Other people's trade marks – under what circumstances may I use them without asking for permission?
Questions relating to the use of third parties' trade marks in the context of one's own advertising material are not as uncommon as they may seem at first glance: May I display the logo of the manufacturer of the equipment whose servicing I offer without their consent? Am I allowed to advertise with the car brand whose repair is one of my services even if I have not concluded a license agreement with the car company?
Up to now, the leading principle was that the use of another's sign is permitted if it indispensable for describing one's own goods or services. Even then, the use had to be limited to a minimum; eye-catching advertising, e.g. through the use of protected logos, was judged not to be necessary for determining one's own goods or services and was therefore not allowed.
More and more frequently, however, third-party trade mark logos appear in apps without the trade mark owner having been asked for permission. The Austrian trade mark courts recently had to deal with such a constellation, most recently the OGH (Austrian Supreme Court, 4 Ob 205/20f
The provider of an app for the digital management of customer cards and customer account access (downloadable in the Play and App Stores) used the logos of various customer loyalty systems, including the “Jö”customer card, in his software. The “Jö” customer card which enables consumers to collect bonus points in participating shops was introduced a few years ago by the Rewe group. The “Jö” logo is protected as a trade mark in classes 9, 35, 36, 38, and 42.
The trade mark owner filed a lawsuit demanding that the app operator cease and desist from using the trade mark both in the app and in connection with advertising in the respective stores. Two instances granted him the injunction; the Supreme Court, however, considered the appeal brought by the app operator to be justified.
According to the Supreme Court, the recent amendment of Section 10 paragraph 3 (3) Austrian Trade Marks Protection Act resulted in a minor, yet significant change in the legal situation. The "necessity" of the use of another's trademark is not necessarily limited to the practically only and unavoidable means of providing comprehensible and complete information to the public. Its focus has shifted to whether the function of the trade mark – serving as a business identifier with a certain advertising value – is impaired by the way it is used by a third party. The use still has to be in accordance with honest practices in trade and commerce and it must not be considered an unfair business practice. This would be the case, for example, if the trade mark were diluted by the manner of use and/or its reputation impaired or unfairly exploited.
From this perspective, the Supreme Court came to the conclusion that the use of the “Jö” logo in the context of the app as well as in advertising related thereto is permissible. Consequently, the use of third-party trade mark logos is no longer prohibited from the outset; whether it is permitted in the individual case will depend on the exact circumstances of that case.