Supreme Court, 16th December 2014, 4 Ob 154/14x

In this case two private trusts claimed for injunctive relief and removal against the defendant based on their community trade mark and the corresponding family name of the second trust. The defendant runs a company whose company name is a combination of that family name and the word “Akademie” (academy). The same combination is registered as a sub-level-domain of the company’s website.

The Austrian Supreme Court ruled in favour of the claimants, giving the following reasons:

  • The right to use one’s name does not include using it in a way that leads to a likelihood of confusion with the name (or other sign) of someone using that name in a permitted way.  
  • If the name is registered as a community trade mark, the other owner of this name is not allowed to use the name as a company name (or part thereof) in relation to services which are the same as those that are protected by the trade mark. However, the trade mark is not protected against the mere use as a company name by the other owner of the name.  
  • The above applies also to the domain name if, given that the trade mark and name of the trade mark owner are well-known, the other owner of the name must have been aware of the likelihood of confusion because the name and the trade mark are identical. Under trade mark law such use would only be permitted if there is a notice on the website. In addition, and to comply with the name protection law, a distinctive element must be added to the domain name of the website.  
  • The question of priority is not relevant in the case of an authorized use by both name owners.