EPC: Amendments to rules for postal and electronic notification by the EPO

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Amendments to Rules 126(2), 127(2) and 131(2) EPC concern the postal and electronical notification by the European Patent Office (EPO), and the calculation of time periods triggered by a notification

 On 13 October 2022, the Administrative Council adopted changes to Rules 46, 49, 50, 57, 65, 82, 126, 127 and 131 of the Implementing Regulations to the European Patent Convention (CA/D 10/22). The amendments concern, inter alia, Rules 126(2), 127(2) and 131(2) EPC which relate to the notification of documents served by the EPO by postal services and by electronic means, and to the calculation of periods triggered by the notification. New Rules 126(2), 127(2) and 131(2) EPC enter into force on 1 November 2023 and apply to documents served by postal services or electronic means on or after that date.

These amendments remove the 10-day notification fiction according to the current Rules 126(2) EPC and 127(2) EPC, according to which a document is deemed to be served successfully on the tenth day after the date stated on the document, which is taken into account in calculating periods triggered by the notification of communications from the EPO. Instead, new Rules 126(2) and 127(2) EPC provide for a new notification fiction, according to which postal and electronic notification are deemed to occur on the date of the document. The EPO expects that the new notification fiction will result in a simplification for users since it brings the EPC and PCT notification regimes closer together.

Amended Rules 126(2) and 127(2) EPC also govern the burden of proof in exceptional cases in which notification of the documents is in dispute. As before, the EPO retains the obligation to prove the fact and the date of delivery in such instances. If the EPO is unable to prove that a document was delivered to the addressee within seven days of the date it bears, a so-called “safeguard” will be applied, resulting in that a period triggered by the deemed receipt of that document will be extended by the number of days by which these seven days are exceeded.  The general principles governing time-limit extensions set out in Rule 134 EPC will apply to the period recalculated applying this safeguard.

Rule 131(2) EPC has been adapted to the effect that the rule now explicitly refers to the fiction of notification of the documents as the relevant event for the purposes of time limit calculation.

Amended Rules 126(2), 127(2) and 131(2) EPC are intended to take into account the principle of instantaneous notification in the digital world. The EPO mailbox is deemed a reliable service available to all professional representatives and applicants in the EPC contracting states and covering 99% (by volume) of all documents issued by the EPO. For applicants and representatives, new Rules 126(2), 127(2) and 131(2) EPC impose a change in the practice of recording time limits and thus also the training of staff, in particular with regard to the handling of exceptional cases in which notification of the documents is in dispute, even if the latter are unlikely to occur in daily practice.

Important URLs:

https://www.epo.org/law-practice/legal-texts/official-journal/2023/03/a29.html

https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a101.html

Termination of the Swiss-German Agreement of 1892 – what trademark owners have to consider

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Effective May 31, 2022, Germany has terminated the “Agreement between Switzerland and Germany Concerning the Reciprocal Protection of Patents, Designs and Trademarks” of 1892. For more than 100 years, this bilateral Agreement had provided for facilitations for owners of industrial property rights in the territory of the respective other contracting party. The exact reasons for the termination are not known, but the Agreement had already been criticized for some time as being outdated.

Termination of the Agreement particularly significant for trademark owners

The most important practical relevance of the German-Swiss Agreement was in the field of trademark law and here in considerable simplifications in the proof of genuine use of trademarks in revocation proceedings. Under both German and Swiss trademark law, the requirement of proof of genuine use of a trademark for the registered goods and services aplies five years after registration or after expiration of the opposition period. As a matter of principle, only those acts of use are considered to be relevant which took place in the respective territory – i.e. in Germany in the case of German trademarks and in Switzerland in the case of Swiss trademarks. This principle was modified by the German-Swiss Agreement to the extent that acts of use in the territory of the respective other party were also recognized as a suitable basis for genuine use. Thus, a Swiss trademark could be successfully defended against an application for revocation although it had not been used in Switzerland at all, but only had been used in Germany for the relevant goods and services, and vice versa. This modification of the principle of territoriality ceases to apply with the termination of the German-Swiss Agreement.

