OGH on Sec. 10 (3) (3) Trademark Protection Act

Feb 17, 2021 Benn-Ibler Rechtsanwälte

The Austrian Supreme Court (Oberster Gerichtshof, OGH) has ruled that the exemption provision of Sec. 10(3)(3) Trade Mark Protection Act 1970 (Markenschutzgesetz 1970,  MSchG 1970) need not necessarily be limited to the practical only means of providing comprehensible and complete information.

In the present case, the defendant operates a smartphone app with which users can store and manage their customer cards from many different providers and use them via their smartphone.

The plaintiff is the owner of the national trademark "JÖ". The defendant uses a listing of the available loyalty cards in its app with an illustration of its trademark, including that of the plaintiff without its consent. None of the logos is particularly emphasized in comparison to the others. Furthermore, the plaintiff's trademark is also used for advertising purposes for the app.

The plaintiff requested the defendant to refrain from using the trademark in advertising or within the app as a reference to the card services offered. The defendant invoked the exemption provision of Sec. 10 (3) (3) MschG.

Sect. 10(3)(3) of the Trade Mark Act allows third parties to use a trade mark by reference, in particular if the use of the trade mark is required as an indication of the intended purpose of a product or service, for example as an accessory or replacement part. Since the 2018 Trademark Law Amendment, according to the Supreme Court, the permissible referential use of a trademark does not necessarily have to be limited to the practically only or alternative means of providing the public with comprehensible and complete information.

The OGH considered the inclusion of the JÖ customer card in the app using the word and image trademark to select the JÖ customer cards from a large number of other customer cards to be a reference to an additional service of the defendant and thus a permissible required indication of purpose within the meaning of Sec. 10(3)(3) MschG. Furthermore, the impression of a business connection between the plaintiff and the defendant was not created because other customer cards were also depicted in addition to the JÖ customer card.

The interim injunction was therefore not granted.

OGH 4 Ob 205/20f (22.12.2020)