Trademark Distinctiveness through Domain in Company Name?

The Higher Regional Court (OLG) Frankfurt a.M. had to decide the trademark law question of whether the addition of a top-level domain renders registrable a trademark that is otherwise not registrable due to lack of distinctiveness.

An internet marketing firm registered a change to the company name of the corporation as "Outlets.de GmbH" with the competent registration court. The Local Court (AG) rejected the application due to lack of distinctiveness, as in its view the top-level domain "de" does not constitute a sufficiently individualising addition. The internet company appealed this decision in the present appeal proceedings.

Decision of the Court

The Higher Regional Court (OLG) Frankfurt a.M. decided by Beschluss vom 13.10.2011 – Az. 20 W 196/10 – that the change of name of the GmbH to the designation "Outlets.de GmbH" was inadmissible.

A company name must be suitable for identifying the merchant or the company and must possess corresponding distinctiveness. In the present case, however, the main component of the company name lacked distinctiveness and was not registrable, as "Outlets" constitutes a mere descriptive generic designation for factory or warehouse sales according to common usage.

Original distinctiveness was not achieved either through the further additions "de" and "GmbH". The selected top-level domain "de" merely indicates registration by a German registration authority. However, this has no decisive independent weight in the context of individualisation, as countless companies use the top-level domain as part of their company designation.

Conclusion

The addition of a top-level domain "de" to a business identifier that is not registrable due to lack of distinctiveness does not change its registrability. Before registering a business identifier or a trademark, it may be advisable to obtain qualified legal advice. Often, unnecessary costs can be avoided simply by obtaining a legal assessment of the registrability of an identifier.