'Shell.de' Case approved in 'amex.de' dispute

In a case (6 U 13/02) involving a German company trading under the name 'Amex' as plaintiff, the Appellate Court for Frankfurt am Main has ruled that conflicts between company names and domain names that are being used commercially are not covered by the company-name provisions in Section 12 of the German Civil Code. It cited the Supreme Court's decision in the 'shell.de' Case and held that such disputes are governed by Section 5(15) of the Trademark Act.

Amex is involved in the sale of commercial vehicles and has traded under the name 'Amex' for a number of years. It brought a complaint against the defendant following its registration of the domain name 'amex.de'. The defendant offers various internet services on a commercial basis and had registered the disputed domain name purportedly on behalf of American Express Company - a multinational provider of financial services. After two years, during which time the defendant did not use the domain name, it transferred it to American Express.

Amex requested that the court issue an order transferring 'amex.de' and prohibiting the defendant from using the domain name on a commercial basis. It argued that its company name is protected under Section 12 of the German Civil Code. A regional court agreed with Amex and ordered the transfer. The defendant appealed.

The Appellate Court for Frankfurt am Main reversed the lower court's ruling. It cited the Supreme Court's decision in the landmark 'shell.de' Case (Case I ZR 138/99) and held that Section 12 does not apply to disputes involving company names and domain names, when the domain name is being used commercially. Such cases, said the court, must be decided under provisions in Section 5(15) of the Trademark Act. These provisions set out the protection available for company or trade names and require that there is a likelihood of confusion between the company and domain names at issue. The court stated that confusion is only likely if the parties involved in the dispute offer similar goods or services under their respective company and domain names. In the case at hand, the court concluded that the services offered by the parties involved in the dispute differ sufficiently since Amex uses its company name to sell vehicles, the defendant used the domain name for internet services and American Express now uses it for financial services.

Fabian Seip and Florian Schwab, Boehmert & Boehmert, Munich