Category — Decisions

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

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

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).

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.

The shape of a pencil with an eraser on one end and a cap on the other, may be protected (as a 3 D trademark) if a significant distinction can be made between this shape and the plentiful variety of shapes of other writing-, drawing and painting utensils already on the market.
(Federal Patent Court, 29 W (pat) 67/07, Dec 10, 2008)

The use of company symbols as keywords in the paid search of Internet search engines (here: Google AdWords) not necessarily implicates a likelihood of confusion with the protected symbol if the advertisement displayed in the section for paid search results does not actually use the protected symbol.
(Federal Court of Justice, I ZR 30/07, 22 Jan 2009)

Company symbols are protected as commercial designations under German trademark legislation, Sec. 1 (2) and Sec. 5 (1) German Trademark Act (MarkenG). In Sec. 5 (2) company symbols are characterised as signs that are used in the course of business as name (of a firm) or special designation of a business.

Unlike a trademark, a company symbol is directly linked to a company and only indirectly related to a specific product or service.