The Quick and Easy Guide to German and EU Intellectual Property Law, Trademarks and Copyright
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Posts from — May 2009

Constraints of German trademark law

Under German law there are several constraints to a trademark. These are mainly limitation, forfeiture, descriptive use, exhaustion, non-use.

Limitation. Limitation for claims based on infringement is 3 years from the date the trademark proprietor is aware of the infringement. Regardless of the proprietor’s awareness, such claims are limited to a max of 30 years from the date of infringement.

Forfeiture. A trademark proprietor tolerating an infringement for 5 consecutive years will lose the right to claim based on this infringement if the infringer does not act in bad faith.

Descriptive use. Descriptive use of protected signs (e.g. to indicate the purpose of a product or service) may not be prohibited.

Exhaustion. Distribution of trademarked goods within the European Economic Area (EEA) may not be prohibited if these goods have been put on the market in the EEA before with the consent of the trademark proprietor (“Grey Import”).

Non-use. No infringement claims may be asserted against third parties if the trademark has not been put to genuine use within a period of five consecutive years prior to asserting the claim.

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May 29, 2009   No Comments

What the German Copyright Act does NOT protect

A common misconception seems to be that ideas can be protected by Copyright laws. For example the concept of a new TV show.

A nice idea, as under the German Copyright Act works are protected from the moment of their creation, no further formalities required. Unfortunately, ideas are not protected under the German Copyright Act.

Generally spoken, the Copyright Act protects the form an idea is given. How a work is composed and structured. The underlying idea itself is not protected. Admittedly, it can be quite difficult to distinguish “form” and “idea” from one another. The more alike two compositions the more likely a copyright infringement is.

The same misconceptions apparently exist in the UK. Click here for a detailed and comprehensive article from one of my favourite UK IP blawgs, Shireen Smith’s IP-brands.

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May 28, 2009   No Comments

Trademark infringement under German law

The following article briefly outlines how a trademark infringement is determined under German law pursuant to Sec. 14 Trademark Act.

A protected sign has been used by a third party without consent in the course of trade.

The  infringement may happen in one of the following three ways:

Infringement of identity. The used sign is identical to the protected sign and it is being used for goods/ services in identical categories. These are typically cases of “Product Piracy”.

Likelihood of confusion. A similar sign is infringing a protected sign if there is a likelihood of confusion. The likelihood of confusion is determined by three aspects:
- Similarity of signs
- Similarity of related goods/ services
- Distinctiveness of protected sign.

Last but not least exploitation of a popular sign. This is the case where a similar sign is taking unfair advantage of a protected sign’s reputation or damaging this signs reputation. A sign is deemed as popular if it is renowned amongst 20 – 30% of the relevant circles in Germany.

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May 26, 2009   No Comments

“CCCP” – Designation Of Geographic Origin

Pursuant to Sec. 8 (2) No. 2 Trademark Act, the letters “CCCP” designating the former Soviet Union can not be registered as a trademark for clothes, T-shirts and sweatshirts.

Despite the fact that the former Soviet Union does no longer exist as a state, the Cyrillic letters CCCP are still suited as designation of geographical origin pursuant to Art. 8 (2) No. 2 Trademark Act.

The decision is based on two key points:

1. Also an out – of – date local designation may be non protectable if it is still seen as indication of location at least in parts of the relevant circles.

2. National designations of no longer existing states can evolve into – non protectable – indirect designations of geographic origin.

Federal Patent Court 21. Jan 2009 – 26W (pat) 2/ 08

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May 21, 2009   No Comments

“Budweiser” not as Community Trademark registrable

The European Court of First Instance has ruled, the by Czech Brewer Budějovický Budvar, národní podnik (Budvar Brewery) registered international trademark “BUDWEISER” (protected territory: BeNeLux-Countries, Germany, Austria and Italy) is an earlier trademark as per Art. 8 Para. 1 (a) and (b) Council Regulation (EC) No 40/94. Therefore American Brewer Anheuser-Busch can not register the term “BUDWEISER” as Community Trademark.

Print ads featuring pictures of the earlier trademark may be considered proof that the earlier Trademark has been put to genuine use as per Art. 43 Para. 1 and 2 Council Regulation (EC) No 40/94.

European Court of First Instance, T-191/07, 25. March 2009

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May 20, 2009   1 Comment

Using Third Party Trademarks as Metatags

A bit of a golden oldie, but certainly worth another look again, especially in the face of the more recent developments in terms of using trademarked keywords in paid search results (Google AdWords), already discussed here and here.

In its so called “Impuls III” – decision (18. May 2006 – I ZR 183/03) the German Federal Court of Justice has decided, that the unauthorised use of third party signs in the source code of a website is relevant as infringement under the German Trademark Act, even if these signs are imperceptible (to the human eye).

