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The OHIM and Dr. No

In the Case T‑435/05 decided by the European Court of First Instance on the 30th June 2009, Danjaq LLC, a US company established in Santa Monica, California was objecting the registration of the word sign “Dr. No” as Community trade mark at the OHIM by the German company Mission Productions Gesellschaft für Film-, Fernseh- und Veranstaltungsproduktion mbH (in the following referred to as “Mission Production”).

Registration was sought for Nice Classes 9, 12, 18, 25 and 32.

The OHIM rejected Danjaq´s objection on the grounds that

  • they had not provided sufficient proof that the marks in question had a well‑known character or
  • that the non‑registered marks or the signs other than trade marks had previously been used in the course of trade.

Danjaq LLC based their legal action on the following grounds:

  1. Infringement of Article 8(1)(a) and (b) and (2)(c) of Regulation No 40/94 (identity and likelihood of confusion)
  2. Infringement of Article 73 of Regulation No 40/94, and of Rules 50(2)(f) and 52(1) of Commission Regulation (EC) No 2868/95 (OHIM’s obligation to state reasons on which a decision is based).
  3. Infringement of Article 8(4) of Regulation No 40/94 (proprietor of non-registered trademark’s right to prohibit use of subsequent trademark)

The court has declined all three pleas.

1. The court ruled that there was no infringement of Article 8(1)(a) and (b) and (2)(c) of Regulation No 40/94 as the signs “Dr. No” and “Dr. NO” were not used by Danjaq LLC as trade marks previously. The court considers “Dr. No” as the title of the first film in the “James Bond” series and the name of one of the main character in that film. The signs “Dr. No” and “Dr. NO” were however not used as trade marks in order to identify the commercial origin of the films or DVDs.

For the average consumer, these signs only help to distinguish that film from other films in the “James Bond” series. The commercial origin of the film is indicated by other signs (e.g. “007″, “James Bond” or the “Gun Symbol”).

The court further reasons that even the commercial success of the Bond film “Dr No” can not change the fact that the signs in questions are not being used as indicators of commercial origin.

2. The court ruled that there was no infringement of Article 73 of Regulation No 40/94 and of Rules 50(2)(f) and 52(1) of Commission Regulation (EC) No 2868/95 as Danjaq LLC had failed to prove that it had used the signs “Dr. No” and “Dr. NO” in the course of trade. This is sufficient ground on which OHIM could reject the plea without violating Article 73 of Regulation No 40/94 and of Rules 50(2)(f) and 52(1) of Commission Regulation (EC) No 2868/95.

3. Finally the court ruled that there was no infringement of Article 8(4) of Regulation No 40/94 as Danjaq LLC had failed to prove that it had used the signs “Dr. No” and “Dr. NO” in the course of trade. Pursuant to Article 8(4) of Regulation No 40/94, the existence of an earlier non‑registered trade mark or a sign other than a trade mark gives its proprietor the right to prohibit the use of a subsequent trade mark if the sign

- is used in the course of trade and
- is of more than mere local significance.

The court reasons that “…the condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights…”

The documents submitted by Danjaq LLC were not sufficient proof that the film title “Dr No” was used in the course of trade as Danjaq LLC did not specify the extent of use of the title in the markets concerned. The court would have regarded “… programming details of the film, either for cinemas or television, or to specify the length of time over which the film was distributed …” as sufficient proof.

(European Court of First Instance T‑435/05, 30 June 2009)

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July 6, 2009   No Comments

Facebook vs. StudiVZ

In the case Facebook vs StudiVZ the Regional Court Dusseldorf ruled against Facebook, allowing StudiVZ to continue their service.

StudiVZ is a German social networking site similar to Facebook. The very similarity was also the reason for Facebook’s legal action against StudiVZ. The court ruled that despite a similarity of look & feel, StudiVZ does not misrepresent its origin and is no unfair imitation of Facebook. Facebook did not have enough profile in the German market when StudiVZ came to market in 2005. In so far as Facebook claimed that StudiVZ had unlawfully copied proprietary php code, Facebook did not provide enough evidence to prove a copyright infringement.

(Regional Court Dusseldorf 16.06.2009, 33 O 374/08)

So, the German tradition of scouting new Internet trends in the US and bringing them to market in Germany will continue. Sad but true, there are many successful Internet start ups in Germany but probably less than a handful genuine German “first movers”. The rest is “me too”.

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July 1, 2009   No Comments

Concept of “extraction” does not require physical copying

The concept of “extraction” within the meaning of Article 7 of Directive 96/9 EC does not necessarily require physical copying. Transferring the elements of one database to another database following visual consultation of the first database and a selection on the basis of a personal assessment of the person carrying out the operation can also be an extraction pursuant to Article 7 of Directive 96/9.

Directive 96/9 EC is meant to provide “legal protection of databases in any form”. Article 7 of this  Directive stipulates a sui generis right to the maker of a database to prevent extraction, provided the maker has made a substantial investment in the database (e.g. time).

Here the European Court of Justice (ECJ) had to decide a case where the claimant had created an anthology based on a list of verse titles of important German poems, which he (the claimant) had compiled and published on the Internet. The defendant has published a CD ROM “1 000 poems everyone should have” whereby the vast majority of poems in this collection also appear in the list published by the claimant.

The defendant selected the poems as follows:
The claimant’s list was used as a guide. Certain poems on the list were omitted, and others added. Each poem was critically examined before selected for inclusion in the CD ROM. The actual texts of the poems were taken from the defendant’s own resources.

(European Court of Justice 09.Oct. 2008, C‑304/07)

Based on this decision the “screen scraping” decision of the Higher Regional Court of Frankfurt (6U 221/08) could have well been a different one. It looks a bit as if the court wanted to get the work done quickly without digging too much into detail. So they choose the easy route, ruling that no essential parts of that database were affected nor did the screen scraping process interfere unreasonably with database maker’s legitimate interest. By going down this path, there was no need to deal with the concept of extraction and other principles related to Directive 96/9.

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June 29, 2009   No Comments

Screen scraping flight schedule not infringing copyrighted database

The Higher Regional Court of Frankfurt has decided, that using a method called “screen scraping” to refer customers to buy airline tickets online is legal and does not infringe copyrights.

The claimant operates a website where users can search for flights. Based on these search queries, flight schedules on (airline) websites are being searched by a spidering tool to retrieve matching flights. Relevant results (including price) are then displayed back on the claimant’s website, whereby the Internet user has the opportunity to book flights. The defendant stated that this practice was unlawful, especially infringing their copyrighted database.

The court has decided that “screen scraping” did not infringe the defendant’s copyrights. Data records of single flight connections can not be deemed as “essential parts” of the database. The screen scraping process is not a duplication or use pursuant to Art. 87b (1) Copyright Act.

The court further reasons, that the screen scraping still was within the limits of normal analysis and that the defendant’s interests were not unreasonably interfered with.

(Higher Regional Court Frankfurt/ Main, 05. March 2009 -  6 U 221/08 )

I think one should be careful here. It would be hazardous to take this decision as a free ride to harvest web sites on the Internet. Slight differences in the scraping process or monetizing model might as well have led to a different outcome.

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June 24, 2009   No Comments

L’Oréal vs. Bellure

The European Court of Justice (ECJ) had to decide in a case where the defendant (Bellure) was marketing imitations of the claimant’s (L’Oréal) fragrances whereby packaging and bottles were being generally similar however this similarity was unlikely to mislead professionals or the public. Further on the defendant was marketing these imitations by using L’Oréal´s wordmarks in a comparison price list.

One of the key questions the court answered (in the negative), was whether the applicability of Directive 89/104/EEC (to approximate the laws of the Member States relating to trade marks) and of Directive 84/450/EEC (concerning misleading and comparative advertising, amended by Directive 97/55/EC) requires a likelihood of confusion.

The taking of unfair advantage of the distinctive character or the repute of a mark pursuant to Article 5(2) of Directive 89/104/EEC does not require a likelihood of confusion or detriment to the distinctive character or the repute of the mark.

The unfairness of the use of a trademark arises where a third party seeks

  • to ride on the coat-tails of the mark with a reputation and
  • to benefit from the reputation of that mark

and thus is exploiting the proprietor’s marketing efforts without paying any financial compensation.

Under Article 5(1)(a) of Directive 89/104/EEC the proprietor of a registered trade mark has the right to ban a third party from using that trademark in a comparative advertisement not compliant with the requirements as per Article 3a(1) of Directive 84/450/EEC (concerning misleading and comparative advertising, amended by Directive 97/55/EC) even if such use does not jeopardise the essential function of the mark (indicating the origin of the goods or services) if it affects one of the other functions of the mark and by that going beyond a mere descriptive use. These complimentary functions are in particular:

  • communication
  • investment
  • advertising.

The court sees the way in which L’Oréal’s wordmarks were being used by the defendant in the price lists as more than a mere descriptive comparison. In fact the price lists in this case are classified by the court as a means of advertising.

An advertiser who states explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark unlawfully presents “goods or services as imitations or replicas” within the meaning of Article 3a(1)(h) of Directive 84/450 (amended by Directive 97/55) and advantages gained as a result of such unlawful comparative advertising are thus taken unfairly of the reputation of that mark pursuant to Article 3a(1)(g) of Directive 84/450.

It has to be noted that on the 27. November 2008, Directive 89/104/EEC has been replaced by Directive 2008/95/EC. However regarding the date of the case’s facts in the main proceedings, this case still had to be decided applying Directive 89/104/EEC.

European Court of Justice (C-487/07 – 18. June 2009)

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June 22, 2009   No Comments

Single Letter “α” Protectable As Community Trademark

A single letter (here the Greek letter Alpha “α” is protectable as a figurative trademark without further enhancement or graphic design.

It was disputed that the sign at issue has distinctive character because it consists only of one single letter. A lack of distinctiveness is an absolute ground for refusal to register a Community Trademark pursuant to Article 7(1)(b) of Regulation No 40/94.

The court has decided, that a single letter in deed can have the distinctive character required under Article 7(1)(b) of Regulation No 40/94 if it is suitable in principle in the individual case to distinguish the origin of a product in the eyes of the relevant circles of the public.

The court reasons that:

“It is apparent from the case-law that Article 7(1)(b) of Regulation No 40/94 draws no distinction between the different categories of trade mark and that the criteria for assessment of the distinctive character of trade marks which consist of a single letter are the same as those applicable to the other categories of trade mark.”

The European Court of First Instance has therefore referred back the trademark application to OHIM for re-examination in the light of the grounds of the judgement.

European Court of First Instance (T‑23/07, 29th April 2009)

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June 17, 2009   No Comments

Wordmark “CK” – Calvin Klein vs. Creationes Kennya

There is no similarity or likelihood of confusion between the trademark “ck creationes kennya” and the older community trademark “ck calvin klein”.

Pursuant to Art. 8 Para. 1 lit. b Council Regulation(EC) No. 40/94 a trademark can not be registered if

  • the proprietor of an older trademark objects and
  • the new mark is identical or similar to the older trademark and
  • the trademarks are related to identical or similar goods or services and
  • this causes a likelihood of confusion within the relevant public circles.

When comparing compound trademarks, it is not sufficient to compare components separately. In fact it is required to compare the trademarks in their entireness.

The mere similarity between the dominating element “ck” of the older trademark “ck calvin klein” (being registered in a way where “ck” is printed in significantly bigger fonts than “calvin klein”)  and the element “ck” of “ck creaciones kennya” does not cause a likelihood of confusion as the latter is dominated by “creaciones kennya” and not by “ck”.

European Court of First Instance (T-185/07, 7th May 2009)

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June 15, 2009   No Comments

International Aspects of Intellectual Property Law, Part III

Unlike in tort law, the parties of a contract usually may agree on a certain court of competence of their choice. If the parties are domiciled in different member states of the EU, Council Regulation (EC) No 44/2001 (Art. 23) is applicable.

As already mentioned in part 2, cases where at least one party is domiciled in a non EU country are governed by the Hague Convention on Choice of Court Agreements”.

However there are some exemptions. This convention is not applicable in matters regarding the validity of intellectual property rights other than copyright and related rights. Exempt are also infringements of intellectual property rights other than copyright and related rights, except where infringement proceedings are brought for breach of a contract between the parties relating to such rights, or could have been brought for breach of that contract.

To be continued.

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June 10, 2009   No Comments

International Aspects of Intellectual Property Law, Part II

In part 1 of this mini series I covered inter European cases. In this part we´re having a closer look at cases linked to non EU jurisdictions.

Unfortunately, in many international cases related to international property infringement there is no matching international legal framework comparable to Council Regulation (EC) No 44/2001.

The only significant framework here is the Hague Convention on “Choice of Court Agreements” regulating court competence in cases where the parties have (contractually) agreed to chose a certain court. However this convention is not applicable to those instances of intellectual property infringements where there is no contractual relationship between the parties.

To be continued.

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June 8, 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