Community Trade Mark Courts; Relationship CTM – earlier Domain Name

The CTM "PERSONAL SHOP" was registered for mail order publicity (class 35) and dispatch of mail order wares (class 38), and used by way of online shop, offering a. o. garments and household goods accessible by a homepage www.personalshop.net.

Claimant sued on the basis of this CTM the German defendant at a local court for trade mark infringement because of his use of the domain "personalshop.de" for a website containing links to several competitors of claimant. Claimant asked besides of a European-wide permanent injunction also for a preliminary injunction. The local court was competent to hear national trade mark infringement cases against defendants having their seat or infringing acts committed in its area. The urgent preliminary injunction came before the Austrian Supreme Court (OGH).

The OGH had first to rule on the jurisdictional issue on the basis of Art. 92 – 94 of the CTM Regulation. It concluded from these articles that solely a Community Trade Mark Court has jurisdiction regarding infringements of CTMs and that this exclusivity is such that it cannot be contracted out by agreement, and that the incompetence of the local court cannot be healed, e.g. because all parties and the court have notwithstanding processed the complaint.

Separately from this jurisdiction in main proceedings, jurisdiction for preliminary injunctions have to be judged. According to Art. 99 (1) CTM Regulation, also the local court has jurisdiction for provisional measures so that the preliminary case can be processed but not the main proceedings. However, in line with Art. 93 (5) and Art. 94 (2), it has to be concluded from Art. 99 (2) last sentence ("no other court shall have such (Community-wide) jurisdiction") that the local court can grant its provisional measures only for the territory of Austria. The website and its links therefore have to have respective effective limitations.

In the case itself it is clear on the basis of quasi identical signs and identical services that likelihood of confusion is present. However, the defendant has proven an earlier registration date of its domain name but not an earlier use through a website with the respective links. This plea is relevant according to Art. 95 (3) CTM-R insofar as it claims that the CTM of the claimant could be declared invalid on account of an earlier right of the defendant. The existence of an earlier right has for domain names to be judged according to Art. 8 (4) CTM-R, i.e. whether according to German law that domain name was acquired earlier and confers on the defendant the right to prohibit the use of a subsequent trade mark. According to the jurisprudence of the German Supreme Court, such a right on the name can result of its use if it becomes apparent that the domain name is not only an address designation but seen by the consumers as chosen indication of origin.

The mere registration of the domain name, therefore, also under German law does not constitute a prohibition right. Since the actual use of that domain infringes claimant’s right on its CTM, the preliminary injunction restricted to the Austrian territory has been granted.

Dipl.-Ing. Helmut Sonn