Under the title “The World of IP: Caught Between Globalism and Nationalism”, various experts will meet for the MIPLC Alumni Conference in the Literaturhaus Munich on 24 February 2018.
Prof. Dr. Heinz Goddar will host the first part of the programme entitled “Old Issues Revisited: IP and Trade in Pharmaceuticals“.
The detailed programme as well as further information on the conference can be found here.
On February 23, 2018, patent attorney and UNION-IP Honorary President Nils T.F. Schmid will be hosting a half-day Round Table entitled “Claim your indirect rights directly right – Cross border patent issues with essential elements”. The workshop will be held in English in the German Patent and Trade Mark Office at Zweibrückenstraße 12, 80331 Munich. Speakers announced so far include German Federal Court of Justice Judge Klaus Bacher and Sir Henry Carr from the UK Patents Court.
For more information, please contact Nils T.F. Schmid.
The UNION of European Practitioners in Intellectual Property (UNION_IP) is an independent nonprofit organisation for experts working in the field of intellectual property. It was founded in 1961 as the UNION of European Patent Attorneys. It is a Europe-wide organisation and provides a professional forum for IP experts.
Together with media.connect brandenburg and the Federal Association of Interactive Entertainment Software (BIU), we will host the Producers’ Brunch on 19 February 2018 to mark the 68th Berlinale.
Prof. Dr. Jan Bernd Nordemann will present a legal introduction to the issue “Game/Film – Will it all become the same thing?”; the event will be hosted by Dr. Martin Schaefer. Interesting questions regarding the challenges faced by these two sectors will be posed. Read more here.
Under the title “The World of IP: Caught Between Globalism and Nationalism”, various experts will meet for the MIPLC Alumni Conference in the Literaturhaus Munich on 24 February 2018.
Prof. Dr. Heinz Goddar will host the first part of the programme entitled “Old Issues Revisited: IP and Trade in Pharmaceuticals“.
The detailed programme as well as further information on the conference can be found here.
Commenting on the online portal of the World Trademark Review, solicitor Dr Florian Schwab explains two recent decisions of the Federal Supreme Court on the protection of 3D marks in the case of the square packaging used by Ritter Sport chocolate and Dextro Energy glucose.
The Federal Supreme Court reversed the restrictive approach applied by the Federal Patent Court and confirmed the liberal approach as regards the patentability of three-dimensional marks. Corresponding judgements with reasoning are still awaited. The Federal Supreme Court has up to now only released a press statements.
This article was published on 05.01.2018 in WTR Daily (component of World Trademark Review).
Commenting on the online portal of the World Trademark Review, solicitor Dr. Florian Schwab explains two recent decisions of the Federal Supreme Court on the protection of 3D marks in the case of the square packaging used by Ritter Sport chocolate and Dextro Energy glucose.
The Federal Supreme Court reversed the restrictive approach applied by the Federal Patent Court and confirmed the liberal approach to patenting three-dimensional brands. Corresponding decisions with reasoning are still awaited. The Federal Supreme Court has up to now only released press statements.
This article was published on 05.01.2018 in WTR Daily (component of World Trademark Review).
On February 8-9, 2018, experts will meet in Georgetown Law Center, Washington, D.C. to discuss ‘Fair and Effective Incentives for New Uses of Established Drugs’
Among other aspects, panel member Dr. Ute Kilger will talk on the subject of ‘Examples of Success – The Lyrica Story in Denmark’ and explain the legal situation in Germany.
Dr. Karl-Heinz Metten will take up the role of moderator, leading the Judges’ Panel.
Further information about the conference is available here.
On February 8-9, 2018, experts will meet in Georgetown Law Center, Washington, D.C. to discuss ‘Fair and Effective Incentives for New Uses of Established Drugs’
Among other aspects, panel member Dr. Ute Kilger will talk on the subject of ‘Examples of Success – The Lyrica Story in Denmark’ and explain the legal situation in Germany.
Dr. Karl-Heinz Metten will take up the role of moderator, leading the Judges’ Panel.
Further information about the conference is available here.
In a recent decision (file number I ZR 92/16), the German Federal Court of Justice ruled that the mere presentation of a product at a trade fair in Germany does not imply that the exhibitor specifically offers this product with the purpose to allow trade fair visitors to (later) purchase the product in the domestic market. Such deliberate advertising is not to be expected if the exhibitor clearly points out to the trade fair visitors that they cannot purchase or order the exhibited product because it reserves the right to make changes to the product.
The applicant is the legal successor of the licensee with the right to manufacture and distribute legless steel tubular chairs, following the example of a famous chair created in 1926, so called Mart-Stam-Chair.
The Defendant is a Polish company, which exhibited a similar chair model named “Zoo” in different versions at the international trade fair ORGATEC, Cologne, for trade professionals only, during the period from 21st to 25th October 2014, and depicted respetive chairs in various advertising materials and product catalogs, however, with the notice that (i) the collection could only be ordered from 2015 on, and that (ii) the “Zoo” series is still in the development stage. Further, on the floor of the defendant’s exhibition stand, right next to the chairs, the notice “prototype” was located.
