In a recently published decision, the Frankfurt Higher Regional Court, Germany (Oberlandesgericht Frankfurt) found that the mere purchase and registration of a generic Top Level Domain Name (gTLD) containing a third party trade mark does not necessarily constitute potential registered trade mark infringement (“Erstbegehungsgefahr”). In order to obtain injunctive relief for potential trade mark infringement, further conditions must be met.

The Case

The Claimant, a German pharmaceutical and chemical company, is the owner of the protected company symbol “X” which also enjoys trade mark protection for the EU territory by means of an International Registration. The Defendant is a subsidiary of an American pharmaceutical company which is one of the largest pharmaceutical companies in the world. A demarcation agreement between the Defendant’s parent company and the Claimant provides that the Defendant is only allowed to use the name “X” in the United States and Canada and that it is obliged to use a geographical addition when entering the German market.

In 2012 the Defendant applied for the gTLD “.xy” which included the Claimant’s trade mark. There is no website at present. The Claimant feared that the Defendant was going to use the gTLD in relation to pharmaceutical products in Germany and Europe and therefore infringe its trade mark rights as well as its company symbol and applied for an interim injunction before the Frankfurt Regional Court (Landgericht Frankfurt) for an order the Defendant be prevented from

  1. commercially presenting the Opponent’s pharmaceutical goods and services under the gTLD “.xy” in the European Union, especially as announced in Defendant’s application for the gTLD (Annex), and
  2. commercially presenting Defendant’s company (including its subsidiaries) under the gTLD “.xy” in the European Union, especially as announced in Defendant’s application for the gTLD (Annex).

In the interim injunction process the Frankfurt Regional Court decided in favour of the Claimant without an oral hearing and confirmed its decision.

The Appeal decision

At second instance, the Defendant’s appeal was successful. The Frankfurt Higher Regional Court set aside the interim injunction for two reasons:

Firstly, the wording of both requests was too unspecific and would lead to an unjustified prohibition. Although it limits the scope of prohibition to the territory of the EU, it does not determine the necessary “domestic nexus”. The request must specify (a) if the gTLD is intended to be used in the territory covered by the trade mark protection and (b) if use as a trade mark can be assumed. According to the Court, it is neither clear from the request and the Annex referred to which content shall be displayed on the website nor which name the Second Level Domain shall carry.

Secondly, the Court was of the opinion that the mere purchase of a domain itself cannot constitute trade mark infringement. The claimed injunctive relief lacks the required danger of potential infringement which can only be assumed if there are clear and serious grounds indicating that the conduct of the Defendant will be unlawful in the near future. Therefore it must refer to a specific infringing activity.

With reference to the jurisdiction of the German Federal Court (BGH), the Court stated that a gTLD generally allows the supply of internet content worldwide. However, the application of national and European trade mark law in case of trade mark infringement in an internet context must not lead to the consequence that every offer of foreign services, in case of likelihood of confusion, constitutes trade mark infringement. It is rather necessary to identify further circumstances that establish a country-specific use of the gTLD. Therefore, the content of the internet offer must contain a sufficient, commercially relevant effect. In order to assess such a “commercial effect”, the Court considered it essential to what extent the economic interests of the trade mark owner are affected by the contested use in the relevant Member State. Furthermore, it has to be taken into account to what extent the use of the trade mark is only an unavoidable side effect based on technical or organizational reasons beyond the control of the domain name owner, or if the domain name owner intentionally profits from the domestic availability which significantly impairs the trade mark owner.

The Court pointed out that the availability of internet addresses under the gTLD “.xy” in future in the EU including Germany is not sufficient positively to assume such a country specific commercial effect. Rather the content of the website is essential. Against this background, the Court concluded that a commercial effect regarding the EU territory cannot simply derive from the fact, for example, that the Defendant stated in its application for the gTLD that it is running a global company, without informing about any territorial limitations, or the fact that the Defendant’s service provider is supposed to run the gTLD on at least eight servers and two of them are located in the EU. Above that, the Court pointed out that there are no indications that the Defendant will use the gTLD as a trade mark or a company symbol. It was wrong generally to assume that all content that will be provided under the gTLD will be use of the trade mark.

Conclusion

The decision is in accordance with the jurisdiction of the German Federal Court with respect to Second Level Domains. In case of Second Level Domains the German jurisdiction acknowledges that the mere registration of the domain name including a third party trade mark neither constitutes use in the course of trade nor use as a trade mark. The trade mark owner is entitled to claim for injunctive relief on a case by case basis only regarding the specific content of the website available at the contested domain name, but not regarding the use of the domain name per se. Hence, in order to enforce its rights in such a case, the trade mark owner will have to find evidence indicating a concrete intention of the domain name owner to use the sign in connection with specific website content that is suitable to have a commercial effect in the relevant Member State(s) and to violate its trade mark rights.

Case 6 U 151/16