27.02.2021
In our networked world, more and more services are being offered in the information technology sector that are intended to make life easier for users. The services often connect with each other or refer to other service providers and advertise them accordingly - trademark protection problems are therefore inevitable. This is also the case here:
The owner of the word and image mark "jö" sued a German company that operated an app. In this app, users could save and manage customer cards from various providers and use them on their smartphone. The respective virtual customer card could be called up; the customer number was given in the form of a barcode. In this way, the defendant offered software as an accessory to customer cards and bonus programs from many other companies.
The defendant had also integrated the jö customer card into its app, and the plaintiff claimed that this was an unlawful use of its word-image trademark. It relied essentially on Section 10 (3) Z 3 of the Trademark Protection Act, which allows trademark use without authorization to a certain extent, for example to advertise accessories for products of another brand, as long as the use complies with the decent practices of industry and trade. In the plaintiff's view, this was not the case here, and the inclusion of its trademark in the defendant's app would be unlawful.
In its decision of December 22, 2020 (4 Ob 205/20f) in the provisional proceedings, the Supreme Court recognized that the defendant's activity was covered by Section 10 (3) Z 3 of the Trademark Protection Act. For users, the erroneous assumption of a business connection between the user and the trademark owner is excluded. It is clear that the use of the trademark only serves to make it easier for the user to choose among many trademark owners. For this reason, this user-friendly technical implementation does not in principle impair the functionality of the trademark in question, nor does it constitute an unfair business practice. In summary, “Section 10 paragraph 3 item 3 of the Trademark Protection Act – as a barrier to protection – generally allows a referring use of a trademark, especially as a necessary indication of purpose, i.e. as a reference to a special additional function of one’s own goods or services, e.g. as an accessory or spare part or as a service or additional service for the trademark owner’s marked product, provided that there is no impairment of the trademark’s functionality and no unfair business practice.”
Section 10 (3) Z 3 of the Trademark Protection Act has traditionally been interpreted very narrowly. It remains to be seen whether this will continue to be the case in the future. This is because service providers in the information technology sector rely on links to other services. This may involve embedding links to other service providers or offering additional services for better and easier use and linking of different services. This can be demonstrated, as in the present case, by creating an app to make several services more user-friendly or by embedding a payment service such as PayPal to simplify payment processing. Against this background, the OGH's decision makes sense and is pleasing for providers of additional services.