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Hard Fight for the Hard Rock Cafe - Germany

The German Federal Supreme Court (BGH) recently decided on a complex dispute between the Hard-Rock group of companies and a local café in Heidelberg, calling itself "Hard Rock Cafe Heidelberg". The court's press statement in German is available here).

Hard Rock Cafe vs. Hard Rock Cafe Heidelberg

The defendants started their Hard Rock Cafe Heidelberg in the 1970ies, inspired by the Hard Rock Cafe the plaintiffs had opened in London in 1971. The defendants copied the Hard Rock Cafe logo, using it on menus, glasses and as a door sign. At a later point in time, they also started selling merchandise under the Hard Rock Cafe logo and registered domain names with the elements "hardrock-cafe". The plaintiffs filed their first trademark for clothing in Germany in 1986 and opened their first German Hard Rock Cafe in Berlin in 1992. Shortly afterwards, they obtained a preliminary injunction against the defendants, which they withdrew, however, after the defendants appealed.

In 2009, the plaintiffs filed a main action, seeking to enjoin use of the Hard Rock Cafe name and logo. At first and second instance, their claims were fully rejected. The courts thought that the plaintiff had forfeited its rights, having remained inactive for over 14 years after first objecting to the defendants' use. The German Federal Supreme Court partly overturned the verdicts. It confirmed that the plaintiffs' rights were forfeited with respect to the use of the logo for the operation of the café itself. The court took a different view, however, regarding the other forms of use for merchandising and in domain names. The court stressed that forfeiture only applies to specific acts of infringement that have occurred or are ongoing and have been tolerated. It does not, however, cover new acts of infringement, even if these are similar in nature to the previously tolerated acts. Each offer of merchandise, each new advertisement and each new online presence thus need to be examined individually. The Supreme Court referred the matter back to the appeal instance to pass a final judgment on the basis of the evidence brought before the court.  

The decision is a welcome addition to the few cases in which the question of forfeiture/estoppel of rights is treated in depth and with differentiation. Too often, courts apply a blanket approach, either generally finding forfeiture or fully denying it.

BGH, decision of 15 August 2013, case reference I ZR 188/11 - not yet published.

Posted by: Anthonia Ghalamkarizadeh @ 09.23
Tags: Hard Rock Cafe; BGH; Bundesgerichtshof; German Federal Supreme Court,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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