Germany: German Federal Supreme Court: Competitors Using The Designation “Post” For Postal Services Are Not Infringing The Trademark “POST” Of Deutsche Post AG (Case I ZR 169/05 – POST And I ZR 108/05 - CITYPOST).
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
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.
On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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