As a general rule, the rights conferred by registered trademarks cannot be enforced against signs exclusively serving as company names (see judgments of the ECJ of 11/9/2007 – C-17/06 – Céline and of the BGH of 13/9/2007 – I ZR 33/05 – THE HOME STORE).
However, this only applies if the company name is not used in relation goods or services as well. Such dual use of a sign may be found, for instance, on a website where the company with its name is presented on the entry page and offers of its services are listed in connection with the same sign on the sub-pages. In its recent judgment “Pelikan” (judgment of 19/4/2012 – I ZR 86/10) the BGH has clarified that this is actionable as a trademark infringement.
The case at hand inter alia dealt with a trademark-in-suit registered for “teaching materials”, which trademark-in-suit was enforced against the use of a sign by a musical school. This gave rise to the question of similarity between goods and services under trademark law. The BGH reasoned that the requirements for assuming such a similarity should not be too high. In contrast to the lower courts, the BGH found that teaching materials and educational services could be considered similar. This is in line with the EU General Court (former Court of the First Instance, judgment of 23/10/2002 – T-388/00 – ILS/ELS).
The BGH further clarified that the legal representative of a limited liability company (GmbH) is personally liable for trademark infringements which he/she has not stopped despite of knowing about them. This is in accordance with the regular practice of the German courts. The BGH remarked that the legal representative must try to bring the shareholders to change the company’s name if this is necessary to avoid the infringement. This illustrates that the practical relevance of the limitation of the trademark rights mentioned at the beginning is low.