Conclusion

Amounts in dispute exceeding EUR 50,000.00, on which the costs of the proceedings are based, are no rarity in the context of trademark infringements. As the order of the OLG Frankfurt a.M. demonstrates, these can be set much higher where the legal dispute in question is of considerable significance. Therefore, the utmost caution is required with regard to the use of marks which resemble existing trade marks, and before such use – including in a domain – it may be advisable to seek specialized counsel.