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No exclamation mark for JOOP!

In Case T‑191/08 the European Court of Justice (ECJ) declined JOOP!’s motion to permit registration of a single exclamation mark placed inside a rectangle as a Community trademark.

The court ruled that this mark lacks distinctive character and therefore can not be registered as a trademark, pursuant to Art 7 Sec. 1b) of Regulation No 40/94. The single exclamation mark is a mere eye catcher, not suitable to convey the origin of goods.

The court also rejected the point that the mark had acquired a secondary meaning as a trademark pursuant to Art. 7 Sec. 3 of Regulation 40/94. JOOP! not only failed to deliver proof in time. The documents provided referred to the German market only and not – as it would have been necessary – to all markets in all member states.

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October 12, 2009   5 Comments

Google AdWords – Advocate General’s Opinion

I have recently posted a comment about the Advocate General’s Opinion in relation to Google AdWords.

There is an excellent summary of the opinion here on Shireen Smith’s blog ip-brands.com.

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October 11, 2009   No Comments

Google AdWords – Advocate General’s Opinion

There are some news in regards to cases involving the question whether the use of trademarked keywords in Google AdWords constitutes a trademark infringement. The Advocate General Poiares Maduro has delivered his opinion on the joined cases C‑236/08, C‑237/08 and C‑238/08 involving Google (France), Viaticum Luteciel, CNRRH and others, previously ruled by the French Cour de Cassation.

This opinion is not to be confused with a judgement of the European Court of Justice (ECJ) nor is it in any way binding for the ECJ. But still – it is a first outlook on possible further developments, especially as there are also other similar cases (see also my earlier Google related posts here, here and here) pending with the ECJ.

The opinion is clearly guided by the principle that “…. it is important not to allow the legitimate purpose of preventing certain trade mark infringements to lead all trade mark uses to be prohibited in the context of cyberspace…”. The Advocate General also emphasises that “…it is not the use in ads, or on the sites advertised, that is the subject…” of his opinion.

In brief, the Advocate General concludes that the use of trademarked keywords by Google in its AdWords system (the selection process) does not constitute a trademark infringement. Trademark proprietors are referred to intervene “…when the ads are displayed to Internet users…”.

The opinion draws the following key conclusions:

1. The mere selection of a trademarked keyword in Google AdWords or a similar paid Internet referencing service without the trademark proprietor’s consent does not constitute a trademark infringement. Advertisers are not acting in the course of trade when selecting keywords because they are being sold these keywords by Google in relation to the AdWords service. Thereby the advertisers are acting as mere consumers which is private use.

2. A trademark proprietor may not prevent a provider of such services from making available keywords reproducing registered trademarks based on Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 as AdWords is not identical or similar to those covered by the trade marks.
More clearly the Advocate General rejects “…. the notion that the act of contributing to a trade mark infringement by a third party, whether actual or potential, should constitute an infringement in itself…”, arguing that otherwise newspapers would have to be prohibited as they could potentially be abused by third parties to infringe trademarks as well.

3. Neither may a proprietor of a trademark with a reputation prevent such keyword use based on Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94 as the other functions of the trade mark (e.g. guaranteeing the quality of goods, communication etc.) should not be considered to be affected as the Advocate General puts it. This conclusion seems vastly result oriented, based on the concern that “… if trade mark proprietors were to be allowed to prevent those uses on the basis of trade mark protection, they would establish an absolute right of control over the use of their trade marks as keywords. Such an absolute right of control would cover, de facto, whatever could be shown and said in cyberspace with respect to the good or service associated with the trade mark…”.

4. Paid Internet referencing services are no information society services consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/EC. This means Google would not be exempt from liability under national law for featuring content constituting trade mark infringements. The argument is based on the aim of Directive 2003/31 which is to ensure the Internet as a free and open public domain. The Directive aims to achieve this by limiting the liability of those transmitting or storing information.  The Advocate General however argues, that the content featured in Google AdWords (the ads actually displayed) does not deserve this kind of protection as it originates from Google’s relationship with the advertisers and thus AdWords is not a neutral information vehicle.

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September 27, 2009   1 Comment

K-Swiss vs Puma

As the German business magazine Wirtschaftswoche reports in its online issue, the German sporting goods manufacturer Puma is facing a battle in the US over its trademarked “form strip”, a bended leather strip. One of Puma’s competitors, K-Swiss, claims that Puma’s trademark application with the US Trademark and Patent Office was erroneous.

K-Swiss argues that Puma had deliberately given false information when filing their trademark application. Allegedly the German entity (Puma AG) misrepresented that its North American entity, Puma North America, is co-proprietor of the trademark, by declaring Puma North America to be the only one having any rights to this mark.