Relevance in terms of timing

The termination of the German-Swiss Agreement takes place ex-nunc, i.e. there is no retroactive effect of termination of the Agreement. Although much is still unclear in detail, there are indications that it will still be possible to rely on acts of use in the territory of the other party during the relevant period of the past five years, but only with regard to such acts of use until May 31, 2022. The full relevance of the termination of the Agreement will therefore only unfold after May 31, 2027, when all acts of use in the territory of the other party are outside the five-year period.

Considerations for the trademark strategy

Owners of German or Swiss trademarks who can only show use in the respective other part must prepare themselves for a deterioration of the use situation. It is particularly advisable to check the trademark portfolio for possible new applications for the respective trademarks (as far as permissible from the point of view of repeat applications) in order to maintain trademark protection.

ECJ declares German court practice regarding the (non-)granting of preliminary injunctions arising from patents to be contrary to European law

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As already reported in a June 2021 article in our B&B Bulletin, the Munich Regional Court has asked the European Court of Justice (ECJ) to rule on whether the German court practice regarding preliminary injunctions in cases of patent infringement is compatible with European law.

The issue here is that German higher regional courts (most recently including the Munich Higher Regional Court) regularly refuse to issue a preliminary injunction on the grounds of patent infringement if the validity of the patent in question has not already been confirmed in opposition or nullity proceedings. In this case, the successful examination procedure before the German Patent and Trademark Office or the European Patent Office is not considered sufficient to assume that the legal validity of the patent is certain. As a consequence, patent owners were regularly unable to obtain a preliminary injunction against an infringer unless third parties had previously (unsuccessfully) attacked the patent in question Therefore, this possibility of legal action ultimately depended on factors over which the patent owner had no control.

In view of the fact that the effect of a patent takes effect upon grant, the Munich Regional Court considered this practice to violate the right of the patent proprietor to effective interim measures, which arises from Union law (namely Directive 2004/48). At the same time, in the case on which the decision was based, the Munich Regional Court saw itself prevented by the binding effect of case law of the Munich Higher Regional Court from issuing a preliminary injunction, although it assumed both patent infringement and validity of the patent.

This situation prompted the Munich Regional Court to submit the practice of the Munich Higher Regional Court (and other higher regional courts) to review by the ECJ. In its judgment of April 28, 2022 (Case C-44/21), the ECJ has now clarified that a court practice is incompatible with European law whereby the grant of interim measures for infringement of patents is in principle refused if validity of the patent in question has not been confirmed at least in first instance opposition or nullity proceedings.

Furthermore, the ECJ clarified that national courts are obliged to modify any established case law contrary to this assessment, if necessary. In particular, the Munich Regional Court must not apply national case law that is incompatible with the ruling.

In principle, the ECJ thus significantly strengthens the rights of patent owners in preliminary injunction proceedings before the German courts. However, it remains to be seen how this will be reflected in judicial practice.

Intellectual property updates in light of the ongoing war in Ukraine

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For more than two months now, a fierce war has evolved between Russia and Ukraine. We observe the developments in Ukraine with great concern, and sincerely hope that the Russian aggression can be stopped as soon as possible.

It may seem inappropriate to consider the effects of war on intellectual property developments, in light of ongoing reports about crimes committed in the Ukraine, and in light of devastating news and pictures that reach us. Still, certain effects on IP exist, and we believe that providing a brief summary of these on this site is appropriate.

