U-turn of the Austrian Supreme Court: no more cancellation of a domain registration due to trade mark infringement

So far the Austrian Supreme Court had found in several judgments that a trade mark owner is entitled to the cancellation of a domain registration infringing the rights of the trade mark owner. The Supreme Court's reasoning was up to now that the risk of recurring infringement could not be avoided by solely changing the content of the website as the content could easily be changed again. This jurisprudence was heavily criticised arguing that abolishment of the infringement would not necessarily require the cancellation of the domain registration.

In a recent judgment concerning the domain "amade.at", which was found to infringe the Austrian trade mark "Amadé", the Supreme Court made a sharp U-turn with respect to its former judgments by declaring that the entitlement to destruction based on the Austrian Trade Mark Act does not automatically lead to a title for cancellation of the infringing domain registration.

As it is one of the basic principles of Austrian case law on trade marks that online and offline the same standards to trade mark protection have to be applied, the Supreme Court had to distinguish the present case from a former case where it was found that the trade mark owner was entitled to destruction of re-imported original goods (whereas in this case the infringing status could have been easily abolished by re-exporting the original goods). In view of the Supreme Court, the entitlement of the trade mark owner to destruction is justified if there is a typical risk that the infringing goods and implements may lead to further infringing acts in the future. However, merely being the owner of a domain registration which might previously have been used in an infringing manner does not result in a typical risk as such. However, such circumstances have to be strictly distinguished from other cases, where the mere ownership of a domain registration – as such – does mandatorily lead to a trade mark infringement, e.g. in case of a famous trade mark. In these cases, the right owner as well as in cases of Domain Grabbing is still entitled to cancellation of the infringing domain registration.

Thus, in view of this recent judgment, the trade mark owner will have to prove that the mere existence of domain registration or other infringing goods results in the typical risk of future infringing acts in order to be entitled to destruction of the infringing goods (e.g. cancellation of a domain registration).

Dr. Rainer Beetz, LL.M.