Section 02

Trademark Law

Fabry, B.
A surprise for the golden rabbit
Notice of German Patent Attorneys („Mitteilungen der Deutschen Patentanwälte“), 2008

In contrast to the typical types of trademarks, the good’s shape filed as trademark does not profit from the trademark protection. Therefore, the Higher Regional Court deserves support in its statement that in case of 3D trademarks, all determining elements must be considered for judging the danger of confusion and that there is no clear preference for the embossing of a word element. Any other view would undermine the value of a 3D trademark as minorly varying prints on the same forms would already formally prevent the trademark collisions. This cannot be of interest for the relevant public.

Fabry, B.
Sea-hear-feel: Trademarks for all senses
Notice of German Patent Attorneys („Mitteilungen der Deutschen Patentanwälte“), 159, 2008

If the general registrability of colour marks, sound marks and tactility marks would improve the competition or further intensify the conflict situation in the field of industrial property remains to be seen. The ECJ’s decision making binging rules in regard of the mentioned new types of trademarks are doubtlessly an expression of the political will to enrich the market with new prohibitive rights. You might agree on this or not but, however, it must be said that the final decision-making power of a formation of a court having pan-European jurisdiction is beneficial for the legal certainty within the domestic market. What it means to have to deal with different national standards can be followed in patent law every day. Indeed, the realization of the ECJ’s requirements into national rights can be successful – not uncommonly stimulated through templates of preliminary procedures from Germany or the Netherlands – such as the application of the decision “Libertel” and “Heidelberger Druckmaschinen”to the German Supreme Court’s jurisdiction regarding colour marks shows.Even in those cases where the registration was finally denied, the ECJ and EUIPO has at least pointed the way such as in case of  representation of sound marks on how to avoid pitfalls in future. If the greatest hurdle of graphic representation is succeeded, the operative part of judgements shows, such as it is with the other types of trademarks, that there will be only minimal requirements on distinctiveness. Only in case of olfactory marks, the ESJ does not seem to be willing to make any concessions although its argumentation saying that the representation through chemical formulas would not be sufficient does not seem to be compulsory. In fact, the perfume on the one hand as well as kind and quantity on the other hand – as far as they can be determined- are necessarily interconnected.  Therefore, its determination is not more or less determining than a colour’s definition through the RAL colour-scale. But, however, the decision is correct: the registrability of olfactory marks would mean – especially due to the direct link between perfume and chemical structure – obtaining a compound protection for an unlimited period only limited by the selected goods so that even those substances and substance mixtures which do not meet the requirements of novelty and inventive step could profit from said mark. Such an undermining of patent law is to be prevented. Therefore, hopes may be cherished that the ESJ will prohibite mark excesses despite of all liberalization even in the future.

Fabry, B.
Little Red Riding Hood and the evil wolf – with the evil trademark applicants and valuable rights
GRUR 566, 2010

The willingness of German couts to arrange for a trademark’s deletion due to bad faith when filing is limited to cases where an immoral impediment to competition or an intentional act of trouble as well as a lack of own intention to use the trademark can be proven or if they can give a prima facie evidence according to the circumstancers. In case of doubt, the principle „in dubio pro reo“ applies. At the same time, the bar is set high: the threshold of hindrance to be accepted as a result of competition is only exceeded when the affected behavior is primarily targeted at the impairment of the competitive development of the competitor on an objective assesments of facts and not at the promotion of the own competition. Simultaneously, the latest ECJ’s juricdiction showed further reasons for exculpation especially when the applicant has its own vested rights worth protecting and makes up for his delayed trademark protection for his goods and services to some extent. The caution in recognizing this plea for annulment is not only a German phenomen as a look at China shows: although there are plenty of pending proceedings, these were decided in majority and even showing an upward trend to the disadvantage of the plaintiff. Therefore, the absolute grounds for invalidity due to bad faith when filing will only be successful in exceptional cases and this not only applies for Germany.

Fabry, B.
A bitter pill for sweet rabbits – European Court of Justice and Federal Court confirm case law regarding 3D trade marks
GRUR Prax 47,2011

For the Swiss confectionery company Lindt-Sprüngli which had been trying to implement its trademark rights in the field of Austrian chocolate products against competitors for years, bitter defeats have just been placed at Luxembourg. Thereby, the European Curt confirmed that there are no other requirements to 3D marks than to other types of trademarks (European Court of Justice, judgements from December 17, 2010, BeckRS 2010, 91468 – „Goldhase“; BeckRS 2010, 91469 – „Rentier“; BeckRS 2010, 91470 – „Glöckchen mit rotem Band“; BeckRS 2010, 91472 – „Schokoladenhase“; BeckRS 2010, 91467 – „Schokoladenmaus“). The judges from Karlsruhe could, however, offer some some solace regarding the danger of confusion as they have at least judged the negative judgement of the previous instances at least as not sufficiently motivated one more time (Federal Court, judgement from July 15, 2010, BeckRS 2010, 31034). This contribution sums up the background and the latest jurisdictions to the topic.