The Quick and Easy Guide to German and EU Intellectual Property Law, Trademarks and Copyright
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Category — German Trademark Act (MarkenG)

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

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

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

Five Signs Of Internet Auctions Selling Counterfeit Products

German consumers are very price conscious bargain hunters. Several Internet auction platforms are catering to this target audience. The platform with the biggest market share unsurprisingly is eBay.

It is also common place that these platforms are home to a huge number of “pirates” selling counterfeit goods. This poses a big threat to proprietors of trademarks and design patents. There is a direct financial loss involved. But what is probably worse, it dilutes the brand image.

The first step to fight this is to identify internet auctions featuring counterfeit goods. The following five signs are certainly not a 100% indicator. However the more boxes an internet auction ticks, the more further action might be appropriate, e.g. a couvert purchase to investigate further.

  1. Goods only up for auction for a short period of time at an unrealistically low price
  2. Several auctions with the same offer/ sales copy
  3. Substantial number of goods in stock/ on auction
  4. Does not show any seller details or imprint although auction clearly appears to be of commercial nature
  5. Relatively newly registered account and/ or a low number of feed back.
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June 5, 2009   No Comments

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

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

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

Pencil with Eraser Protected as 3 Dimensional Trademark

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)

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May 8, 2009   No Comments

Trademark Protection without Registration

Something often overlooked is the fact, that under German law an unregistered mark may be trademarked without registration enjoying comparable protection as a registered trademark. How so?

According to Sec. 4 no. 2 Trademark Act, trademark protection may also originate from the use of a mark in the course of business as far as a sign has acquired secondary meaning as a trade mark in the relevant public.

Based on Sec. 12 Trademark Act a registered trademark may even be deleted from the register, if there is a trademark originated from use if the registered trademark has a lower priority, i.e. the registered trademark is “younger”.

Of course, this does not mean registering trademarks in Germany is obsolete as the acquisition of a secondary meaning as a trademark doesn’t happen overnight, thus leaving a sign unprotected not to mention the burden of proof.

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May 5, 2009   1 Comment