In “wetter.de” (I ZR 202/14) the German Federal Court of Justice (BGH) on 28 January 2016 held that the names of websites and smartphone-apps may per se be protectable as “work titles under  Section 5 of the German Trade Mark Act (MarkenG), which concerns the protection of “commercial designations” and provides as follows:

(1) Company symbols and titles of works shall enjoy protection as commercial designations.

(2) Company symbols are signs used in the course of trade as a name, company name or special designation of a business operation or an enterprise. Business symbols and other signs intended to distinguish the business operation from other business operations which are regarded as symbols of the business operation within involved trade circles shall be deemed equivalent to the special designation of a business operation.

(3) Titles of works are the names or special designations of printed publications, cinematic works, music works, stage works or other comparable works.

In the context of infringement proceedings relating to the smartphone-app “wetter.de”, the BGH recently held that domain names relating to internet services and apps for mobile devices, such as smart phones, can - in principle - be protected as work titles (Werktitel) under Section 5(3) MarkenG.

However, the sign “wetter.de” (comment: the German word "Wetter" translates into weather) was however not found distinctive enough to fall within the ambit of this protection  since it was found to be directly descriptive (“glatt beschreibend “)  of the content of the "work", with the website and app “wetter.de” providing weather forecast information.

The court acknowledged that the level of distinctiveness required under Section 5(3) MarkenG may in certain circumstances be low, this notably where consumers have been educated to regard descriptive titles and where consumers would thus pay heightened attention and notice even small differences, e.g. in the field of newspapers and magazines, which tend to have less distinctive “colourless” generic titles, which are specified by their geographical origin or content.These principles could however not be directly applied to the names of websites and smartphone-apps, where a market recognition of at least 50% percent was required to achieve acquired distinctiveness and protection under Section 5(3) MarkenG.

The court’s press release No. 26/2016 can be found here.