NO "ABSOLUTE" TRADEMARK PROTECTION: WELL-KNOWN FIGURATIVE TRADEMARK NOT SUFFICIENT FOR DOMAIN CANCELLATION
Trademarks are often used in domains. The owner of the well-known vodka trademark ABSOLUT wanted, among other claims, to cancel the domain "www.absolutpark.com" of another company - and failed in court.
The Absolut Company Aktiebolag (Absolut Company), known for its ABSOLUT vodka, has protection for the word marks ABSOLUT and ABSOLUT BAR for, among other things, the services "catering and accommodation of guests". In addition, it also has rights to several well-known figurative marks (see below left for an example). The Austrian company Shuttleberg GmbH & Co KG (Shuttleberg) has also protected the figurative mark ABSOLUT PARK (see below right), inter alia, for the services "catering and accommodation of guests", thus for identical services.
Shuttleberg also offered such services under the domain www.absolutpark.com, among others. It additionally used this domain as well as www.shop.absolutpark.com/de/shop and www.absolutschool.at for the distribution of clothing with the following imprints:
From Absolut Company's point of view, this use of its trademark was similar in terms of capitalisation, bold print and font. Therefore, Absolut Company saw an infringement of its trademark rights. In addition to the use depicted, it also took legal action against the use in the domains www.absolutpark.com, www.shop.absolutpark.com/de/shop and www.absolutschool.at.
In principle, a trademark owner can not only defend himself against the use of trademarks on products, but under certain circumstances also against any other use under trademark law. This also includes the use as (part of) a domain, provided that similar goods and services are offered in the course of business on the website operated under the domain. In this case, such use of the domain may be prohibited. However, a general claim for cancellation of the domain has not existed since a reversal of case law in 2007, as a domain can also be used for permissible purposes (such as for dissimilar goods and services).
Absolut Company argued, among other things, that its word trademark ABSOLUT is to be regarded as a "well-known" trademark in the legal sense. "Well-known" trademarks have a protection that extends beyond the goods and services for which they are registered. It is sufficient for the relevant public to associate the well-known trademark with the foreign sign. The owner of such a well-known trademark can prohibit the use of its sign, inter alia, if there is an unfair exploitation of the distinctive character ("exploitation of attention ") among the relevant public (§ 10 para 2 MSchG). According to Absolut Company, this is the case with any use in the domain "www.absolutpark.com", which is why there is an interference with their well-known trademark and Shuttleberg's domain must be cancelled.
It has now been legally established that Absolut Company's trademarks are indeed "well known" in the legal sense among the relevant public "younger people interested in winter sports who drink alcohol at least occasionally" and that the figurative trademark as well as the graphic design of Shuttleberg's ABSOLUT SCHOOL and ABSOLUT SHOP signs interfere with Absolut Company's trademark rights as "exploitation of attention" and that the current use must be discontinued.
With regard to the domains, however, the Supreme Court confirmed the decision of the Higher Regional Court of Vienna, according to which the cancellation of the domains does not have to take place.
The reason given was that an infringement only existed with regard to the figurative trademarks of Absolut Company. According to the court, the use of the term "absolut", namely without typographical and conceptual association with the plaintiff's VODKA trademark, could not be completely prohibited. The injunction ordered also only concerns the graphic design of Shuttleberg's signs, but not the word alone. However, since a domain can only be used without a figurative element, the use in the domain is not affected by the legally binding injunction. Since a claim for cancellation cannot go further than the related claim for injunctive relief, the domain must not be cancelled either.
From our point of view, the court's decision regarding the deletion of the domain is basically correct. Since the reputation was only established among a certain public - and not in general - the sign "ABSOLUT" does not have such protection that simply any use in a unique position can be prohibited. However, it is also clear that the well-known word trademark "ABSOLUT" should at least be sufficient to prohibit not only the above graphic use, but also the use of the word mark for the protected goods and services.
In this context, it should be noted that the plaintiffs argued in their appeal that the wording of the request for an injunction was misunderstood by the previous instance: they claim that not only the use of the graphic design as described above was prohibited, but also the word ABSOLUT with additions such as 'PARK', 'SCHOOL', 'SHOP'. In this case, at least a request for injunctive relief for the specific domains "absolutpark.com", "absolutschool.at", "facebook.com/AbsolutPark" and "facebook.com/absolutschool" could possibly be affirmed after all. The Supreme Court did not follow this line of argument, as the judgement is sufficiently clear in itself.
Nevertheless, when looking at the overall picture, it cannot be ruled out that a linguistic inaccuracy in the ruling of the previous instance actually led to the fact that the injunctive relief to which the Absolut Company might have been entitled was not effectively awarded. This in turn means that in future comparable cases, such a claim for prohibition of the use of a domain could be affirmed, at least to a certain extent. However, even in these cases, deletion of the domain will probably only be possible under exceptional circumstances.
Mag. Selina Novak, Mag. Sebastian Feurstein