The competition law prohibition of trademark abuse is intended to prevent the unlawful exploitation of third-party trademarks in commercial transactions by creating a risk of confusion.
Who
- in commercial transactions
- a trademark
- used in a manner
- that is likely to cause confusion with a trademark of another company
violates the prohibition of trademark abuse.
The 6 Prerequisites for Unfair Trademark Abuse
Acting in the Course of Trade – What Does that Mean?
Only actions that take place within the scope of commercial transactions are relevant.
So…
- No purely private action
- No purely official activities
- No purely internal company measures
But…
an independent action with external effect and market relevance, which is aimed at acquisition.
However, a profit-making intention is not required.
- Thus, the actions of associations, political parties and trade unions can also constitute actions in the course of trade in this sense, provided that they only act in the course of an activity aimed at acquisition.
- In particular, members of the liberal professions and persons who pursue artistic or scientific activities can act in a manner relevant to competition law and violate the prohibition of abusing another’s trademark.
- Public law corporations – such as cities, municipalities, states, the federal government, any chambers – operate in the field of commercial transactions if they do not act in their function as sovereign bodies, but under private law and the activity in question has an entrepreneurial character.
For example, the construction of a car park is not considered an act in the course of trade, but a public activity, even if certain companies benefit from it.
The use of the trademark in question must also be objectively suitable to promote one’s own or another’s competition. It is not relevant whether this is actually intended.
Protectable Sign – What is Protected?
Trademarks serve to individualize and highlight a company and its goods and services vis-à-vis other providers. They help potential customers to orient themselves on the market and to find those companies again with whose services they were satisfied.
They have a distinguishing, origin, guarantee and advertising function.
Protected by § 9 UWG are:
Names
of natural and legal persons. They serve to identify and individualize a company in commercial transactions.
In principle, one’s own birth name can also be used, as long as there is no risk that it can be confused with another name already existing on the market.
Names that at the same time have a factual reference to the designations of services or goods are not suitable.
Stage names and pseudonyms are also protected.
Names must therefore be so special in their use in commercial transactions that the addressed customer base can thereby individualize a company and its offer.
Companies and Company Components
The company is the name of an entrepreneur entered in the commercial register under which he conducts his business and issues the signature (§ 17 UGB).
§ 9 UWG also protects company components, i.e. short designations and keywords of companies, under trademark law.
Special Designations of a Company
Establishment or company designations are also protected, which do not designate the company or the entrepreneur as a legal entity, but the company itself.
They are therefore not entered in the commercial register, but must also be able to individualize the company vis-à-vis others.
A designation of a sub-department of a company only enjoys trademark protection if it makes at least an organizationally demarcated part of the company recognizable to the relevant circles.
Designations of a Printed Work
Titles of printed works (such as books, newspapers, reference works, but also, for example, CDs and films) can be protected via § 9 UWG, provided that they do not designate a work already protected by copyright.
Domain Names
The chosen name of a homepage for a company can also be protected under competition law.
Peter HarlanderHarlander & Partner Rechtsanwälte „Wichtig: Es gilt einheitlicher Rechtsschutz! Auch zwischen einer Domain und einer „Offline-Bezeichnung“ eines anderen Unternehmens kann demnach Verwechslungsgefahr bestehen, welche durch den Prioritätsgrundsatz gelöst wird – das ältere Kennzeichen geht vor!“
Unregistered Signs
In particular, signs that are (not yet) registered as trademarks are also protected.
Equipment
Under equipment of a company are
- „Business badges and
- other facilities intended to distinguish the company“
understood.
What is meant are individual representations of the offered services, goods or means that a company uses.
This includes special packaging of goods, such as the Mozart ball, a special uniform of employees, but also certain, widespread color characteristics such as the MANZ red of the MANZ publishing house. For example, the individual design of a company car also falls under the area of equipment protection.
Peter HarlanderHarlander & Partner Rechtsanwälte „Wichtig: Ausstattungen dieser Art werden von § 9 UWG nur geschützt, wenn sie bereits Verkehrsgeltung gewonnen haben.“
Distinctiveness or Recognition in the Trade
Distinctiveness
Whether a sign is protected under competition law depends to a large extent on whether it has distinctiveness (also trademark strength).
