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)

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)

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)

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.

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

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).

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).

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.