> Lecture on trademark protectiom of real estate names

After studying in Frankfurt and majoring in IP/IT/data protection law, Mr Christoph Matras worked for more than three years as a research assistant for a medium-sized commercial law firm in Frankfurt. Thereupon, Mr Matras decided to do his doctorate with Professor Thomas Hoeren on the topic of “trademark protection of real estate names”. Mr Matras has now submitted his dissertation and held a lecture on it on 17 May 2022.

As an introduction, Mr. Mantras clearly presented the basics and the legitimacy of trademark law with reference to the influence of Union law. He then went on to explain the problem of the protection of the real estate name under trade mark law. There are hardly any unresolved legal questions arising from § 3 (1) MarkenG and Art. 4 lit. a UMV, but the concept of goods is a particularity. The Federal Supreme Court assumes that only movable goods are to be subsumed under the term “goods”, which means that real estate falls into an area not covered by the Trade Mark Act. Whether this assumption is compatible with Union law is left to the ECJ.

Mr Matras explained the argumentation for and against this assumption and then presented possibilities of how real estate could otherwise be protected under trade mark law and considered these critically. In particular, he discussed alternatives under trade mark law, supplementary trade mark protection via the Unfair Competition Act or even a right of designation under copyright law. In the end, however, Mr Matras had to come to the conclusion that, although trade mark law is not a conclusive and comprehensive protective law, real estate in particular is not sufficiently protected under trade mark law. There was no justification for this lack of protection.

On the basis of this, Mr Matras then went on to take a closer look at the need for development as well as the possibilities for development of trademark law. Among other things, a claim arising from fundamental rights was discussed, economic arguments were put forward and the loss of competence under European law was pointed out. As possible solutions, Mr. Matras examined a “Real Estate Trademark Act”, a further development of the Nice Classification or the interpretation of Union law. The latter, the most promising approach, was examined in more detail; a decision by the ECJ in this regard remains to be seen. Finally, Mr Matras summarised his findings and answered questions from the participants – especially on the example of “One Forty West”.

We would like to thank Mr Matras for his fascinating lecture and the participants for their lively interest.

Click here for the video.