The Trademark Protection Act provides that the owner of a registered trademark cannot prohibit a third party from using his name or address in the course of trade, provided that this is in accordance with honest practices in trade or commerce. The Supreme Court (OGH) recently dealt with the use of the first and last name for the identification of goods in 4 Ob 131/22a of 18.10.2022.
In the present case, two brothers each run their own sparkling wine cellar in the form of a limited liability company. The plaintiff GmbH of the 1st brother has existed for some time and has registered the family name of the two brothers as a word mark. In addition to the first and last name of the 2nd brother, the defendant GmbH also bears other components in its company name, and had a word and figurative mark registered, which, however, only contained the first and family names of the company owner as a word component. The older GmbH and plaintiff designates its sparkling wine with the word mark, i.e. the family name, and demanded that the defendant GmbH refrain from designating its sparkling wine with the first and family name of the 2nd brother.
In its decision, the Supreme Court confirmed the legal opinion of the Court of Appeal, according to which the plaintiff GmbH’s request is justified, since the use of the name in this specific case is to be qualified as unfair and therefore does not correspond to decent customs in trade or commerce. Especially since the name forms the formative component of the word and figurative mark of the defendant GmbH and does not fade into the background due to the use of the entire company name, the reputation of the earlier trademarks of the plaintiff GmbH may occur due to the formative markings in the distribution of the two similar products. The defendant GmbH does not use the full company name for the identification of its products, but only the first and last name, which has led to an approximation of the trademark of the plaintiff GmbH.
However, the Senate emphasized that it does not follow from this that the use of memorable surnames can never be in accordance with fair practices just because it is already registered as a trademark. However, the court assumes that the similarity of the signs was deliberately chosen. In any case, it was not explained why it was not possible for the defendant GmbH to use the entire company name (first name + surname + additions) for the identification of the product or to highlight the parts of the company that were not identical with the earlier priority trademarks in an appropriate manner.
For further information, please contact:
Franziska Eckerstorfer, Lawyer
Zumtobel & Kronberger, Salburg
e: ta.walue@eciffo
t: +43 662 624500
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