Post from Hollywood: OSCAR vs. OSCAR's – Cease and Desist Notice for Trade Mark Infringement

You rarely receive post from Hollywood. However, the chances are quite good if you operate a catering business called "OSCAR's" or something similar in the Federal Republic of Germany. Then namely the Academy of Motion Picture Arts and Sciences presumptively suspects an attack on its trade mark rights in the term "OSCAR" and issues a corresponding cease and desist notice with considerable claim value. Apart from the fact that such massive attacks are regularly hardly comprehensible to the restaurateur, there are various reasons to doubt the rights asserted by the Academy. In the event of a cease and desist notice, it is therefore worthwhile to examine the factual and legal situation carefully.

At first glance, one may ask what connection exists between a simple catering business in Germany and the Oscar award ceremony in Hollywood. The basis of the cease and desist notices issued are, inter alia, a German word mark from 1982 and a European Union trade mark (also a word mark) from 2002, which protects the term "OSCAR" in relation to the entertainment services "promotion of the film industry through prize-giving and the like". The geographic reference derives from the geographic scope of protection of the trade marks, which also extends to the Federal Republic of Germany. Insofar as one considers this service (prize-giving) and the services of a catering business to be dissimilar, the Academy's lawyers argue that the trade mark "OSCAR" is ultimately so well known that it enjoys

when used in connection with other goods and services.

The whole matter is faced with several objections. Firstly, it is already questionable whether the trade mark "OSCAR" is or was actually used in Germany or Europe, that is, in its territory of protection. However, this is – at least after expiry of the five-year grace period for use – a requirement for the continued existence of a trade mark. On closer examination, it is noteworthy that in Europe neither corresponding services are provided nor the award ceremony in America is promoted here, with merely editorial reporting changing nothing in this regard. Accordingly, the trade mark could already fail on the ground of non-use. Secondly, there are very considerable doubts as to whether the relevant circles of trade, given the designation of a catering business with the term "OSCAR's" or the like, would think of the award ceremony in Hollywood at all, that is, whether any dilution of reputation exists. The vast majority of the relevant circles of trade will namely assume that it is a personal name of the owner or lessee, which practically precludes dilution of reputation to the detriment of the Academy. If, moreover, the use of a personal name actually exists, this circumstance is expressly legitimised by the Trade Mark Act in § 23 MarkenG, whereby the trade mark proprietor cannot prohibit the use of the term even if such use is performed as a sign or trade mark.

The cease and desist notices issued Abmahnungen are predominantly based on deterrence and less on a clear legal position. Those affected can therefore only be advised to obtain expert legal advice and to have the legitimacy of the claim thoroughly examined.