Trade mark law through GPL software licence?

In the Internet, very many software products are offered for free download. Many Internet users use the free products and develop their own software, which is based on these Open Source programmes. The Higher Regional Court (OLG) Düsseldorf had to clarify the question of whether the distribution of the programme within the scope of a General Public License (GPL), a set of rules that permits users to reproduce and distribute the software free of charge under certain conditions, encompasses only the obvious copyright rights or whether this free licence also includes permission to use the trade mark.

xt:Commerce GmbH is the proprietor of the Community word mark "xt:Commerce", which is registered for software (Class 9) and creation of software as well as software support (Class 42) and distributes a computer programme for the management of online shops under this designation. The distribution of the programme takes place within the scope of the General Public License (GPL).

The company G is active in the IT field. It develops, among other things, computer programmes to support and supplement the xt:Commerce software, which are intended to help the online shop operator achieve better placement in the context of an Internet search. It also provides maintenance services, support, for these programmes. For the software supplements and services offered by it, the company G advertises on the Internet using the trade mark of xt:Commerce GmbH.

xt:Commerce GmbH opposed this use of its trade mark on the grounds that the use of the GPL contained only a copyright licence, but not a trade mark licence.

Decision of the court
In its Berufungsurteil vom 28.09.2010 – Az. I-20 U 41/09 the Higher Regional Court (OLG) Düsseldorf ruled that a GPL licence does not grant trade mark rights.

If a company uses the (registered) trade mark of a software product distributed under the GPL as Open Source, it cannot justify itself by relying on this free licence. The GPL does not grant a GPL licensee any right to use the trade mark. The GPL regulates only the copyright aspects of the use of a computer programme subject to it.

The set of rules contains no trade mark law provisions. Nor can it be assumed that there is an implied consent to the further distribution of the software under the protected name.
Furthermore, the user could distribute the programme, which it has legally reproduced, under its own name, so that the use of the trade mark is helpful but not necessary.

Conclusion

The use of a protected trade mark is not permitted by a GPL licence. However, the reproduction and distribution of the GPL-licensed Open Source computer programme under a different (own) name is permitted.