Mobile apps are generally worthy of title rights protection, said the German Federal Supreme Court (BGH) in a ruling last week. However, these unregistered rights must cross a certain threshold of distinctiveness to qualify for protection – just like their big brothers, registered trademarks. The claimant’s app and domain name “wetter.de” was held not to pass that test (Decision of 28 January 2015, file number I ZR 202/14 – German press release).
Whether weather is worthy of name and title
The claimant, a large German media house, operates a weather information service under the domain name “wetter.de” and on a mobile app of the same name. “Wetter” is German for “weather”. The claimant sought to enjoin the defendant from providing apps with weather information services under the names “wetter DE”, “wetter-de” and “wetter-DE”.
The German Supreme Court rejected the claimant’s second appeal, following the decisions of the previous two instances. The court held that generally, online offerings and mobile apps are works whose names can qualify for protection under unregistered title rights. Under the German Trademarks Act (MarkenG), such unregistered title rights largely afford the same scope of protection as registered trademarks. Applying the protection criteria to the name “wetter.de”, the court said that this domain and app name was a purely descriptive reference to the weather information services offered by the claimant.
Lower protection thresholds and acquired distinctiveness
The court did concede that in certain market situations, the threshold for protection can be very low. The court gave an example: Newspapers and magazines typically have very descriptive titles. The public is used to this longstanding naming practice and therefore pays careful attention to even slight differences. However, the court did not apply the same low threshold to the market of online service offerings and corresponding apps. The court was also not satisfied that “wetter.de” had acquired distinctiveness through intensive and longstanding use on the German market. The claimant’s evidence did not show that “wetter.de” enjoyed a market recognition of at least 50% in Germany.
More clement weather ahead?
Market perception is subject to constant change. The internet abounds with service offerings under highly descriptive domain names, given that these domains typically rank well in search engine results. And more often than not, these offerings will also be provided through matching apps. It seems only a question of time before the courts may take a different stance to online market usage and concede that descriptive names are established practice. This would open up a new protection mechanism for a huge number of online and mobile offerings.