A registered trade mark does not entitle its proprietor to prohibit a third party – where that third party is a natural person – from using their name or address in the course of trade, provided that this accords with honest practices in industrial and commercial matters (OGH 18 October 2022, 4 Ob 131/22a).
Under § 10(1) MarkSchG, the registered trade mark grants its proprietor, subject to the preservation of earlier rights, the exclusive right to prohibit third parties from using, in the course of trade without his consent, (i) a sign identical to the trade mark for goods or services identical to those for which the trade mark is registered; (ii) a sign identical or similar to the trade mark for identical or similar goods or services, where, as a result, there exists for the public a likelihood of confusion which includes the likelihood that the sign is associated in the mind with the trade mark.
The use of a trade mark as part of a company name is to be refrained from where it serves to identify goods or services; only against a – here undisputedly absent – purely company-name use would a trade mark in principle not be protected. As an exception permitting use, § 10(3) MarkSchG also provides that the registered trade mark does not entitle its proprietor to prohibit a third party – where that third party is a natural person – from using their name or address in the course of trade, provided that this accords with honest practices in industrial and commercial matters (subparagraph 1). As an exception to trade mark law, this provision is to be construed narrowly.
Where an (earlier) registered trade mark is – as here – incorporated in its entirety into another sign, a likelihood of confusion is, in the case of similarity or identity of goods and services, regularly to be assumed, and this even where further elements are present as well. In the case of a sign composed of word and image, the word element is generally decisive for the overall impression, because commercial dealings usually tend to orient themselves by this keyword – provided it is distinctive – and it is above all this word that is retained in the memory. It is also tenable in the individual case to take the view of the appellate court that, in an overall assessment, the addition of a first name here does not change anything about the likelihood of confusion, especially since the public, in view of the use of the plaintiff’s word mark regarded as dominant, will not regularly assume that the addition of „Norbert“ is more than merely a marketing measure to differentiate similar products which, however, originate from the same manufacturer or at least from economically linked undertakings.