Come rain or come shine: “wetter.de” vs. “wetter.at”

The Higher Regional Court of Cologne recently had to decide in a dispute of the use of the sign “wetter.de” on a smartphone app for weather news. By way of background and as you may have guessed, the German word "das Wetter" (thanks for pointing out the typo) translates into the English word weather.

Wetter.de or wetter.at?

The dispute had ensued between the operators of the German website wetter.de and the operators of the Austrian websites wetter.at and wetter-deutschland.com. The Austrian weather site, which was also accessible as “Wetter-DE/Wetter DE/wetter.de”, offered a Smartphone app called “wetter DE” via its online shop. This use did not impress German wetter.de who also offered a Smartphone app via their own wetter.de website. Wetter.de sent a warning letter to wetter.at asking them to cease their use (Abmahnung) of the sign, stating the risk of a likelihood of confusion due to the high similarity, if not identity, of the signs. After an amicable settlement could not be reached, the matter went to court.

Prepared... come rain or shine

The legal bases of wetter.de’s infringement claim were Articles 5 (3), 15 (1, 2, 3 4) German Trade Mark Act, which provide for the legal protection of so-called work titles (Werkitelschutz), which in its scope, albeit not ins requirements, is broadly similar to the protection of trade marks. In a nutshell: work title protection under the German Trade Mark Act differs from the protection under German copyright laws, i.e. a work title may qualify for protection under the Trade Mark Act even if it does not met the necessary level of individual creativity required under Article 2 of the German Copyright Act. Moreover, the necessary level of distinctiveness of a work title to qualify for protection under the German Trade Mark Act is lower than that required for trade marks. All that is necessary is, that consumers regard the sign as a reference to a specific work. Work titles can also be protected under the right to a name under the German Civil Code (Namensrecht) and under the laws of unfair competition.

The first instance court, the Regional Court of Cologne, decided in favour of wetter.at. On appeal, the Higher Regional Court of Cologne (case: 6 U 205/13 of 5 September 2014) initially confirmed that Smartphone apps could per se qualify for work title protection.  However, the sign wetter.de did not possess the necessary (low) level of distinctiveness for weather related apps. In this context the Cologne judges referred to a precedent of the German Federal Court of Justice (BGH) relating to domain names (WRP 2014, 194, para 34 – Tagesschau-App) and took the view that the sign “wetter” had no distinctiveness for the app but only reflected the content of the app. A mere description of the content of work was, however, not protectable under Articles 5 (3), 15 (1, 2, 3 4) German Trade Mark Act, so that wetter.de’s claim failed. The judges explained that consumers would usually relate an app to a related domain and therefore regard the ending -.de as a simple reference to the top-level domain for Germany.  The court also denied any claims under the German Act of Unfair Competition since wetter.de was able to act on the market unhindered. Takeaway point: an app will only attract protection as work title under the German Trade Mark Act if it is more than a mere description of the content of the work and thus meets a certain, albeit rather low, degree of distinctiveness. Wetter.at in the meantime remains free to use the signs “Wetter-DE/Wetter DE/wetter.de” for its apps.

While the Higher Regional Court’s decision seems logical and well reasoned, it would nonetheless be nice to have a BGH decision on this evolving field of law.  Merpel still hopes for a further appeal to the BGH.