This post originally appeared in the IPT Germany Blog
The German Federal Supreme Court (BGH) held for the first time that not only names of websites but also designations of smartphone-apps may be protected under the German Trademark Act (MarkenG). Section 5 of the German Trademark Act provides for a protection of “commercial designations” including titles. Each designation that falls within the scope of the provision will be protected by German Trademark Law despite the lack of a registration. The scope of protection provides for several claims although it differs from registered trademarks.
In its judgment of 28 January 2016, the Court found designations of smartphone-apps protectable as titles (file number: I ZR 202/14). According to a press release of the court, the judges held that domain names relating to internet services and apps for mobile devices, such as smartphones, can – in principle – be protected as so called “Werktitel” (titles) under German Trademark Law. Despite this general statement the court refused such protection for the specific case. The claimant had referred to its designation wetter.de which is being used for a website and a smartphone-app providing information on weather forecasts. It had been argued that the operator of wetter.at and wetter-deutschland.com had infringed its rights according to Section 5 MarkenG by offering smartphone-apps under the designations “wetter DE”, “wetter-de” and “wetter-DE to the German market.. This claim was denied by the BGH. The judges held the expression “wetter” as purely descriptive for a website and a smarphone-app that provide information on weather forecasts since the German word “Wetter” translates into “weather”.
The court acknowledged that a certain level of distinctiveness is required to call upon the protection of Trademark Law. This was denied for the designation wetter.de. The court also took into account the well-established line of jurisdiction regarding titles. Historically, a comparatively low distinctiveness has been regarded sufficient, in particular in areas where consumers have been educated to acknowledge and differentiate between highly descriptive titles. This is the case for example in the area of publishing where less distinctive designations are common and the public has become accustomed to it. The court found that this line of jurisdiction cannot be applied to names of websites and smartphone-apps.