On 11 April 2013 the German Federal Supreme Court had to decide on the scope of protection of well-known trademarks (file no. I ZR 214/11). The plaintiff was the German company Volkswagen AG, the owner of the famous Community trademark “Volkswagen”, which is registered for vehicles as well as repair and maintenance services and vehicle parts. The defendants included a company of the Springer Group – a big publisher operating the website for the Bild newspaper (an established tabloid in Germany), and ATU Autoteile-Unger- Handels GmbH & Co. KG – an independent company offering spare parts and repair services for vehicles.
Both defendants ran a joint campaign in which ATU provided maintenance and repair services for vehicles under the designation “Volks-Inspektion”, offered tires under the designation “Volksreifen” and ATU was designated as “Volkswerkstatt”. In other campaigns with different cooperation partners the Springer Group used designations such as “Volksspartarif”, “Volksfarbe”, “Volks-DSL”, among others.
Volkswagen AG regarded the use of these terms as an infringement of its famous trademark “Volkswagen” and started legal action against the defendants. In its decision, the German Federal Supreme Court pointed out that wellknown trademarks have a broad scope of protection. Therefore third parties, when using similar designations, need to keep more distance from well-known marks than from those lesser-known. The German Federal Supreme Court held that a wellknown trademark will be infringed if the respective consumers think that there is an economic or organisational link between the owner of the well-known trademark and the user of the contested signs; or if the use of the contested signs prejudices the distinctiveness of the well-known trademark. As the Court of Appeals had not taken into account this broad scope of protection of well-known trademarks, the German Federal Supreme Court reversed and remanded the decision.
Although the reasoning of the German Federal Supreme Court has not yet been published, it is clear that the court’s decision has further widened the scope of the already broad protection for well-known trademarks.