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

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