Nasty surprise for trademark owner in 'kinder.at' dispute

Austria

In a recent decision (4 Ob 156/02 y), the Austrian Supreme Court has ruled against the owner of the trademark KINDER in its case against the registrant of the domain name 'kinder.at'.

KINDER is a well-known trademark for various types of chocolate, but 'kinder' is also the German word for children. The trademark owner argued that (i) the use of the domain name 'kinder.at' would lead to confusion, and (ii) the registrant was attempting to exploit the reputation of the trademark.

The registrant alleged that his website was set up with the intention of providing parents with links to information regarding children's education. He maintained that the domain name referred to the descriptive notion 'kinder' (ie, children) and was not a reference to the trademark.

The court held that it was necessary to examine the content of a website to decide whether the use of a certain term as a domain name could lead to confusion with a trademark. Although the court agreed that the trademark is well known, it concluded that there is little chance of confusion as the website's proposed content is not related to chocolate.

The claim of exploitation of reputation was also dismissed on the grounds that
the trademark KINDER is distinctive only in its layout. There is, therefore, nothing to prohibit a third party from using the word 'kinder' in a domain name for a website relating to children.

Reinhard Schanda and Stephanie Heine-Geldern, Sattler & Schanda, Vienna

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