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Germany’s Supreme Court has ruled that descriptive names of apps and domains cannot claim trademark protection unless they have acquired distinctiveness, says Stefan Abel of Klaka Rechtsanwälte.
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 title 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.
Stefan Abel, Klaka Rechtsanwälte, trademark, domain names,