No nationwide trademark protection for regional business

In trademark law, the principle applies that business identifiers claim nationwide validity. However, there are exceptions to this when the company operates exclusively at regional level. The Federal Patent Court (BPatG) had to decide on the scope of protection of such a business identifier in the context of an opposition proceedings.

The company founded in 1927 under the name "Weinhaus am Stadtrand Dirk Lehmitz", referred to in commerce as "Lehmitz", filed an opposition against the registration of themark"Lehmitz" for various goods and services in the beverages and gastronomy sectors. The DPMA rejected the opposition as unfounded, whereupon the opposing party filed an appeal to the BPatG.

The court's decision

The BPatG subsequently confirmed the DPMA's decision by order of 04.06.2014 (Az. 26 W (pat) 88/13). In the court's view, the opposing party failed to prove that it had acquired a nationwide trademark right before the filing date of the contested mark. However, this was a prerequisite for the success of the opposition. An Internet presence could indeed establish nationwide significance and thus corresponding trademark protection if, beyond mere accessibility, a so-called "commercial effect" can be established. This would in particular also be the case in the event of nationwide goods distribution in the context ofonline trading. In the present case, however, the opposing party failed to prove that it had already conducted such trading before the filing date. The court consequently proceeded on the basis of the purely regional significance of the company and rejected the appeal.

Conclusion

Although registration-free business identifiers generally lead to nationwide trademark protection under the Trade Mark Act, this may be different in individual cases. This is of particular importance for explicitly regional businesses such as restaurants and accommodation establishments, craft enterprises and other location-based service providers.

If such a restriction of trademark protection is not desired, active measures must be taken to change this. Above all, this would include nationwide (online) trading in order to achieve the required "commercial effect". In case of doubts regarding the scope of protection, in any event it is recommended tocarry out an examination as early as possible, because nationwide trademark protection only comes into effect upon the establishment of the commercial effect. Otherwise, any collisions that arise must be resolved laboriously with the aid of the law of namesakes, which ultimately may mean an expansion-inhibiting coexistence.