First published in BARDEHLE PAGENBERG IP Report 2008-V at www.bardehle.com
The plaintiff – the Deutsche Post AG – is the owner of the German word mark "POST", registered inter alia for transportation and delivery of letters and parcels. Furthermore, the plaintiff is the owner of various word and figurative trade marks with the designation "Post" ("Mail"). In the present proceedings, the plaintiff sued competitors that used the designation "Post" as part of their company name and for their delivery services ("Die Neue Post" [The New Mail], "City Post" [City Mail]). Whereas the District Court and the Appeals Court of Cologne had rejected the plaintiff's claim in default of likelihood of confusion between the signs "Post" on the one side and "City Post" on the other, the District Court and the Appeals Court of Naumburg held that there was likelihood of confusion between the marks "Post" and "Die Neue Post".
The Federal Supreme Court confirmed the decision of the Appeals Court of Cologne, but overruled the decision of the Appeals Court of Naumburg, arguing that use of the designation "Post" by the defendant was authorized by Section 23 No. 2 Trademark Act. However, the Federal Supreme Court did not decide whether there was any likelihood of confusion between the signs "Post" and "Die Neue Post". According to Section 23 No. 2 Trademark Act, third parties may use a trademark to explain the very nature of their services, unless such use is not immoral. Taking into consideration that the European Union and also Germany have – at least formally - liberalized the mailing sector, the new companies active in the field of delivery services have an eligible interest in using the designation "Post". Thus, as far as the new competitors cease from the use of other signs used by the plaintiff – e.g. the post horn or the colour yellow – they are allowed to use the designation "Post". The designation "Post" is subject to cancellation proceedings, pending with the Federal Supreme Court. The oral hearing will take place on October 23, 2008.
© BARDEHLE PAGENBERG; 2008
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