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

State emblems as trade marks – an almost impossible transformation

In this case the European Court of Justice (ECJ) had to decide about the registration of a State emblem (the Canadian maple leave emblem) as a Community trade mark. The underlying question was what scope of protection provided by Art. 6ter of the Paris Convention to State emblems and whether this Article also applies to service marks.

The Belgian company “American Clothing Associates” had filed an application for a Community trade mark (Nice Classes 18, 25 and 40). The sign in question was representing a maple leaf with the letters “RW” beneath it. The application was rejected based on Article 7(1) of Council Regulation (EC) No 40/94 establishing an absolute ground for refusal in regards to registration of State emblems in conjunction with Article 6ter of the Paris Convention.

American Clothing Associates filed action with the Court of First Instance but wasn’t successful. Finally, American Clothing Associates filed an appeal with the ECJ on the grounds that the Court of First Instance didn’t apply Article 7(1)(h) of Regulation No 40/94 and Article 6ter(1)(a) of the Paris Convention properly mainly due to a misinterpretation of the relevance of the essential function of State emblems.

American Clothing Associates argued that the scope of protection of Article 6ter (1)(a) of the Paris Convention is only to protect State emblems from imitations in a heraldic sense. Not the symbol itself is protected but the specific graphic work. Thus emblems without heraldic characteristics are not covered by the scope of Article 6ter (1)(a) of the Paris Convention.

The ECJ dismissed the appeal brought by American Clothing Associates. This was mainly based on the finding that the scope of protection of Article 6ter of the Paris Convention is absolute and “… does not depend on whether the emblem imitated in a trade mark is perceived by the public as a distinctive element or an ornamental element …”. The court further reasons that the essential functions of trademarks and State emblems are different in that State emblems are meant to identify a State and represent its sovereignty whereas trademarks are a means to identify the origination of goods and services. Further on the protection of State emblems does not require a likelihood of confusion. State emblems cannot be declared invalid, their protection period is not limited and they are protected without the need for registration.

The court also concludes that Article 6ter of the Paris Convention may even be applicable in cases where the mark is not an exact reproduction of a State emblem  if a trade mark is perceived by the relevant public as an imitation of a State emblem.

Finally the court ruled that the Paris Convention does not require States to distinguish between trademarks for goods and services although States are free to do so. The court outlines that based on Article 29(1) of Regulation No 40/94 it is evident that the Community legislature did not intend to discriminate between marks for goods and marks for services.

(European Court of Justice, Cases C‑202/08 P and C‑208/08 P, 16 Jul 2009)

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July 23, 2009   No Comments

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

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