LG Köln; 2020-04-17; 33 O 23/19
Decision by national courts in the field of European Union law — ECLI:DE:LGK:2020:0417.33O23.19.00
Date: 2020-04-17
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82020DE0417(51)_ENG_SUMJURE
JURE summary
JURE summary
A start-up company specialising in the development, production and sale of furniture, home furnishings and lifestyle products (hereinafter the ‘plaintiff’) filed an action against a reputable worldwide producer of quality furniture (hereinafter ‘defendant 1’) and its German distribution partners (hereinafter the ‘other defendants’) claiming the breach of several of its trade marks.
On 4 October 2016, the plaintiff applied for the registration of a European trade mark designated as ‘D’) (hereinafter the ‘trade mark’) which was also registered in the Companies Register as its business name. A few months later, the plaintiff contacted defendant 1, notifying it about the pending registration of the trade mark and informing defendant 1 of the fact that the use of the sign by defendant 1 caused harm to the plaintiff’s company. These efforts proved unsuccessful.
Defendant 1 and the other defendants expressed the opinion that the plaintiff could not rely on the ‘D’ sign as its trade mark due to the fact that the plaintiff had not been sufficiently present on the market with this sign, in particular not with regard to furniture. They further denied having had any knowledge about the plaintiff’s permanent online presence regarding the trade mark. Defendant 1 denied having had any knowledge that the plaintiff was running an ongoing business, was active on the market, intended to develop furniture and had already been selling its products.
The Landgericht Köln (hereinafter ‘the Court of First Instance’) as the court correctly seised under Article 8(3) of the Brussels I Regulation (recast) (2) upheld the counteraction (3) of the plaintiff to the extent of the required decision.
The plaintiff was entitled to use the ‘D’ sign for the purposes of its commercial designation within the meaning of Article 15 of the MarkenG (4). The protection of an original and distinctive commercial designation is established upon its first use towards third parties where it is clear that new permanent business activity is intended. What is not required, however, is that the respective sign has already found a certain level of acknowledgment or that the company has been noticed by all other market participants, in particular by future customers.
The Court of First Instance ordered defendant 1 and the other defendants to cease and desist from using the ‘D’ sign for designating lounge sofas, armchairs, chairs, beds, stools, bed linen and/or blankets in Germany without the consent of the plaintiff.
(1) D Collection, D Lounge Sofa, D T, D Small, D Large, D Wood, D Dining, D Bed, D Bedwear.
(2) Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.
(3) Prior to that, defendant 1 and the other defendants had filed a negative declaratory action against the plaintiff with the same facts.
(4) Gesetz vom 25. Oktober 1994 über den Schutz von Marken und sonstigen Kennzeichen (German Act on the Protection of Trade Marks and other Signs).