Against this background, the plaintiff handed over a warning letter at the trade fair on 21 October 2014, setting a deadline to provide a signed cease and desist declaration until 8 pm on the same day. Following this, the parties started arguing about the reimbursement of the cost regarding the preparation of the warning letter.
In the first-instance proceedings before the district court of Dusseldorf (judgment of 18 June 2015, file number 14 c O 184/14) the court issued a partial dismissal of the claim based on the consideration that the warning letter was legitimate regarding the distribution and bringing to public of the pictures of the chairs, but not with respect to the reproduction of pictures of the chairs (reason: the calatogues were printed in Poland and not in Germany) and also not regarding the offering and distribution of the chairs. The appeal before the Düsseldorf Higher Regional Court, (judgment of 19 April 2016, file number I-20 U 99/15) by the plaintiff was unsuccessful. With the further appeal, the plaintiff continues to pursue its claims for reimbursement of additional costs, but in the end without success.
The further appeal was rejected by the German Federal Court of Justice, basically confirming the reasoning of the Court of Appeal. While the chairs shown on the trade fair do fall within the scope of the chairs of the plaintiff which are protected by copyright, neither the fact that the chairs were shown on the trade fair nor the fact that they were depicted in catalogues were considered an infringement of the plaintiffs rights of distribution, which means the right to offer the original or copies of the work to the public or to bring it to the market, according to Sec. 17 German Copyright Law. Instead, due to the notice “prototype” it is clear that the chairs were not dedicated to be delivered to (German) customers. Therefore, the defendant did not advertise for the acquisition of the chairs still to be produced later. Further, it cannot be established that the chairs in their final design fall into the scope of protection of the Mart-Stam-chair.
With reference to the earlier Keksstangen decision (GRUR 2015, 603 par. 21), the Federal Court of Justice stated that there is no empirical premise that the presentation of a product at an national trade fair should always encourage visitors to purchase this product in the domestic market. Thus, there is a regular lack of targeted advertising for the purchase of the exhibited product, if not a ready-for-sale product, but only a prototype or a design study is exhibited in order to test the reactions of the market to a product that is still in the devlopment stage (BGH, GRUR 2015, 603 ff. Par. 22 – Keksstangen). This applies in particular to international fairs, which also service to establish business relations between foreign parties without domestic reference.
As a result, the Federal Court of Justice concluded that the Court of Appeals, without error of law, assumed that the exhibition of the chair model “Zoo” at the trade fair did not constitute a risk of first infringement of the exclusive right of the owner of the copyright to distribute the Mart-Stam-Chair.
Already back in 2010 the Federal Court of Justice ruled in the Pralinenform II decision (22 April 2010, file number I ZR 17/05 – a trademark infringement case) that like in the above mentioned Keksstangen decision (a case regarding infringement of the Act against Unfair Competition) the mere presentation of a product at a German trade fair cannot automatically be considered an offer of these products or a putting of these products on the German market. With the above mentioned decision the Federal Court of Justice now extents those reflections to copyright cases and confirms that even in the case of a product presentation in Germany, an initial risk of copyright infringement (and, possibly, other legal violations) may not be accepted, even if the exhibited product falls within the scope of a copyrighted work. This applies, in particular, to an international trade fair, which is characterized by the fact that exhibitors from various countries are addressing domestic and foreign customers. This decision is in line with the above mentioned earlier decisions, which as a result seem to indicate a trend to a more restrictive assessment of intellectual property infringements on trade fairs. However, while the Federal Court of Justice until now has not issued a corresponding judgment in a patent infringement case, according to settled case law of the Higher Regional Courts the presentation of a product at a domestic trade fair constitutes an offer within the meaning of Sec. 9(2) No. 1 German Patent Act, unless the trade fair is a mere performance show. It remains to be seen whether the Federal Court of Justice will expand the above considerations also to corresponding patent infringement cases.
Nevertheless, it shall be noted that also in the above mentioned case regarding the Mart-Stam-Chair the infringement claim was legitimate as regards the distribution (Verbreiten) and bringing to public (Öffentlich-Zugänglichmachen) of the pictures of the chairs in catalogues. Thus, exhibitors and right holders participating in German trade fairs in the future should carefully consider the above, in particular the exhibitor should avoid to hand out or present on the exhibition stand catalogues and advertisement material containing the respective potential infringing product, while in contrast, the right holder should specifically look for respective materials because he might not be able to claim infringement due to the mere exhibition of the product itself.
On 16 December 2015, Directive 2015/2436 of the European Parliament and the Council to harmonize the laws of the Member States relating to trade marks (the “Directive”) was adopted. The harmonization of the national trademark systems provided for in the Directive must be largely implemented into national law by the member states by 14 January 2019. In the meantime, the draft bill (subsequently also “MarkenG-E”) for the necessary amendments to the German Trademark Act has been submitted.
The main objective of the Directive is the balanced coexistence of European Union and national trademarks, which are to be strengthened in their respective autonomy and at the same time co-exist side by side. In addition, the Directive and its national implementation should also provide trademark owners with more effective mechanisms to combat product piracy.