Wirtschaftswoche states that the background of this matter is an ongoing dispute between the two companies in which Puma alleges K-Swiss to use a leather strip on one of its shoes similar to Puma’s formstrip.

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August 31, 2009   No Comments

How much is trademark litigation in Germany

I often get the question, how much trademark litigation in Germany is likely to cost. This post is meant to give a basic overview. Figures may vary widely depending on the individual case.

Let’s take a closer look at the way legal services in Germany are billed. The traditional way is – not so much a surprise – based on a law, regulating lawyers’ fees. At the center of the fee calculation is the amount involved in the case, determining how much a fee unit in this case will be (the law provides a table). Depending on the kind of work (preparing the case, litigation etc) a fraction or multiple of a fee unit is due. This billing method used to be legally binding but had come under criticism as it does not reflect the actual effort and complexity an individual case may require. But things have changed over the last couple of years and lawyers are now mainly free to agree a fee on their own.

As a rule of thumb the amount involved in a trademark case can be expected to be around 50.000 EUR. Based on this, the lawyer’s fee for a case involving litigation is ca. 2635 EUR (+ VAT). This amount comprises of 1359 EUR for preparing the case and 1255 EUR for litigation plus ca 20 EUR flat for postage & phone. Court charges are 1368 EUR (not subject to VAT). Pursuant to the German code of civil procedure, the cost are split in relation to the outcome of the case. This means, the losing party is carrying not only their own lawyers’ fee but also the other party’s lawyer fee plus court charges. In our example the losing party will have to pay legal cost totaling 6638 EUR (any fees in excess of the officially outlined fees are not recoverable).

In the last couple of years hourly billing has more and more evolved as an alternative. Hourly rates vary widely. For IP specialists a rough estimate is at least 200 to 250 EUR per hour. One has to bear in mind that it is against the law for a German lawyer charge less than the legal fee for litigation. As IP matters tend to be often complex, require in depth knowledge and carry a significant liability risk, most IP specialists tend to bill by the hour, so fees often exceed the the above mentioned figures.

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August 4, 2009   5 Comments

LEGO brick – trademark cancelled

The German Federal Court of Justice (BGH) has confirmed the decision of the Federal Patent Court in regards to the cancellation of the registration of the LEGO brick as a trademark.

The LEGO brick had been registered as a three dimensional mark with the German Patent and Trademark Office in 1996. The cancellation is based on an infringement of Sec. 3 subsection 2 no. 2 of the German Trademark Act (MarkenG) pursuant to which signs consisting exclusively of a shape necessary to obtain a technical result are not capable of protection as a trade mark.

The court considered the brick’s cubic shape as irrelevant in regards to trademark registration. Pursuant to Sec. 3 subsec. 2 no. 1 German Trademark Act signs consisting exclusively of a shape resulting from the nature of the goods do not qualify as a trademark. Hence, to decide whether the LEGO’s brick could be trademarked, the focus was on the brick’s upperside burlings only.

However, the court argued that the function of these burlings is of technical nature only (“connectors”) which pursuant to Sec. 3 subsection 2 no. 2 of the German Trademark Act prevents a mark from being protected.

The underlying principle of Sec. 3 subsec. 2 German Trademark Act is the idea that – in the interest of free competition – certain shapes can not be protected as a trademark.

So far, in this matter only the press release has been published.

(Federal Court of Justice -16. Jul. 2009 – I ZB 53/07 and I ZB 55/07)

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July 26, 2009   4 Comments

State emblems as trade marks – an almost impossible transformation

In this case the European Court of Justice (ECJ) had to decide about the registration of a State emblem (the Canadian maple leave emblem) as a Community trade mark. The underlying question was what scope of protection provided by Art. 6ter of the Paris Convention to State emblems and whether this Article also applies to service marks.

The Belgian company “American Clothing Associates” had filed an application for a Community trade mark (Nice Classes 18, 25 and 40). The sign in question was representing a maple leaf with the letters “RW” beneath it. The application was rejected based on Article 7(1) of Council Regulation (EC) No 40/94 establishing an absolute ground for refusal in regards to registration of State emblems in conjunction with Article 6ter of the Paris Convention.

American Clothing Associates filed action with the Court of First Instance but wasn’t successful. Finally, American Clothing Associates filed an appeal with the ECJ on the grounds that the Court of First Instance didn’t apply Article 7(1)(h) of Regulation No 40/94 and Article 6ter(1)(a) of the Paris Convention properly mainly due to a misinterpretation of the relevance of the essential function of State emblems.

American Clothing Associates argued that the scope of protection of Article 6ter (1)(a) of the Paris Convention is only to protect State emblems from imitations in a heraldic sense. Not the symbol itself is protected but the specific graphic work. Thus emblems without heraldic characteristics are not covered by the scope of Article 6ter (1)(a) of the Paris Convention.

