Never again no idea about title rights

3rd May 2022

The German Trade Mark Act not only protects trade marks and company names but work titles, too. Work titles are the names/designations of printed publications, cinematic works, music works, stage works or other comparable works. (Sec. 5 para. 1 and 3 German Trade Mark Act). Such comparable works include computer programmes, apps, databases and under certain circumstances even domain names according to case law. In the digital era title rights may offer an (added) layer of protection for rights owners. In particular in situations where trade mark rights are not (yet) available.

Title rights offer an additional layer of intellectual property rights protection

Contrary to trade marks, title rights do not indicate the origin, i.e. the manufacturer or author, of the work. Their sole purpose is to distinguish one work from another. Consequently, work titles are protected even if consumers do not perceive titles as an indication of origin. The title only has to be in use and must be distinctive – but the threshold of distinctiveness is a lot lower regarding titles than it is for trade marks. So, title rights are easily available.

However, as the threshold of protection is low, the scope of protection is limited. Courts regularly only grant protection against direct likelihood of confusion vis-à-vis other identical/similar work titles for identical/similar works. If the titles concern different kinds of works, there usually is no direct likelihood of confusion due to the lack of similarity of works because consumers don’t consider the works to be the same. This has recently been confirmed by the Higher Regional Court of Frankfurt am Main (decision of 11 January 2022, case no. 6 W 102/21).

Request for preliminary injunction based on title rights

The producer of an educational TV show consisting of two episodes called “Nie wieder keine Ahnung! Malerei” (“Never again no idea! Paintings”) and “Nie wieder keine Ahnung! Architektur” (“Never again no idea! Architecture“) had requested a preliminary injunction based on title rights of said TV show against the publishing company of an book named “Never again no idea” about general knowledge, politics, economics and world affairs. Although there also had been a book published about the Architecture episode of the TV show, its title differed. It was “Architektur für Einsteiger“ (“Architecture for beginners”).

Distinctiveness of a work title

The court held that “Never again no idea” is distinctive – although only to a low degree – in the sense of title rights. But the court also pointed out that the additional element “Paintings” and “Architecture” need to be taken into consideration in the assessment. So, the authors of series of works should consider that adding elements to distinguish one episode/event/instalment from another, may decrease the degree of protection of their work’s title.

However, in the end the court did not have to decide on that issue because it denied that there is a similarity of works. As the book connected to the TV show had a different title, the works to be compared were the TV show and the defendant’s book. The court didn’t find that the public would perceive the book as the book accompanying the TV series because:

• there is no hint on the book about a connection to the TV show;
• the book’s authors are hosts for a different TV channel;
• the book’s content is much broader than the TV shows’; and
• the title’s low degree of distinctiveness.

Limited scope of protection of title rights

All in all, even though title rights are easily acquired, their limited scope of protection is a relevant disadvantage. Nevertheless, keeping them in mind may pay off, in particular in situations where trade mark protection is not available given the high threshold of distinctiveness for trade marks.