Press release of February 2, 2011
Proaktiv Optik Service GmbH operates a franchise system with 60 branch stores in Germany under the trademark AKTIV OPTIK. After Aktiv Optik GmbH, a company domiciled in the Bavarian town of Freilassing, had refused to participate in this franchise system, the licensor of the AKTIV OPTIK Group, Proaktiv Optik Service GmbH, sued the Freilassing-based company. The complaint aimed to bar the company from using the name Aktiv Optik for a branch store opened in Bad Reichenhall in 2004 and was primarily based on a mark registered in 1996 for Proaktiv Optik Service GmbH.
Aktiv Optik GmbH, represented by BARDEHLE PAGENBERG, defended itself against this complaint, invoking the name rights of its company under which it had been active in the market even before the registration of the mark of Proaktiv Optik Service GmbH. Proaktiv Optik Service GmbH fought against the Freilassing-based company in a lawsuit of some six years through three instances all the way up to the German Federal Supreme Court which it lost in all instances.
Therefore, Aktiv Optik GmbH is also allowed to keep its name in Bad Reichenhall, whereas use of the trademark AKTIV OPTIK has been prohibited for Proaktiv Optik Service GmbH in Bad Reichenhall. A complaint of Proaktiv Optik Service GmbH before the Federal Supreme Court against the decision of the Munich Appeal Court was rejected by order of January 13, 2011 (I ZR 27/10).
Herbert Wiedenmann, Managing Director of Freilassing-based Aktiv Optik GmbH, is very pleased with this result: “We are happy to be able to continue to use our name 'Aktiv Optik' that has been established in the region for many years. We want to encourage other medium-sized (Mittelstand) companies to fight for their rights even if this takes some tenacity.”
Representatives Aktiv Optik GmbH:
BARDEHLE PAGENBERG (Munich):
Dr. Stefan Abel (Attorney-at-Law, Partner);
Pascal Böhner (Attorney-at-Law, Associate)
Representative Proaktiv Optik Service GmbH:
Dr. C. Clemens Traumann (Bad Kreuznach), Attorney-at-Law
Appeal Court Munich:
Presiding Judge Konrad Retzer (6th Civil Senate)