Trade mark infringement through business name use of a sign

In its judgment of 12.05.2011 (I ZR 20/10), the Federal Court of Justice (BGH) addressed the interesting question of whether a trade mark can be infringed by another company using an identical or similar designation as its business name, i.e. as a company designation.

The plaintiff is the proprietor of the word mark "Schaumstoff Lübke" as well as an identically named word/figurative mark. Both marks have a priority from July 2004 and are registered, inter alia, for upholstery filling materials, furniture with foam components, upholstered furniture and furniture cover materials.

The defendant was founded in 2006 as a GmbH and was registered in the Commercial Register under the business name "Dieter Lübke Schaumdesign GmbH". The subject matter of the business is the distribution of furniture and home accessories. The plaintiff considers her marks to be infringed by the defendant's business name.

The court's decision

According to the Federal Court of Justice (BGH), the Court of Appeal correctly held that the plaintiff, by virtue of her trade mark rights as a sign of origin for goods and services, cannot prohibit purely business-name use (= name of an enterprise) of the contested sign. This is because purely business-name use of a sign does not constitute a trade mark infringing use within the meaning of § 14 Abs. 2 Nr. 2 MarkenG. Both according to the case law of the Court of Justice of the European Union (EuGH) and that of the Federal Court of Justice (BGH), there is an absence of trade mark use of the sign for a good or service with the objective of distinguishing those from goods or services of another undertaking.

This would be different, for example, if the business-name use of the sign could impair the function of the mark, or if, through the use of the business identifier – such as through affixing to goods or use in advertising – the impression could arise that there is a connection between the business identifier and the goods or services that the mark proprietor distributes under its sign. However, a simultaneous trade mark use of the contested business designation in this sense was not covered by the plaintiff's claim.

Due to procedural errors by the Court of Appeal, the case was remitted to that court for rehearing and redecision.