It is not yet clear when the amendment to the Trademark Act, which is now available in the draft bill, will enter into force. However, there are indications
that this will be the case even before the expiry of the transposition deadline of
14 January 2019.
The draft bill provides in particular for the following amendments to the Trademark Act, which are of special significance for trademark owners and applicants:
Section 8 para. 1 MarkenG-E provides that the graphic representation of a trademark is no longer a prerequisite for protection in the future. It is sufficient (but also necessary) that the German Patent and Trademark Office (GPTO) and the public can “clearly and unambiguously determine” the subject matter of trademark protection. This means that, following the entry into force of the amendment to the law, it is also possible to apply for trade marks in particular for signs that are reproduced in audio or image file formats, such as acoustic signs or image sequences.
The catalogue of absolute grounds for refusal is to be extended under the draft bill. The most important extension of this provision is that signs which include geographical indications of origin, indications of origin, traditional designations for wines, designations of traditional specialties or variety denominations can no longer be protected as trademarks, Section 8 Para 2 Nos. 9 – 12 MarkenG-E.
New Section 14 Para. 3 No. 5 MarkenG-E clarifies that the use of a protected trademark as a trade name or company name constitutes an infringement of a trademark if the trade name or company name is used for similar goods or services. In addition to the implementation of the requirements of the Directive, this amendment also corresponds to the approach that has been applied in German case law for many years with regard to the infringement of trademarks by trade names or company names.
The position of trademark owners is considerably strengthened by the new regulation provided for in Section 14a MarkenG-E. This explicitly extends the protection of trademarks to goods in transit, i. e., to potentially infringing goods originating from a third country and being destined for a market outside Germany. So far, legal options of trademark owners in Germany were limited and they were ultimately referred to legal action in the country of origin or destination. In the case of clear trademark infringements (i.e. if the sign is used on the goods is identical or highly similar to the trademark) the new regulation provides for a two-stage procedure.
In the first stage, German customs authorities can detain the goods in question, even if they are not to be placed on the market in Germany but in another country. If the declarant does not object to the detention of the goods, they shall be destroyed under customs’ supervision.
If the declarant objects, it is the declarant’s burden to prove in court that the goods concerned are intended to be lawfully put onto the market in a third country (e.g. because the trademark owner does not have trademark protection in that country, the declarant is a licensee or owns an earlier trademark).
Under the current version of the Trademark Act, licensees are only permitted to take legal action against third parties for infringement of the licensed trademark if the trademark owner has consented to this. Section 30 Para. 3 clause 2 MarkenG-E provides that licensees may, even without the consent of the trademark owner, bring an action for infringement of the licensed trademark if the trademark owner has not brought an action for infringement within a reasonable period of time after the “formal request” by the licensee.
New Section 30 Para. 6 MarkenG-E provides for a registration of licenses in the GPTO’s register.
The amendment provided for in Section 37 Para. 6 MarkenG-E creates the right for individuals and legal entities as well as associations of manufacturers, producers, service providers, traders and consumers to file observations against trademarks of third parties at the GPTO in order to prevent these trademarks from being registered. This is likely to affect in particular those applications claiming protection for a term being common for a specialized public. However, the wording of the draft bill also makes it clear that there is no obligation on the GPTO to actually take into account the comments of third parties in the registration decision.
Under new Section 42 Para. 1 clause 2 MarkenG-E, proprietors of protected designations of origin or protected geographical indications may object to trademark registrations.
Sections 53 – 55 MarkenG-E provide for a significant change in the procedure for
declaring revocation or invalidity of trademarks. So far, only requests for invalidation of a trademark due to absolute grounds (e. g. lack of distinctive character) could be filed in an administrative proceeding at the GPTO. Revocation requests based on lack of genuine use of a trademark or its invalidation due to relative grounds had to be brought in regular court proceedings which in many cases involved considerable time and expense.
Under the new regulations provided for in the draft bill all requests for invalidation or revocation of trademarks can be filed with the GPTO. The German proceedings thus are harmonized with the current proceedings for EU trademarks.
Third parties having been sued on the basis of a trademark against which proceedings for revocation or invalidation are pending at the GPTO may also join these proceedings.
New Sections 106a – 106h MarkenG-E introduce a new type of trademark, namely the so-called “Gewährleistungsmarke” (guarantee or certification mark) into German trademark law. In contrast to the existing types of trade mark whose primary function is to identify the origin of a product or service from the trade mark owner (“origin function”), the function of the guarantee or certification mark is to have certain characteristics of the product marked with the guarantee or certification mark (“guarantee function”) guaranteed by an independent party, i.e. the proprietor of the guarantee or certification mark.
Apart from other filing requirements (such as the filing of a statute and further information on the scope of the warranty with the application), guarantee or certification marks can only be applied for by applicants who do not engage in any activity involving the supply or provision of goods or services for which there is a guarantee. This restriction is intended to ensure that the guarantee or certification mark functions as an independent identifier for certain product properties.
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