The International Trademark Association (INTA) has summarized some of the effects the war had on intellectual property practice (https://www.inta.org/resources/the-status-of-intellectual-property-in-russia-and-ukraine/; updated April 8, 2022). Some excerpts from the information conveyed by INTA:

Ukraine

  • “The Ukrainian IP Office (Ukrpatent) continues to work. The Patent Board of Appeals has suspended operations.”
  • “It is not currently possible to send or receive original hard copy (paper) documents to / from Ukrpatent. The online filing system remains in operational and official fees can still be paid to Ukrpatent”
  • “The Ukrainian Parliament passed a law ‘On Protection of Interests of Intellectual Property in Martial Law’ (Law No 7228) on April 1, 2022. According to the new law, the duration of terms related to the protection of IP rights, as well as deadlines for procedures for acquiring these rights, are suspended. The law allows authorized persons to submit documents within 90 days of the abolition of martial law, without paying a fee for extension, or restoration of the relevant deadlines. Martial law was declared in Ukraine on February 4, 2022, following the issue of Decree 64/2022, for a period of 30 days. On March 26, 2022, the Ukrainian Parliament voted to extend martial law for a further 30 days. It is expected to be extended again before the end of April 2022”

Russia

  • “The Russian IP Office (Rospatent) and the Eurasian Patent Office are operating as usual and have not announced any unusual extensions or reinstatements”
  • “Russia has issued new legislation regarding changes to its patent laws but has yet to officially revise its law regarding the treatment of trademarks. The recent ruling in the Peppa Pig case, in which a Russian court refused to enforce Peppa Pig’s rights in Russia due to the unfriendly actions of the UK against Russia, there is a de facto shift in treatment of trademarks via the courts and a likely mirror Rospatent’s policy based on recent filings for similar marks to famous marks from ‘unfriendly countries’“

European Union

  • “The European Union Intellectual Property Office (EUIPO) has halted all cooperation actions with Rospatent, and the Eurasian Patent Office (EAPO)”
  • “The EUIPO pledged support to Ukrainian users and issued a one-month extension of time limits (which began on February 24, 2022) in proceedings before the office for all parties that have a residence or a registered office in Ukraine”

United States

  • “On March 4, 2022, the USPTO announced that it will no longer engage with officials from either Rospatent or the Eurasian Patent Office”
  • “Effective March 11, 2022, the USPTO will no longer grant requests to participate in the Global Patent Prosecution Highway (GPPH) when such requests are based on work performed by Rospatent as an Office of Earlier Examination under the GPPH“
  • “The USPTO also warns that applicants filing international applications under the Patent Cooperation Treaty should be aware that selecting Rospatent as an International Searching Authority or International Preliminary Examining Authority, may not result in the successful processing of international applications under PCT, with relation to possible problems with the transmittal of fees through financial institutions“

The European Patent Office will increase its fees on a rotating basis as of April 1, 2022

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The EPO is striving to make online filing of application documents the standard format. To make this more attractive, the EPO has made it possible to file in DOCX, the character-coded format.

In the future, the EPO will distinguish 3 cases for filing fees:

1. All application documents are filed online in character coded format. Then the official filing fee is only EUR 100.00.
2. The application is filed online, but at least one document is not in character-coded format. Then the filing fee is EUR 130.00.
3. Filing in paper form, with a filing fee of EUR 270.00.

It is therefore strongly recommended to ensure in the future that all application documents are filed in character-coded format in order to save official filing fees.

The chart on this page illustrates the development of filing fees in recent years. Reflected are the specific filing fees for online (red line) and paper (dashed red) filings since 2006, as well as the new filing fee incurred for online filings with only one non-character-coded document, since 2020 (dashed and dotted red). As expected, all fees have increased over the period, with one exception: since the introduction of online filing with one non-character-coded document, the amount for online filing has decreased significantly in 2020.

Accordingly, official fees can be saved if all application documents are filed in a character coded format. It is to be noted, though, that character coded files, contrary to raster formats (PDF) could easily be modified without identifying such changes afterwards. Furthermore, a consistent representation of special characters and formulas is ensured with raster formats only. It may be advisable to file documents additionally in a raster format; the slightly higher fee of EUR 130 applies.

