Trademark Protection of the EU Trademark “Malle” and Its Enforcement in Event Names
The decision of the Regional Court of Düsseldorf (judgment dated 19.11.2019, case no. 38 O 96/19) regarding the scope of trademark protection for the term “Malle” highlights the strictly enforced boundaries of trademark law within the European Union and its concrete implications for the event industry. The central question was to what extent the owner of an EU word mark can assert legitimate claims for injunctive relief against third parties who used the same term to promote event formats. This topic is of significant practical relevance for companies, event organizers, and trademark owners and deserves an in-depth examination that goes far beyond a mere assessment of the individual case.
Scope of Protection of the EU Word Mark “Malle”
The Registration and Its Legal Implications
The term “Malle” has been protected as an EU word mark at the European Union Intellectual Property Office (EUIPO) since 10.10.2002. The mark is registered for various classes, including services in the fields of entertainment, events, club and discotheque operations, as well as related services. Thus, a formally recognized protection exists for the term “Malle” throughout the territory of the European Union, specifically covering the production, promotion, and organization of corresponding events.
No Public Domain: The Role of Consumer Perception
Decisive for the protectability of a trademark are its distinctiveness and the absence of a descriptive or purely promotional function for the respective offerings. The Regional Court of Düsseldorf clarified that the term “Malle”, although colloquially often used as an abbreviation for “Mallorca”, has not become public domain. Rather, especially in German-speaking regions, it is suitable to indicate a specific commercial provider or a particular event format when used in connection with the services covered by the protection. Thus, the original trademark rights remain enforceable despite the general familiarity of the term.
Infringement Through Promotional Naming of Events
Event Promotion as Trademark Use
In the underlying case, various organizers promoted parties under the name “Malle-Party”. According to the court’s assessment, using this term in event promotion constitutes trademark use because it creates the impression that the labeled service—namely the event—originates from the trademark owner or is at least economically connected to them.
Furthermore, neither a purely descriptive nor a naive or humorous use of the term was present, but trademark use that is capable of creating a conceptual association with the trademark owner. Consequently, the elements of trademark infringement according to Art. 9 EUTMR (European Union Trademark Regulation) were fulfilled.
Distinction from Permitted Use
Use of the term “Malle” is only permissible if it occurs outside commercial activities or outside the protected classes and if there is no likelihood of confusion. Any event promotion using “Malle” in connection with the offered event format generally falls under the protection scope of the registered trademark, unless specific exceptions or exhaustion provisions apply. The Regional Court of Düsseldorf found that such an exception was not applicable in the present case.
Consequences for Organizers and Trademark Owners
Claims for Injunctive Relief and Damages
The decision underlines the broad protection granted by trademark law. The trademark owner is entitled not only to demand the cessation of the contested advertising but may also, in cases involving damaging behavior, pursue claims for information and possibly damages. Especially companies planning event formats or advertising campaigns operate in a potentially liable tension.
Risk of Warning Letters and Proactive Compliance
The decision emphasizes the importance of a careful preliminary check of potentially conflicting trademark rights already during the conception of event names and advertising measures. The often widespread assumption that terms from common usage can be freely used faces clear limits in trademark law. In practice, forward-looking risk management is recommended in the business environment to avoid costly disputes and possible reputational damage.
Relevance for International Trademark Management
Application of Principles to Other Markets and Industries
The principles established by the Düsseldorf Regional Court in the case of the EU trademark “Malle” are highly relevant for international matters and other industries as well. Companies operating with trademark-protected terms in advertising campaigns or product names face extensive verification and due diligence obligations. The EU trademark protection grants the holder a cross-border scope of protection that takes effect throughout the internal market in cases of cross-border events or digital offerings.
Development of Case Law
It remains to be seen how national and European courts will handle similarly structured cases in future proceedings. The criteria for determining distinctiveness, public domain status, and trademark use are continuously evolving in light of economic and linguistic developments.
Conclusion
The decision of the Düsseldorf Regional Court on injunction claims based on the EU trademark “Malle” illustrates that the scope of trademark protection persists even with very well-known and colloquially established terms—provided that no public domain status has arisen and trademark use in commercial traffic can be established. Companies should carefully evaluate the risks associated with event names or advertising campaigns and seek well-founded legal advice early at the slightest doubt regarding permissibility.
If you have legal questions related to trademark management, event marketing, or related commercial law topics, MTR Legal offers tailored advice in the field of commercial law. Further information and contact options can be found under Legal Advice in Commercial Law.