This is the case if the sign has a certain individuality and is therefore suitable to distinguish the user from other entrepreneurs.
Fantasy Words
generally have sufficient distinctiveness. In particular, completely invented words, but also those that belong to the common language but have no reference to the offered goods or services, are distinctive.
For example, the word “Dorfalm” has distinctiveness as a designation for a restaurant business.
Descriptive Information
Designations that are generally common and have a purely descriptive character do not have the required distinctiveness.
Their content can be easily accessed and they contain a readily understandable reference to the offered activity, service or the distributed goods.
They are generally not suitable to sufficiently individualize the user vis-à-vis other entrepreneurs in the same industry. This also includes generic terms.
Accordingly, the designations “Best Energy” for an energy operator or “shopping city” for a shopping center are not sufficiently distinctive.
Word Combinations
On the other hand, word combinations have trademark strength if they are not purely descriptive, but are sufficiently special to make the entrepreneur stand out in the crowd.
Pure, not in the everyday language common references to the offer of an entrepreneur do not preclude protection of the sign, however.
The term “babydry” for disposable diapers, for example, has the required degree of distinctiveness.
In the case of ambiguous designations, it is sometimes difficult to assess the trademark strength:
If a sign contains several possible meanings, it is sufficient if only one meaning possible for the addressed group of addressees accurately designates an aspect of the offered goods or services – the sign is then considered merely descriptive and not distinctive.
The designation “Gute Laune” (Good Mood) for a tea connects a positive emotion with the product. However, the addressed audience is required to make a certain interpretation in order to connect this emotion with the enjoyment of the tea. The sign has distinctiveness.
The use of foreign language terms is judged according to how generally understandable they are for the average consumer.
The term “shopping city” will be understandable for the average addressee and is therefore purely descriptive.
Letter or Number Combinations
These usually have distinctiveness, unless there is a concrete need to keep the chosen combination free.
This would be the case with the designation “DIY” (Do it yourself) for goods of a home improvement market – the term has too high a common usage.
Geographical Information
Are generally only protected if they have recognition in the trade.
Peter HarlanderHarlander & Partner Rechtsanwälte „Wichtig: Sollte ein Zeichen nicht unterscheidungskräftig sein, kann es dennoch geschützt sein, wenn es stattdessen ausreichend Verkehrsgeltung gewonnen hat.”“
The competition law protection of equipment generally requires that, in addition to distinctiveness, it has also acquired recognition in the trade and thus clearly distinguishes itself from the relevant circles.
Recognition in the Trade
A sign has recognition in the trade if it is regarded by the relevant circles as an indication of a particular company or its goods or services. (RIS-Justiz RS0066744)
This degree of identification is decisive for the assessment of the recognition in the trade of a sign.
Another indication of a possibly sufficiently existing recognition in the trade is the degree of awareness of the sign – in which circles is the sign widespread?
The question of how far the awareness of the sign extends can also be relevant. – In which regions is the sign widespread?
If a sign lacks the required distinctiveness, it can nevertheless be protected if it is already so widespread in the trade that the addressed circle is able to assign it to a particular company.
The need to keep a sign free, its trademark strength and recognition in the trade are in an interrelationship – the greater the need to keep it free and the lower the trademark strength, the higher the recognition in the trade must be. (4 Ob 126/01k)
Authorized Use by the Potentially Injured Party – when Does Trademark Protection Begin?
In order for a used sign to be protected under competition law and for the user to be able to assert relevant claims in the event of abuse of the sign, there must be an authorized use of the original sign on his part.
The use of his sign must therefore not be unlawful or without protection.
A claim against another entrepreneur can also only exist if the latter has not acquired the authorization to use the sign in another way.
In principle, trademark protection arises – if the sign is generally suitable – with first use.
Depending on the type of sign, the time may vary:
- Names: With the first use in commercial transactions
- Companies: With entry in the commercial register
- Company components and special designations: With use in commercial transactions
- Domains: Here, not the registration is decisive, but also the use
- Title protection: With use
- Equipment: With the emergence of recognition in the trade
In the event of a collision with another sign, the already mentioned principle of priority applies: The older trademark takes precedence!
Is there a Trademark-Like Use of Another’s Mark?
