Peek & Cloppenburg Hamburg vs. Peek & Cloppenburg Düsseldorf

The First Civil Senate of the Federal Court of Justice (BGH), which is responsible for trade mark law, recently ruled in five proceedings on the question of how nationwide advertising by companies with identical company designations must be structured.

The parties to the proceedings are legally and economically independent enterprises which have been operating numerous clothing stores under the name "Peek und Cloppenburg KG" for several decades.

The claimant is based in Hamburg and operates branches in the northern German region, whilst the defendant is based in Düsseldorf and operates predominantly in the west, south and central parts of Germany.

The subject matter of the proceedings was the claims for injunctive relief asserted by the claimant due to the defendant's nationwide advertising. The claimant argued that the defendant's advertising in the northern German region would be attributed to the claimant as a result of the identical company designation. The appellate court prohibited the defendant's advertising that was objected to.

Decision of the BGH

In all five proceedings, the BGH set aside the decisions of the appellate court, as the BGH announced in its press release of 24.01.2013. In its reasoning, the BGH held that the defendant had a legitimate interest in advertising in nationwide distributed media, and therefore the advertising could not in principle be prohibited. Rather, the defendant had to inform readers of the advertisements in an appropriate manner that there are two companies with the identical designation "Peek & Cloppenburg KG" and which of the two companies the advertising originated from.

The advertisements that were the subject matter of the proceedings were characterised by the fact that under the company name "Peek & Cloppenburg" there appeared, in somewhat smaller type, the addition "Düsseldorf" and below that a three-line text which informed readers that there are two independent companies "Peek & Cloppenburg" with offices in Düsseldorf and Hamburg, and that the respective advertisement was exclusively that of the Düsseldorf company. The BGH considered this notice to be sufficient. According to the BGH, the addition did not have to correspond in size and design to the advertising message. The BGH rejected a violation of the claimant's trade mark right through the defendant's nationwide advertising and a breach of the prohibition on misleading advertising, and dismissed the claims to that extent.

Conclusion

As long as the reader of an advertisement is informed in an appropriate manner that two mutually independent companies with identical company designations exist and which company the advertisement originates from, there is no violation of the trade mark right and no breach of the prohibition on misleading advertising. In this regard, the notice does not have to correspond in size and design to the advertising message.