The graph also shows the percentage change in the online submission fee from the last change (dashed and dotted blue). The significant 20 percent decrease in 2020 is clearly shown. Also shown is the inflation rate in Germany (dashed blue). As can be clearly seen, changes in fees have been at significantly higher levels than the inflation rate, ranging from 2 to 10 percent from 2008 to 2017 compared to inflation values between 0 and 2 percent. This picture has changed significantly, at least temporarily, since the introduction of online submission with one non-character-coded document in 2020: the sharp drop of 20 percent corrects the old trend. However, with the latest change, the EPO returns to a rate above 5 percent, although here the inflation rate to be contrasted is not yet known. Hopefully, future fee changes will stop the trend and remain below the rate of inflation.

 

Graphic: Development of filing fees

UPC: Changes to the legal framework for action against cross-border supply chains

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Strategic thoughts on contributory patent infringement ahead of the entry into force of the Agreement on a Unified Patent Court

The legal framework for actions against cross-border supply chains in Europe that precede the use of a patented object will change significantly with the forthcoming entry into force of the Agreement on a Unified Patent Court (UPC).

The current legal framework

Under the current legal framework, European patents unfold their protective effect at national level. Owners of a granted European or national patent can ban third parties from using the patented object within the territory of a country in which the patent is in force. In practice, this means that in the event of cross-border patent infringement, infringers can only be sued in individual countries and usually are only made accountable for actions taking place in the country in which the infringement lawsuit is filed. There is currently no possibility of centrally enforcing a patent for the whole of Europe.

This territoriality principle of European patents is about to change with the entry into force of the Unified Patent Court (UPC), expected in mid-2022. The UPC creates a new legal framework in which European patents granted by the European Patent Office can be validated as so-called “unitary patents” which have unitary effect throughout the UPC territory.

The legal instrument of contributory patent infringement allows a patent proprietor to prohibit the use of means which constitute no patent infringement by themselves, but which are suitable and intended for the use of the patented invention. For example, if a patent protects a device G that must have elements A, B and C, the patent proprietor can sue a competitor M who manufactures, offers, introduces into the market or either imports or possesses for these purposes a device having all three elements A, B and C, which are essential for the invention G, for direct patent infringement. Furthermore, a supplier L of the competitor M who supplies the element C to the competitor M and thereby makes the patent infringement possible, is also liable for contributory infringement and can be sued by the patent owner.

Under the current legal framework of most European jurisdictions, a claim against the supplier L in this example case is subject to a double territorial requirement: A contributory patent infringement by supplier L must be assumed if both the supply or offer of element C to competitor M and the subsequent (direct) patent infringement by competitor M, e.g. manufacture or marketing of device G with elements A, B and C, take place in the “domestic territory” of the patent-protected jurisdiction (cf. Sec. 10(1) Patent Act, Art. 60(2) of the UK Patent Act or Art. L613-4 of the French Patent Act). As a rule, contributory patent infringement must be discarded due to lack of this double territorial requirement if the transfer of element C to competitor M or the marketing or manufacture of device G by the competitor M takes place abroad.

For owners of a patent with effect in Germany, i.e. of a European patent in force in Germany or of a German national patent, the case law of the German Federal Court of Justice dictates a patent proprietor-friendly approach to the double territorial requirement: Accordingly, a contributory patent infringement can also be assumed when a supplier L supplies elements C to a competitor M if this competitor M manufactures the patent-protected device G – using the elements C supplied by L – with the elements A, B and C, be it abroad or in Germany, to subsequently offer or market the device G in Germany (BGH 30. 01.2007 X ZR 53/04 – Funkuhr II). As long as the competitor M ultimately implements a direct patent infringement in Germany, cases in which the supplier L is located abroad and offers or supplies from there to Germany, and even cases in which the supplier only acts abroad but knowing that the destination of the supplied means is Germany, are also covered (BGH 03.02.2015 X ZR 69/13 – Audiosignalcodierung).

With the above-mentioned decisions, the German Federal Court of Justice weakened the double territorial requirement for contributory patent infringement in Germany for the benefit of patent holders. In practice, this means that owners of patents with effect in Germany can take action against domestic or foreign suppliers of a domestic or foreign competitor who sells or offers the patented product in Germany, even if the patented product is assembled or manufactured abroad.

