FCJ: Smartphone apps eligible for protection as titles of works

With its judgment of 28 January 2016 (case No. I ZR 202/14), the German Federal Court of Justice (“FCJ”) (Bundesgerichtsthof – BGH) ruled for the first time that “app” designations are, in principle, also eligible for protection as titles of works within the meaning of Sec. 5(3) of the German Trademark Act (Markengesetz – MarkenG). However, even in those cases, protection requires that such designations are sufficiently distinctive. Meanwhile, the reduced standard for protection applicable to paper and magazine titles does not apply in the case of app names.

The plaintiff in the above case operates the “wetter.de” domain where it provides, in particular, localized weather data. The plaintiff has also provided corresponding information by means of a “wetter.de” app since 2009. The defendant has offered very similar weather data by means of its app named “wetter DE”, “wetter-de”, and “wetter-DE” since late February 2011. The plaintiff believes that such use constitutes an infringement of its rights to a title of work with respect to the “wetter.de” domain name and app.

Both the Regional Court (Landgericht) of Cologne and the Higher Regional Court (Oberlandesgericht) of Cologne dismissed the action. The appeal on questions of law, which was subsequently filed with the FCJ, also failed.

In its decision, the FCJ initially confirmed that app designations, in principle, constitute works eligible for protection of title within the meaning of Sec. 5 (3) of the German Trademark Act. To be protected, however, they must be distinctive or must inherently have acquired distinctiveness through use. In light of the fact that, in essence, the only information available under the “wetter.de” domain or app is precisely such – i.e. information relating to the weather in Germany – the distinctiveness of the sign according to its wording, design and meaning associated by the trade is limited to a mere work-related description of content. According to the Court, the sign does not enjoy any protection under the aspect of reputation, either, since the plaintiff has been unable to show that it has been accepted as a title of work by the trade.

The Court pointed out that while, in fact, the requirements to be applied to the necessary level of distinctiveness in certain cases were low, and such a reduced standard had been acknowledged in case law for papers and magazines, for example, which are often marked with colourless generic names, or generic names which are only specific in terms of territory, these principles cannot be applied to website and app designations.

This decision is important for app providers and developers since it considerably increases the significance of the choice of the app designation per se: In light of the eligibility for title protection now acknowledged it appears to be always worthwhile to opt for a distinctive designation from the outset. As protection of the app designation no longer depends only on its registration as a trademark, this judgment will at the same time also influence the filing strategies and trademark portfolio management of app providers. We will be happy to provide you with legal advice in this area and on other current questions relating to trademark protection.