The ECJ dismissed the appeal brought by American Clothing Associates. This was mainly based on the finding that the scope of protection of Article 6ter of the Paris Convention is absolute and “… does not depend on whether the emblem imitated in a trade mark is perceived by the public as a distinctive element or an ornamental element …”. The court further reasons that the essential functions of trademarks and State emblems are different in that State emblems are meant to identify a State and represent its sovereignty whereas trademarks are a means to identify the origination of goods and services. Further on the protection of State emblems does not require a likelihood of confusion. State emblems cannot be declared invalid, their protection period is not limited and they are protected without the need for registration.

The court also concludes that Article 6ter of the Paris Convention may even be applicable in cases where the mark is not an exact reproduction of a State emblem  if a trade mark is perceived by the relevant public as an imitation of a State emblem.

Finally the court ruled that the Paris Convention does not require States to distinguish between trademarks for goods and services although States are free to do so. The court outlines that based on Article 29(1) of Regulation No 40/94 it is evident that the Community legislature did not intend to discriminate between marks for goods and marks for services.

(European Court of Justice, Cases C‑202/08 P and C‑208/08 P, 16 Jul 2009)

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July 23, 2009   No Comments

Mineral water from Alaska, anyone?

This case is all about the question if the word “Alaska” unfolds descriptive character for beverages such as mineral water.

In 1998 the German brewery Schwarzbräu GmbH had registered a figurative Community trade mark consisting of the word “Alaska” and the picture of an ice bear on a sheet of ice (Nice class 32).  In 2001 the German beverage company Rhön-Sprudel Egon Schindel GmbH filed a request to declare the registration of this trade mark invalid, based on an alleged infringement of  Article 7(1)(c) Regulation (EC) No 40/94 (absolute ground for refusal for marks consisting exclusively of signs which indicate geographic origin). This request was rejected by the Cancellation Division. The appeal against this decision was also unsuccessful.

The Court of First Instance confirmed OHIM’s decisions. It did not see the mark having any descriptive character in relation to the goods concerned.

The relevant circles of the public do not make a connection between this mark, namely the word, Alaska (as a region) and as the origin of mineral water or other non-alcoholic beverages.

As far as Rhön-Sprudel had referred to a decision of the Federal Court of Switzerland, the court highlighted, that OHIM’s decisions were to be judged exclusively on the basis of Regulation (EC) No 40/94 and its interpretation by a Community Judge. Not really surprising, is it?

(European Court of First Instance, T‑225/08, 8. July 2009)

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July 17, 2009   No Comments

Mars bars don’t look that special

The Court of First Instance had to decide about the distinctive qualities of the Mars bar shape.

Mars Inc had registered a three-dimensional Community trade mark, Nice Classes 5, 29 and 30 of the Nice Agreement.

The German chocolate manufacturer Ludwig Schokolade filed an application for a declaration that this mark was invalid. This application was rejected by OHIM’s Cancellation Division, however Ludwig Schokolade’s appeal filed against this decision was successful. Accordingly Mars’ trademark was declared invalid. The Court of First Instance confirmed this decision and dismissed the action brought forward by Mars Inc based on the following key findings:

An elongated shape with rounded ends is not significantly different from other shapes commonly used for chocolate bars. Chevrons on top of a Mars bar are decorative elements and not a sign indicating the product’s commercial origin.

A mark can only be registered on the grounds of distinctiveness in consequence of the use which has been made of it, if this distinctiveness has been acquired in each of the states being a Member State at the time registration was sought.

The amount of time alone, a sign has been used in certain Member States is not sufficient to show that the public targeted by the product perceives it as an indication of commercial origin.

(Court of First Instance, T‑28/08, 8 July 2009)

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July 14, 2009   No Comments

Procter & Gamble’s OLAY no likelihood of confusion with OLI

In this decision the Court of First Instance had to decide the case of the Spanish company Laboratorios Alcala Farma who had filed an application for a Community trade mark in regards to the figurative sign “Oli” for the Nice Classes 3 and 5.

Procter & Gamble had filed an opposition claiming infringement of their earlier “OLAY” Community word marks (Nice Classes 3 and 5) because of a likelihood of confusion.

The court dismissed Procter & Gamble’s action. In essence because “…the signs at issue have significant differences at a visual and aural level which override the similarities…” in parts because of the figurative, highly stylised appearance of the “Oli” sign. But also the difference in pronunciation was highlighted by the court.

Finally the court emphasises that in regards to medical goods there was no likelihood of confusion as consumers display a higher level of attention when purchasing such goods.

No real groundbreaking new legal developments here.

(European Court of First Instance T‑240/08, 8 Jul 2009)

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July 10, 2009   No Comments