"Hard Rock Café Heidelberg" allowed to keep on rocking

The "Hard Rock Cafe Heidelberg" may continue to be operated under this designation. However, no articles may be sold there that are marked with the internationally known "Hard-Rock-Cafe-Logo".

In 1978, the restaurant with the designation "Hard Rock Café Heidelberg" was opened in Heidelberg. When furnishing and equipping the restaurant, its founders deliberately oriented themselves towards the "Hard Rock Café" which first opened in London in 1971. Accordingly, guitars, records and photographs of musicians are displayed on the walls of the establishment. Since 1978, the operators of the Heidelberg restaurant have used the typical circular Hard-Rock-Café-Logo in menus and beverage lists as well as on glasses. They use the word sequence "Hard Rock Cafe" as well as the logo as an entrance sign, on the entrance door and in the windows of their restaurant and offer merchandise articles that also bear this logo.

After the founders of Hard Rock Café London expanded worldwide, their logo was first registered as a trademark for clothing in Germany at the end of 1986. The first official German Hard Rock Café opened in Berlin in 1992. Immediately thereafter, the operators of the worldwide chain and holders of the corresponding German trademarks obtained an interim injunction due to infringement of a German trademark against the Heidelberg restaurant operators. However, the application was withdrawn after opposition, as the operators of the "Hard Rock Café Heidelberg" stated that they had been using the designation since 1978 and had also been offering merchandise articles with the logo in the restaurant since 1985. Until 2008, the parties had no further contact.

Subsequently, the operator of Hard Rock Café Berlin, Munich and Cologne, which is part of the worldwide Hard Rock Group and holder of numerous word and word/figurative marks "Hard Rock Café", sued the operators of the restaurant "Hard Rock Café Heidelberg" again. The subject matter of the action was injunctive relief, damages, information claims and destruction claims due to the use of the designation "Hard Rock" and the logo "Hard Rock Cafe Heidelberg" in the course of restaurant operations as well as due to the distribution of merchandise articles bearing the imprint "Hard Rock Cafe". In addition, various domain names registered for the Heidelberg restaurant operators with the component "hardrock-cafe" were the subject of the proceedings. The Regional Court (LG) dismissed the action. The appeal was unsuccessful.

Decision of the Federal Court of Justice (BGH)

The Federal Court of Justice (BGH) ruled in its judgment of 15.08.2013 (I ZR 188/11) that it confirmed the view of the appellate court. Claims against the operation of the Heidelberg restaurant under the designation "Hard Rock" had been forfeited because the founders tolerated this business name for more than 14 years after the withdrawal of the application for interim injunction. Otherwise, the Federal Court of Justice (BGH) set aside the appellate judgment, granted the claim regarding the distribution of specifically identified merchandise articles, and remitted the matter to the appellate court for decision on the remaining points.

The legal consequence of forfeiture is solely that a trademark owner can no longer enforce its rights with respect to specific trademark infringements that have already occurred or are still ongoing. In the case of repeated, equivalent infringements, each infringement gives rise to a new claim for injunctive relief. Even prolonged inactivity of the trademark owner cannot establish justified reliance that such conduct will continue to be tolerated. Each offer and each sale of a merchandise article, each new advertisement and each new Internet presence must therefore be considered separately for the purposes of the forfeiture analysis.

The distribution of merchandise articles by the operators of the "Hard Rock Café Heidelberg" infringes the trademark rights of the international Hard Rock Café chain. It also violates the competition law prohibition against misleading conduct. In this regard, it is irrelevant whether the Heidelberg restaurant operators may have begun the distribution of such products in Germany before the plaintiff. The restaurant is located in the best tourist location in Heidelberg. A considerable part of its customers are non-local guests who are familiar with the worldwide Hard Rock Cafés, but do not know that the restaurant in Heidelberg is not part of this chain. The Heidelberg restaurant operators must eliminate this misleading conduct.

Conclusion

The "Hard Rock Cafe Heidelberg" may, at least for the time being, continue to exist, but must refrain from distributing merchandise articles bearing the world-famous Hard-Rock-Café-Logo. The Federal Court of Justice (BGH) could not make a final decision on the further claims. In this regard, it will depend in particular on whether the Heidelberg restaurant operators had already acquired protection for the designation "Hard Rock Cafe Heidelberg" as a trade name in the Heidelberg area before the trademarks of the international chain were registered in Germany. Insofar as the operators of the Heidelberg restaurant should be permitted to continue using the logos "Hard Rock Cafe", they would have to exclude confusion with the restaurants of the plaintiffs by means of clarifying additions.