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January 1, 2013 Vol. 68 No. 1 Back to Bulletin Main Page

Trademarks Versus Titles of Works: When Do Software “Titles” Infringe Trademarks Under German and European Law?

Section 5(1) of the German Trademark Act provides that company symbols and titles of works shall enjoy protection as commercial designations. Pursuant to Section 5(3) of the Act, titles of works are

the names or special designations of printed publications, cinematographic works, musical works, dramatic works or other comparable works.

According to settled German case law, “other comparable works” include, inter alia, titles of radio or television series, computer games and video games, and, in most cases, software (see, e.g., German Federal Court of Justice (FCJ), Apr. 27, 2006, Case I ZR 109/03—Smart key; FCJ, Apr. 24, 1997, Case I ZR 44/95—PowerPoint).

Under European law, titles of works, under Section 5(1) of the German Trademark Act, are national rights, which constitute “earlier rights” in the sense of Article 8(4) of the Community Trade Mark Regulation (Council Regulation (EC) No. 207/2009) (CTMR). Thus, an opposition against an application for a Community trade mark (CTM) can be based on the title of a work. (See OHIM, Opposition Guidelines, pt. 4 (“Rights under Article 8(4) CTMR”), at 21—Member State: Germany.)

The use of a title of a work does not, however, necessarily infringe an identical or confusingly similar trademark that has been registered for identical or similar “works.” It is also settled case law in Germany that titles of works are, contrary to trademarks or company symbols, rather content-related and are intended to distinguish one work from another work, but that generally they do not contain an indication of the creator or manufacturer of the work. See, e.g., FCJ, Oct. 13, 2004, Case I ZR 181/02—Das Telefon Sparbuch; FCJ, Jan. 23, 2003, Case I ZR 171/00—Winnetous Rückkehr; FCJ, Mar. 1, 2001, Case I ZR 211/98—Tagesschau; FCJ, July 16, 1998, Case I ZR 6/96—Wheels Magazine.

However, in certain cases even the title of a work may contain an indication of commercial origin. This applies to titles of printed newspapers, journals and periodicals (FCJ, Sept. 9, 1999, Case I ZR 50/97—FACTS); titles of well-known TV series (FCJ, Nov. 19, 1992, Case I ZR 254/90—Guldenburg); and titles of well-known news broadcasts (FCJ, Mar. 1, 2001, Case I ZR 211/98—Tagesschau). In general, only if, as a result of specific circumstances, the relevant public perceives the title of a work as referring not only to the content of the work but also to its origin from a certain enterprise (either directly, or indirectly by virtue of the enterprise’s goods or services) does the title distinguish that work from another. In addition, the finding that the title of a work contains such an indication of commercial origin requires concrete indications (see Higher Regional Court of Hamburg, Nov. 23, 2000, Case 3 U 53/99—Conquest of the new world).

Recently, the Higher Regional Courts of Hamburg and Düsseldorf focused on the question of whether, and under which specific conditions, a software title contains an indication of origin and thus might infringe prior trademark rights.

Higher Regional Court of Hamburg, Judgment of Jan. 18, 2012, Case 5 U 147/09—Luxor
In the Luxor case, the plaintiff owned the German word mark LUXOR, registered for “games.” The defendant distributed a computer game on CD and on the Internet under the names “Luxor” and “Luxor – Amun Rising”; the user was taken on a virtual trip through Ancient Egypt, the goal being to save the Temple of Luxor from destruction. The defendant also distributed subsequent games under the name “Luxor” followed by a subtitle. To a certain extent, the word “Luxor” was marked with the symbol ™. The plaintiff argued that this use of “Luxor” constituted use as a trademark; the relevant public would perceive “Luxor” not only as the title of a work but also as an indication of origin. The Court rejected the plaintiff’s claims based on non-use of its trademark under Section 26 of the German Trademark Act. It did, however, comment at length on the question of whether the defendant had used the title “Luxor” as an indication of origin.

