The ruling of the Berlin Court of Appeal of 13th June 2000 (Docket Nr. 5 B 4478/00) – “Toolshop”

Guiding principles:

1. The designation “Toolshop” is purely descriptive and thus subject to a requirement of availability.

2. “Toolshop” in the concrete case would present itself to the target group not as a part of a catalogue, but as a reference to a manufacturer and/or distributor of the goods described. It is possible that the title of the work is ascribed to a certain company if this title is sufficiently known.

3. The fact per se that the consumer adopted the catalogue of a competitor in an unfair manner does not justify judging the exploitation of a similar domain to be a violation of moral principles. There does not exist any right to forbearance within the meaning of § 1 of the Act against Unfair Competition in respect of the domain “toolshoping.de”.

Explanatory notes:

This ruling was based on the statement of facts in the preliminary proceedings that the claimant ran a mail-order company trading with certain tools under the designation “Toolshop GbR” with the domain “Toolshop.de”. The defendant of the claim ran the domain “toolshoping.de” under which he also offered certain tools such as Swiss knives.

The Berlin Court of Appeal answered in the negative to the claim under §§ 15 (4,5) (2) of the Trademark Act because the designation “Toolshop” is of merely descriptive character and because the descriptive character of the chosen name applies also to the foreign-language designation and thus its general acceptance in trade is out of question. Similarly, the Berlin Court of Appeal answered in the negative to the unfair parasitism within the meaning of § 1 of the Act against Unfair Competition.

Persons wanting to use the mere titles of works or corporate designations must be aware of the fact – contrary to the provisions of the Trademark Act – that the question whether trademark protection is going to be granted does not depend on the current registration practice of the Patent Office, but some views of courts are entwined. What would the solution of the case have been if there had existed a registered trademark for “Toolshop”? The Berlin Court of Appeal would most likely not have held that distinctive character was lacking; on the contrary it would have deemed it existent since this had already been examined by the Patent Office.

In order to ensure the consistency of adjudication in the future, the decision-making of the Patent Office with respect to trademark registration, especially to the examination of the absolute grounds for refusal requires a reciprocal examination. Therefore, the Patent Office should take into account the adjudication of the courts on the one hand, and on the other hand, the courts should take into account the registration practice of the Patent Office. This hardly ever happens, though.