Anti-competitive misleading by claiming to be proprietorship of a trade mark?

The Higher Regional Court of Frankfurt am Main has passed a highly interesting new judgment, which is already being discussed vigorously among lawyers. The question is whether it is anti-competitive to claim to be the proprietor of a particular trade mark if it is not.

The Higher Regional Court affirmed that fact and does not read that the defendant had the right to benefit from the trade mark and that the proprietor of the trade mark was also linked by company law.

The defendant had clearly claimed to be the proprietor of a particular trade mark. However, this is not the case if you only have a license to use the trademark. According to the General Court, the misconception caused by this also leads to a relevant deception within the meaning of Paragraph 5 of the UWG, since it may lead the consumer or other market participants to take a commercial decision which he would not otherwise have taken.

An undertaking’s claim that it is the proprietor of a trade mark may result in the marketing attaching to that undertaking a certain economic importance documented by the ownership of the trade mark, which in turn would have an impact on the purchasing decision. The OLG thus agreed with the legal opinion of the lower court and should now give companies and lawyers a major task of either revising the ownership of trademark rights or their own corporate communications/advertising.