The Court held that there were several circumstances that could justify the conclusion that the name “Luxor” had to be seen not only as the title of a work but also as an indication of origin. It further held that in particular the use of the symbol ™ would support the finding that the title also contained an indication of origin. The Court noted that use of the symbol ™ or ® might clearly reveal to the public that the manufacturer of the game not only saw the title as an indication of the features or characteristics of the goods and services covered but also intended to influence the perception of the relevant public toward the use of “Luxor” as a trademark (in this respect the Court referred, inter alia, to its judgment of November 23, 2000, in Case 3 U 53/99—Conquest of the new world).

In addition, the Court held that the fact that the plaintiff distributed a whole series of computer games under the title “Luxor” likewise supported the assumption of an indication of origin. This use of the title could be compared with the use of a title of a periodical publication; thus, the settled case law of the FCJ could apply, according to which titles of periodically released works, such as newspapers and magazines, can be considered as an indication of origin because of the repeated publication and the subsequent recognition of the title.

However, the Court also mentioned that one argument against the assumption of an indication of origin was that the defendant’s “Luxor” games were games of skill that dealt with Ancient Egypt and the Temple of Luxor, and thus the relevant public could view the name of the game as referring instead to the content of the game.

The Court rejected the complaint because the plaintiff could not prove use of its trademark LUXOR for games within the relevant five-year period. The plaintiff argued that it had allowed a third party—Ravensburger AG—to use the word mark LUXOR for a board game in the past, but the Court held that the use of the term “Luxor” for Ravensburger’s board game could be considered only as use of a title of a work and not as use of a trademark. In this respect, the Court concluded that the same principles that applied to the allegedly infringing use of the name “Luxor” also applied to the question of whether the plaintiff used its word mark in a way that preserved its rights in the mark. The Court held that the plaintiff did not present sufficient evidence of use of the title of its game also as an indication of commercial origin, as the game had clearly been marked in multiple places with the blue “Ravensburger” logo, which is a clear and well-known indication of origin of the firm Ravensburger AG.

Regardless of the fact that the plaintiff did not base its claim on a prior title of a work within the meaning of Section 5 of the German Trademark Act, the Court also ruled out the possibility that the plaintiff could rely on “Luxor” as a prior title of a work, holding that only Ravensburger, as manufacturer and distributor of the “Luxor” game, could lay claim to such rights. This was due to the fact that a title of a work belongs to the one who—in a visible manner—claims the title for himself at the time the rights in it are established by its actual use in commerce. In addition, the alleged title rights had expired because Ravensburger ceased distribution of the “Luxor” game before the filing date of the plaintiff’s action; the plaintiff itself did not use “Luxor” in a way that would have established its own prior title rights.

Higher Regional Court of Düsseldorf, Judgment of Apr. 24, 2012, Case I-20 U 176/11—Enigma
In this case the plaintiff claimed an infringement of its CTM ENIGMA (No. 006611636), registered in 2008 for “operating systems, driver programs solely for set-top boxes, satellite receivers, digital TV receivers; set-top boxes, satellite receivers, digital TV receivers.” The plaintiff had granted an exclusive license in the mark to an affiliate that for many years had distributed set-top boxes using the open-source operating system Linux. In 2000, the affiliate, which had developed a user interface under the name “Enigma,” licensed it under the GNU General Public License Version 2 (GPLv2). Since 2006, the affiliate also had distributed a user interface named “Enigma 2” and licensed it under GPLv2. Enigma 2 was employed by a number of competitors for their set-top boxes operated under Linux; this required certain modifications of the user interface to adapt it to the individual hardware of each manufacturer.

The defendant distributed set-top boxes under the name “VU+ DUO.” These likewise were operated under Linux with the plaintiff’s affiliate’s user interface Enigma 2, which contained certain adaptations to the hardware. The set-top box was advertised in a flyer as follows:

VU+ DUO Your Smart Linux TV Player. The VU+ DUO is a fully equipped HDTV Twin Tuner PVR with Linux Enigma 2 operating system….

In addition, the word “Enigma” was included in a further technical description and displayed in the software menu under the heading “About” with details of the software version.

The plaintiff claimed that the defendant’s use of the word “Enigma” constituted an infringement of its CTM ENIGMA. It requested that the Court grant a preliminary restraining order under Article 9 of the CTMR.