However, cases in which the competitor M ships the patented product to a third European country are in any case not covered. In such cases, the patent holder cannot currently take any action against the supplier L before the German courts. For example, a German supplier L who provides element C, for example, to a Romanian competitor who manufactures the German-patented device G (with elements A, B and C) in Romania, for example, and sells it in Italy, cannot currently be held accountable before the German courts.

The new legal framework

The relevant territorial criteria for contributory patent infringement will change significantly with the entry into force of the UPC.

For contributory patent infringement under the UPC, the term “domestic territory” of the respective national patent law will be replaced by the term “territory of the contracting member states” (cf. Art. 26(1) UPC Agreement). Accordingly, contributory patent infringement will not require a double domestic relation to a single state. Instead, the new legal framework for contributory patent infringement in Europe will only require that both the supply or offer and the subsequent direct patent infringement take place within the borders of the UPC territory. Under the UPC, delivery/offer and patent-infringing use of the delivered/offered means may thus take place in different UPC states.

For our example case (German supplier delivers element C to Romanian competitor who purchases C, uses it to manufacture G and sells the patented device G in Italy) both the delivery and the sale of the patented product G take place within the “territory of the contracting member states”, as Germany, Italy and Romania are all member states of the UPC. In this respect, the owner of a unitary patent in this example case could not only enforce their patent against the competitor M for direct infringement, but also against the supplier L for contributory infringement.

Thus, from the entry into force of the UPC, it will become possible for patent owners to take action against cross-border supply chains within Europe, which do not constitute an act of infringement under the current legal framework.

The 24 member states of the Unified Patent Court Agreement are: Austria, Belgium, Bulgaria, Cyprus, Technical Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovakia, Slovenia and Sweden. These states will form a territorial unit according to the UPC.

The EU states that are not part of the Convention are: Croatia, Poland and Spain. Other UPC states that are not EU states and therefore not part of the Convention are: Iceland, Norway, the United Kingdom, Switzerland, Turkey, Serbia, Albania, Montenegro, and Northern Macedonia.

The new strategic role of German national patents

The new UPC courts, under the lead of the central Board of Appeal in Luxembourg, will have to develop their own case law on all relevant issues of substantive patent law over time. It initially remains uncertain whether and, if so, to what extent the principles developed in German case law on contributory patent infringement will be adopted by the UPC courts. In view of the strong role that German judges and courts are expected to play in the new system, this is a realistic possibility, but it cannot be assumed with certainty at this early stage.

The currently applicable national legal standard of contributory patent infringement, which in Germany relies on Sec. 10(1) PatG, as well as the German case law applicable to it, will continue to be valid for German national patents in any case. This applies in particular to the above-mentioned – rather patent owner-friendly – extended concept of “domestic territory” for contributory patent infringement, which is applied by the German courts, mainly in the light of the decisions Funkuhr II and Audiosignalcodierung of the German Federal Court of Justice.

In practice, this means that European unitary patents and German national patents will cover different cases of contributory patent infringement from the entry into force of the UPC.

It should also be emphasised that the prohibition of double protection (Art. II § 8 IntPatÜG) will be abolished for unitary patents with the effect that patentees will be entitled to protect the same invention simultaneously by a European unitary patent and by a German national patent, even with identical patent claims. This possibility paves the way for new strategic considerations for patent proprietors who want to optimise their legal position.

Holders of a European unitary patent will be able to take action against suppliers based in a first UPC state who provide essential elements of the protected invention to a manufacturer or seller of a patented product based in a second UPC state. The first and second UPC states may be the same state or different states.

However, it is currently uncertain whether a European unitary patent will allow taking action against supply chains that take place at least partly outside the UPC territory ahead of a direct patent infringement in the UPC territory, for example, if a supplier delivers to a manufacturer or seller located outside the UPC territory, for example, in the United Kingdom, Spain or China, even if the latter later goes on to use the patented product within the UPC territory directly infringing the patent.

