On November 23, 2000 the Federal Court of Justice pronounced its judgement in the "E-Class" case which our firm has handled for the plaintiff Daimler-Chrysler AG through all the instances. Having won our case before the court of first instance and the appeal court, the Federal Court of Justice has now dismissed the opponent's special appeal. The case concerns a matter that has been the subject of much press coverage over the years, namely that of a German national living in France who registered the trade mark "CLASSE E" in his own name in France and other countries, including Germany. He did so shortly before Daimler-Chrysler introduced its model designations, including "E-Class", and shortly after the decision had been taken internally to use this model designation. It was not possible in the course of the litigation to prove whether the defendant had gained knowledge of these internal matters. He could not be accused, therefore, of having deliberately intended to obstruct Daimler-Chrysler in connection with the introduction of a particular trade mark.

The Federal Court of Justice assumes, nonetheless - as does the Frankfurt Higher Regional Court - that the defendant filed for "CLASSE E" as a so-called 'speculation mark' or 'ambush mark', the main reasons being that

  • he did not run any kind of business, but had filed for many trademarks for goods and services of very different kinds,
  • he never seriously intended to use "CLASSE E", either in a business of his own or for third parties within the framework of a consultancy project,
  • he hoarded his trademarks with the purpose of heaping claims, especially for damages, on as yet unknown third parties who started using identical or similar designations.

It is important to note that the Federal Court of Justice requires that there be a definite consultancy concept, such as that which an advertising agency, for example, may develop in connection with a trademark it has contrived for a customer-to-be, and ruled that it is enough for speculation to be the main, but not necessarily the sole, motive. This means that the Federal Court of Justice approved the reasoning on which we based most of the motions made by Daimler-Chrysler in the lawsuit (cf. also Helm, Die bösgläubige Markenanmeldung (Trademark Applications in Bad Faith), GRUR 1996, 593/599 et seq.).

The Federal Court of Justice's landmark judgement is going to restrict the bad faith filing and exploitation of speculative and ambush trademarks in future. It is also of major relevance for the field of domain-grabbing and similar kinds of abuse, however. While it is true that the new trademark legislation no longer requires an applicant to have the business to go with the trademark, nor any intention of actually using the trademark right away, trademark applications that are made essentially with the aim of putting bona fide trademark users under pressure by heaping financial demands on them can now be combated more effectively than has hitherto been the case.