As earlier reported (see here) the German Federal Court of Justice ("Bundesgerichtshof") recently dealt with two problems connected to the "law of people sharing the same name" ("Recht der Gleichnamigen").

Now the German Federal Court of Justice issued yet another decision dealing with the rare but possible situation that two parties have used the same sign peacefully over several decades. The resulting state of equlibrium between those parties sometimes seems to be a rather fragile one.

In the present case ("Gartencenter Pötschke") one of the parties owns a garden center, which acted under the sign "Gartencenter Pötschke" besides its company name "Garten-Center Gerhard Pötschke OHG" since 1957.

The other party runs an mailorder service, which has been active all over Germany for decades and owns several trade marks including the element "Pötschke". Apparently both parties are related to Harry Pötschke which started a nursery and a mail order service for gardening goods back at the beginning of the 20th century. Both parties had used their signs peacefully over decades.

Back in 2005, however, the owner of the garden center filed a word mark "Gartencenter Pötschke", which had been registered in 2006. The other party filed for cancellation of the registration based on the fact that this registration would lead to a change in the existing equilibrium between the parties, especially since the sign "Gartencenter Pötschke" allegedly only had been used regionally by the applicant.

To cut a long story short, all three instances agreed with the plaintiff, cancelled the registration and the Bundesgerichtshof confimed/continued its jurisdiction according to "Peek & Cloppenburg II" by issuing the following official headings (inoffically translated by this Class 46 member)

a) "In case of a state of equilibrium with respect to trade marks / signs, to which the principles of the law of people sharing the same name are applicable, one party may additionally register the company name it uses only exceptionally as a (service) trade mark (referring to BGH, decision of April 14, 2011 - I ZR 41/08 - Peek & Cloppenburg II)."

b) "The registration of a trade mark for services offered in order to secure a company sign which has been used only locally has to be accepted by the other party only if no other means exist to avoid a weakening of the sign used by both parties."

Case reference: Bundesgerichtshof I ZR 207/08 "Gartencenter Pötschke" of July 07, 2011. The decision can be retrieved from the court’s website by following the above link.