For owners of German national patents – or of German utility models – it will continue to be possible to take action against suppliers of a competitor who uses a patented product in Germany in the cases covered by the extended concept of domestic territory defined by the German case law. For example, it will still be possible for owners of a German national patent to take action against a supplier based in Germany who, according to our example, supplies element C to a competitor based in Spain, the United Kingdom or China who manufactures the patented device there to then re-import it into Germany. The same applies to a supplier located in Spain, the United Kingdom or China, for example, who supplies element C to a competitor located in Germany or elsewhere, who then sends the patented device G to Germany.

Conclusion

European unitary patents and German national patents may cover different cases of contributory patent infringement from the entry into force of the UPC, at least while the UPC courts develop their own case law.

All actors operating on the European market, in particular patent proprietors and potential patent infringers, are well advised to develop their own strategy taking into account the new legal framework in view of the new risks and opportunities.

Patent owners with important economic interests in Germany who want to remain capable of acting against the suppliers of their competitors should ideally complement the protection conferred by European unitary patents with parallel German national patents. For existing European patent applications, the option of branching off a German utility model may be worth considering.

Further details on the European Unitary Patent and the Unified Patent Court can be found at  https://www.boehmert.de/en/news-knowledge/upc-update/detail/getting-your-patent-portfolio-ready-for-the-upc/ /.

Cologne Regional Court affirms the eligibility of sandals for copyright protection

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In preliminary injunction proceedings, the Regional Court of Cologne rules in favour of a shoe manufacturer and affirms the eligibility of sandals for copyright protection.

By order of 30 December 2021, the Regional Court of Cologne provisionally decided in preliminary injunction proceedings that a total of four sandal models of a well-known shoe manufacturer enjoy copyright protection and may no longer be offered or marketed by the defendants offering similar shoe models (see order of the Regional Court of Cologne of 30 December 2021, ref. no. 14 O 419/21).

Decision of the court

The defendants offered the shoe models in dispute in their online shop and put them on the market by sending them to buyers in the Federal Republic of Germany. Through a test purchase in the judicial district of Cologne’s Regional Court, the case finally became pending before this court.

The court assumed that the four sandal models were works of applied art protected by copyright under Section 2 (1) no. 4 UrhG. In doing so, the Board relied significantly on the “Birthday Train” decision of the Federal Court of Justice of 13 November 2013 (Case No. I ZR 143/12) and assumed that the shoe models each reached a level of design that justified copyright protection. The decision literally states:

“Each of the plaintiff’s shoes, which are to be regarded as articles of daily use, displays a considerable artistic design which rises over and above the form dictated by the function.”

In doing so, the court assumed that the designs of the straps or the upper side of the shoe, the sole, the thorn buckle, the profile, the more or less undisguised lateral cut of the sole, the absence of stitching and ornamentation, the lines as well as the respective diverging minimalist shapes were sufficiently individual and artistic.

The injunction court was convinced that the plaintiff was able to credibly demonstrate, taking into account an expert opinion, that the creator had used an existing scope of design in the development that was sufficiently different from the market environment at the time of creation.

Finally, the court concluded that the challenged copies are almost identical reproductions, despite the affixing of different trademarks.

Although a protective letter was filed, the court issued the requested interim injunction without an oral hearing. The requested order for a security deposit was rejected with the argument that the defendant’s offer, according to its own statement, is not directed at customers in the Federal Republic of Germany.

Conclusion

The decision breaks with the previous practice according to which fashion creations only enjoy copyright protection in absolute exceptional cases. Although the “Birthday Train” decision of the Federal Court of Justice put an end to the different requirements for copyright protection for works of visual and applied art, it is more than questionable whether shoe models, even if they have a certain degree of fame, actually cross the threshold for copyright protection.

Since these are “only” preliminary injunction proceedings, it cannot be ruled out that the Cologne Higher Regional Court will assess the eligibility for copyright protection differently. If the case goes to the main proceedings, it will probably be the Federal Court of Justice which will ultimately have to have the final say here and explain whether the interpretation of its decision from 2013 – and taking into account the ECJ case law on fashion creations that has since been handed down – really goes as far as the Cologne Regional Court has now assumed.