A claim against another entrepreneur can only arise if the latter also actually uses his sign in a trademark-like manner – that is, to identify his company, his goods or services and this in commercial transactions.
Is there a Risk of Confusion?
In order to trigger the claims, there must be a risk of confusion between the trademark of the potentially injured party and the sign of the other entrepreneur.
A risk of confusion exists if the use of a trademark creates the assumption that the goods or services come from the same company (risk of confusion in the narrow sense) or from companies that are in special relationships with each other of an economic or organizational nature (risk of confusion in the broader sense). (RIS-Justiz RS0109520)
The use in question must be suitable to cause such confusion. Whether confusion actually occurs is not relevant.
Decisive for the assessment are an overall consideration of the circumstances and the perspective of an average consumer.
Factors that come into play in the assessment:
- The distinctiveness of the original trademark
- The similarity of the trademarks
A prerequisite for a risk of confusion is the similarity of the signs. How great is the apparent similarity of the affected signs?
In the case of words, attention must be paid to the word image, but also to the word sound and word meaning. For example, the designations “fun § sun” and “Sun & Fun” would obviously be confusing.
In the case of pure figurative marks, the overall impression of both signs is decisive, in the case of mixed word-image marks, the word component of the word is generally decisive.
There can also be a cross-confusion between word and image.
- Similarity of the goods / services
Likewise, the similarity of the goods or services of the two companies is decisive. – The greater the similarity, the more likely a risk of confusion can be assumed.
Decisive are the nature, their intended use, their place of distribution and use.
The general traffic perception is decisive in the assessment.
- Familiarity
Also the familiarity is – if only as an indication – part of the assessment of a possible risk of confusion.
- Local protection limit
The exclusive right, which results from the competition law protection of a sign, applies only to the region in which the sign is also widespread.
What legal consequences can result from an abusive use of a trademark?
In particular, the following claims arise:
- Claim for injunctive relief
- Claim for removal
- Claim for damages
- Claim for reasonable compensation or even, in the event of culpable infringement, for surrender of profits
- Publication of Judgment
Peter HarlanderHarlander & Partner Rechtsanwälte „Achtung: Verjährung der Ansprüche!
• Ansprüche des § 9 UWG verjähren grundsätzlich bereits nach sechs Monaten!
• Ausnahme: Alle Ansprüche in Geld verjähren innerhalb von drei Jahren“
Peter HarlanderHarlander & Partner Rechtsanwälte „Achtung: Verwirkung der Ansprüche!
Hat der Inhaber des zu schützenden Kennzeichens Kenntnis von dem kennzeichenmäßigen Gebrauch eines jüngeren Zeichens und duldet er diesen für die Dauer von fünf Jahren, kann der Kennzeicheninhaber des älteren Zeichens nicht mehr gegen den Schädiger vorgehen!“
Important Points
- An action in the course of trade exists if an independent action with external effect and market reference, which is aimed at acquisition, is given. However, a profit-making intention is not required.
- Even political parties, sovereign bodies, associations, etc. can act in a manner relevant to competition law in commercial transactions if they act under private law and entrepreneurially
- Trademarks serve to individualize a company and to distinguish it from other companies. They should enable potential customers to find the goods or services of the user again.
- Protected are names, companies, their components and keywords, special designations of a company, designations of a printed work, domain names, signs not registered as trademarks and equipment.
- In order to be worthy of protection, a trademark must have distinctiveness. It must therefore be so individual that it is suitable to highlight the user vis-à-vis other companies.
- In the absence of distinctiveness, a sign can also be protected if it has a certain recognition in the trade. Equipment must have both distinctiveness and recognition in the trade
- The competition law trademark protection comes into effect with first use
- Claims for trademark abuse are only triggered if there is a risk of confusion. Decisive for the assessment are an overall consideration of the circumstances and the perspective of an average consumer.
- Claims under § 9 UWG are generally time-barred after six months, but claims in money only after three years
- The claims are forfeited if the injured party has knowledge of them after five years of toleration
Conclusion
To prevent infringement of your own trademark, it is
- necessary to conduct targeted research and review under competition law,
- to proceed in a structured manner and plan competently,
- to continuously monitor competitors,
- and to consistently prosecute infringements.
required.