This is no different in cases where such signs are being incorporated in the actual text of a website (be it in very small fonts or font colours matching the background colour). The principle of Exhaustion (Sec. 24 Trademark Act) does only allow such use, if  the specific original product is being promoted. German Federal Court of Justice, “AIDOL” – decision, (8. Feb. 2007 – I ZR 77/04). A similar line-up of font matching is discussed here by Martin Schwimmer in his very comprehensive Trademark Blog (US law).

Based on this, the recent development as to how the Federal Court of Justice is judging third party keywords in paid for search results,  appears a bit surprising at first sight. It seems that in the opinion of the court one of the key differentiators between meta tagging cases and AdWords cases is the “likelihood of confusion”, which isn’t seen as an issue in paid for search results as long as they are distinct from organic results. Hence, the court stresses segregation of paid for search results from organic search results and labelling paid for search results as advertisement (see here and here again).

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May 18, 2009   No Comments

Google Adwords and trademarks – the story continues on the other side of the pond

Apparently hell breaks loose on the other side of the pond reports IP attorney Ron Coleman in his blawg “Likelihood of Confusion®”.

It´s all about Goolge planning to allow trademarked keywords in GoogleAdwords. I suspect Google must have felt inspired by the German Federal Court of Justice and is trying to push a trend from Europe over to the US. This will most certainly  drive Adwords revenue significantly.

See also my previous post on this matter here and here.

Update:
A great post about the whole subject matter can be found here in Shireen Smith’s ip-brands.com blog. She discusses the situation in the UK but also France, Germany and the Netherlands. A must read!

The academic side of things: Eric Goldman in his Technology and Marketing Law blog here. Interesting and thought provoking.

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May 16, 2009   No Comments

France restricting web access for internet pirates

According to Radio France International, the French Parliament yesterday passed a bill that will be signed into law by President Sarkozy shortly, based on which Internet users pirating software or music over the Internet my lose their Internet connection.

Interesting development. Unfortunately the article doesn´t specify, to what extent the Internet connection will be shut down. Will pirates be banned from using the Internet at all, i.e. banned from using the internet? Otherwise they might just register another account with another provider. Also, what is the maximum suspension time? Hopefully I will be able to report some more specific details, soon.

So far, I think this is a strong signal. The question is, if this is going to have an impact other than the message itself. We all know the Internet well enough to predict that the very same people who are targeted here, will very likely and easily find ways to circumvent this ban.

And one thing is for sure: rather sooner than later, this law will be challenged in terms of constitutionality and compliance with EU law. We shall see. I will keep you posted.

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May 14, 2009   No Comments

Your Rights as a Trademark Proprietor under German Law

So, someone is interfering with your trademark. What options does the German law offer to you as a trademark proprietor? Here are the most important ones:

  1. Infringer is enjoined to refrain from infringing actions,
    Sec. 14 (5) and Sec. 15 (4) Trademark Act.
  2. Compensation, in the case of negligent or intentional infringement,
    Sec. 14 (6) and Sec. 15 (5) Trademark Act. Compensation comprises either of actual damages (as to Sec. 249 ff. Civil Code) or adequate licencing fees or release of relevant profits.
  3. Destruction and recall of infringing goods and destruction of equipment predominantly used for unlawfully labelling infringed goods, if considered reasonable, Sec. 18 Trademark Act.
  4. Disclosure, Sec. 19 Trademark Act. This is predominantly a claim for information like manufacturers, distributors and related details.

According to Sec. 2 Trademark Act, one is not limited to the options granted by the Trademark Act itself. This means, depending on the individual characteristics of a case, claims may also be based on the Civil Code (esp. Sec. 12, 812 and 823 Civil Code) and Act Against Unfair Competition, UWG (esp. Sec. 8,9 and 10).

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May 13, 2009   No Comments

Keywords Going Bananas

In the so called “Bananababy Case” the Federal Court of Justice (BGH) has referred the case to the European Court of Justice (ECJ), to answer the following question (see also my previous post about using company symbols as keywords ):

Is it to be deemed “using in the cause of trade” as to Art. 5 no. 1 Clause 2 let. a of Directive 89/104 EEC, if a third party is using a symbol identical to a trademark without the consent of the respective trademark owner, by booking this symbol as a keyword (here: “bananababy”) in a paid – for search on the Internet (here: Google AdWords) to advertise identical products or services, if

  • the advertisement is separated from the natural search results,
  • the advertisement is clearly labelled as such,
  • and if said advertisement does not display the symbol itself or any reference to the actual trademark owner or trademark owner’s goods?

(Federal Court of Justice – I ZR 125/07 – 22. Jan 2009)

In the relevant case, both parties are selling adult accessories on the Internet. The plaintiff has trademarked the term “bananababy”. The defendant used this term as a keyword on Google AdWords, however did not actually use this term in the advertisement itself.

See also this previous post about a Federal Court decision dealing with keywords, company symbols and the likelihood of confusion. Although,  it is a constellation quite similar to this one, it has not been referred to the ECJ. Reason: Directive 89/104 EEC is not applicable to company symbols.

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May 11, 2009   No Comments