The Court rejected this request. It concluded that the plaintiff could not demand that the defendant refrain from the contested use of the designation “Enigma,” at least not by way of summary proceedings, as it was unlikely that the plaintiff would be successful in basing its claims on CTMR Article 9. It was, said the Court, more likely that the defendant used the name “Enigma” as a title of a work in a way that is permitted as a merely descriptive use under Article 12(b) of the CTMR. Thus, the Court held that the defendant would not need any license to use the plaintiff’s mark, and that it was not decisive if GPLv2, as applied in this case, granted any rights to use trademarks.

More specifically, the Court held that if a trademark can be infringed only by use of a sign in a trademark manner—as is the conventional view in Germany—the assumption of a trademark infringement would fail because the defendant did not indicate the commercial origin of the user interface, but instead indicated the software that had been installed on the device for the graphic user interface. It further held that—even without taking into consideration the question of use as a trademark—the plaintiff’s claims had to be rejected under CTMR Article 12(b), pursuant to which a CTM “shall not entitle the proprietor to prohibit a third party from using in the course of trade … indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service…, provided he uses them in accordance with honest practices in industrial or commercial matters.”

The Court found that the sign “Enigma 2” had been used only to designate certain software and thus was used as the title of a work. The relevant public would understand that the combination of the Linux operating system and the Enigma 2 user interface was part of the offered configuration of the marketed receiver, and would recognize the designation as an identification of the software by its name. It could not be ruled out, however, that the relevant public might recognize the title of a work also as an indication of origin, but such an understanding was unlikely to occur in this case, as the names “Enigma” and “Enigma 2” designated software licensed under GPLv2, pursuant to which anyone may copy, distribute and use such software.

The Court found, moreover, that software used under a free license (“open-source software”) was comparable to a work for which copyright protection had expired. In such a case, where third parties are free to reproduce the work itself, there would be a need to name the work. The public’s legitimate interest in using the title of the out-of-copyright work would need to be taken into account in determining the scope of protection of title of a work registered as a trademark under Section 23 No. 2 of the German Trademark Act (which corresponds to Article 12(b) of the CTMR), as the FCJ had held in its judgment of February 17, 2000, in Case I ZB 33/97—Bücher für eine bessere Welt. In the Court’s view, the public’s interest was no different when the use of a work was unrestricted in the first place because of a free license. In both cases, the legitimate user would be required to point out the name of the work, that is, the title of a work. If the software that was on the defendant’s system was the same work, and if both the defendant and its supplier complied with GPLv2 and thus legitimately marketed the software as a graphic user interface, the use of the contested designation could not be considered to be contrary to honest practices in industrial or commercial matters.

The judgment of the Higher Regional Court of Düsseldorf must be seen as rather exceptional. As the Court itself stated in a previous decision (September, 28, 2010, Case I-20 U 41/09—xt:Commerce):

  • There are no explicit rules for trademark issues concerning open-source software licensed under the GPL;
  • The GPL does not contain even an implied license in any trademarks; and
  • The use of a registered trademark of the manufacturer is not required in order to exercise the copyrights licensed under the GPL.

Software companies should always register the titles of their software as trademarks in order to be able to enforce more than unregistered titles of works, which have only a limited scope of protection. For their part, owners of titles of works registered as trademarks should clearly communicate to the relevant public that the title is also a registered trademark, and should ensure that the perception of the relevant public is that the title is also being used as a trademark, by doing the following:

  1. Choosing a distinctive title that does not merely describe the content of the software;
  2. Using a title in conjunction with graphic elements (which should also be the subject of trademark registrations);
  3. Using symbols such as TM or ® (always provided the use of the relevant symbol is not misleading under unfair competition laws or prohibited for other reasons); and
  4. If possible, using the title for a series of works.
In addition, before registering or even using a trademark and/or a title for application software, computer games or other “works” within the meaning of Section 5 of the German Trademark Act, the owner should conduct searches both for prior identical and confusingly similar trademarks and for prior titles of works, as use of the title of a work that also contains an indication of commercial origin might infringe prior trademarks registered for identical or similar works, and vice versa.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.

© 2013 International Trademark Association