Trademark protection in Germany: the bar for apps is set higher

German legislation and case law are traditionally very generous on the protection of titles of products containing immaterial goods (works)—in particular, newspapers, magazines, and radio and TV programmes broadcasting news information. The names of these media products are protected when they are used in business, irrespective of whether they are registered as a trademark. Further, the level of distinctiveness required for protection is lower than that for the registration of trademarks.

Titles of newspapers, magazines and news broadcasting programmes that appear to be descriptive under the standards of the EU trademark regulation (207/2009) and therefore would not be eligible for trademark registration might be protected as a work in Germany. Wheels Magazine—a publication on American cars—has been considered sufficiently distinctive and granted protection, as well as Money, an investment magazine, and Tagesschau (“Showing the day”), a TV news programme. All these names have been considered sufficiently distinctive and granted protection without the need to show acquired distinctiveness.

The scope of protection of such titles covers works of the same category so that, for example, the title of a magazine is protected against similar use by another magazine but not a TV programme, while the tit le of a TV programme is protected against use by another programme, but not a newspaper. The scope of protection might be extended to different categories in cases of a renowned title.

It has been questioned whether this established case law might be applied to names of apps for mobile phones and domain names. As there is little doubt that app names might be protected when used in business irrespective of registration as a trademark, it has not been clear if the very low standard with respect to distinctiveness might be applied as well.

In a decision (I ZR 202/14) published in July, the German Federal Court of Justice confirmed that app names and domain names do not need to be registered as a trademark in order to be protected. But the court denied the application of the low standard of distinctiveness—which is applied to newspapers, magazines, and radio and TV news programmes—to app and domain names.

The app and domain in this case was wetter.de (weather.de), with .de representing the country-code top-level domain for Germany. The app and website provided weather forecast services and information.

The recognition factor

The court pointed out that the very low level of distinctiveness for print, radio and TV broadcasting media titles is due to the public being accustomed to a large variety of names of newspapers, magazines and news broadcasting programmes that are highly descriptive of the subject of their content. The public, being acquainted to such descriptive titles, pay more attention to differences, so a very low level of distinctiveness of such titles may be considered sufficient for finding the name distinctive within this area of business.

Further, newspapers, magazines, and TV and radio and news programmes are marketed periodically. As the public are regularly exposed to descriptive names, they are therefore more inclined to recognise and individualise names lacking distinctiveness in these fields.

The court points out that it cannot be found (at present) that customers are as used to the descriptive character of app names as they are in the field of print media and broadcasting. Rather, there is a large variety of non-descriptive app names so it cannot be found that the public are familiar with descriptive titles and pay more attention to the wording of the name as they do in the aforementioned fields.

“It cannot be found (at present) that customers are as used to the descriptive character of app names as they are in the field of print media and broadcasting.”

In addition, the court makes clear that this historical development of the public’s familiarisation with descriptive terms being used as names of products in the print and broadcasting media determines its finding that app names do not benefit from the lower threshold of distinctiveness. Germany is therefore able to apply the low standard for app names in the future as well, provided that the use of descriptive app names becomes a common phenomenon.

The court also applies the same considerations with respect to domain names and does not consider a very low level of distinctiveness as sufficient for a domain name to be protected. The court points out that the public’s familiarisation with descriptive domain names may only be acknowledged with respect to websites that market information as newspapers or magazines in print form which are designated by the domain name.

Essentially, descriptive app and domain names cannot claim protection in Germany, contrary to the names of newspapers and magazines, and radio and TV news programmes. They are protected only if they can claim acquired distinctiveness.

The level for achieving acquired distinctiveness is very high. The court requires that at least 50% of the addressed public recognise the name. In the case at hand, 41% of internet users had heard of wetter.de, a level which was not sufficient and protection was therefore denied.

The lessons to be drawn from this decision in the mobile app and internet business area are threefold: