The Quick and Easy Guide to German and EU Intellectual Property Law, Trademarks and Copyright

US and German copyright laws are based on different principles which often causes confusion. One of the main differences relates to the creator’s exploitation rights. Pursuant to the German Copyright Act, a creator may sell the rights of utilisation but will retain in essence all exploitation rights.

One of the most fascinating and challenging areas of the law (I find) are cases where more than one jurisdiction is involved. Since the dawn of the Internet international aspects of the law have become relevant even to small businesses and individual consumers to an extent unprecedented so far. This development is even more true in the field of intellectual property. Infringements can easily spread over the Internet within no time, literally all over the world, involving multiple jurisdictions.

This mini series will cover some of the most essential international aspects of intellectual property law from the German and European point of view.

Inter European cases of infringement
In cases where plaintiff and defendant are domiciled in (different) member states of the EU (except Denmark), jurisdiction is determined pursuant to Council Regulation (EC) No 44/2001.

The general rule is that a person shall be sued in the member state of that person’s domicile. There are several exceptions to this general rule. The most relevant one in infringement cases is in regards to torts. A person may also be sued where the harmful event occurred or may occur. Due to the “virtual” nature of intellectual property, place of action (where the infringing action is happening) and place of effect (where the damage actually occurs) are identical.

Whether an event was harmful and therefore constitutes jurisdiction of a member state, is determined by the relevant laws of that member state (e.g. Trademark Act, Copyright Act).

To be continued.

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.

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.

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.

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).

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.

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.