Higher Regional Court of Düsseldorf: Attribution of redesign measures by customers after the “Garage Door” decision

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Introduction

Claiming a direct patent infringement (Sec. 9 Patent Act) is generally easier for the patent proprietor than claiming an indirect patent infringement (Sec. 10 Patent Act), because the latter is subject to additional requirements. Direct infringement is also legally more favorable for the patent proprietor than indirect infringement, because the latter does not neccessarily grant unconditional injunctive relief, particularly in the case of possible non-infringing use of the attacked embodiment, but rather the infringer is not subject to the injunction if certain obligations are complied with.

In case of doubt, a patent owner will therefore want to try to assert a direct infringement instead of an indirect infringement.

Direct infringement of a product claim under Sec. 9 Patent Act, however, generally requires that the attacked embodiment realizes all features of the claim. If this is not the case, indirect infringement can only be considered under the additional conditions of Sec. 10 Patent Act, as stated.

Exceptions in the case law

However, case law has already made exceptions to this in the past and has assumed direct infringement under certain conditions even if not all features of a product claim are realized and the realization of the missing features only occurs on the customer side, for example in case the realization of the missing features only requires the addition of non-essential parts or the mere combination of successively supplied parts (cf. for example Regional Court of Düsseldorf, judgment of 5.2.2004, Ref. 4b O 388/03, BeckRS 2006, 4947; Regional Court of Düsseldorf, judgment of 5.8.2008, Ref. 4a O 220/07, BeckRS 2012, 5045).

In 2011, the Higher Regional Court of Düsseldorf had finally substantiated the legal grounds of this result and referred to the former variant with the now generally known catchword “all-round ingredient”. According to this decision, the decisive factor is whether the supplier of a contested embodiment expects or instructs the addition of this ingredient (see Higher Regional Court of Düsseldorf, judgment of February 24, 2011, Ref. 2 U 122/09, BeckRS 2011, 8375).

This and several other subsequent decisions dealt with the addition of a further subject matter or ingredient on the part of the customer for the complete realization of the patent claim, for example, water to a heatable floor for livestock stables (cf. Higher Regional Court of Düsseldorf, judgment of 19.7.2018, Ref. 15 U 43/15, GRUR-RS 2018, 22632) or the provision of a commercially available PC for installing the software essential to the invention thereon (cf. Higher Regional Court of Düsseldorf, judgment of 2.4.2017, Ref. I-2 U 23/14 GRUR-RS 2017, 109820).

Other decisions transferred this case law to those software-related cases in which the challenged embodiment can be modified on the side of the buyers in such a way that it fulfills the missing features (cf. Higher Regional Court of Düsseldorf, judgement of 19.2.2015, Ref. I-15 U 39/14, GRUR-RR 2016, 97; Higher Regional Court of Munich, decision of 9.4.2019, Ref. 6 U 4653/18, GRUR-RS 2019, 41076; Higher Regional Court of Düsseldorf, judgement of 16.4.2020, Ref. I-2 U 15/19, GRUR-RR 2020, 289).

Decision “Garage Door”

In the decision with the keyword “Garagentor” / “Garage Door” (judgement of 22.7.2021, Ref. 2 U 58/20, GRUR-RR 2021, 429), the Higher Regional Court of Düsseldorf now also transfers these principles to cases in which a direct patent infringement is only constituted when the customer removes a physical component from the attacked embodiment.

The requirements formulated in the above cited case law are adopted. Accordingly, it must first be assumed that the customer carries out a modification that leads to the realization of all features of the asserted patent claim, and that this is attributable to the defendant. Such an attribution is to be considered, for example, if the defendant has – expressly or impliedly – directed this transformation as the last act of manufacture or has at least consciously exploited the fact that customers will proceed with such a transformation for his own benefit (marginal no. 98). This requires precise presentation of according facts (marginal no. 99) and the rules on delay must be observed (marginal no. 100).

To the author’s knowledge, leave for appeals are currently pending against both the “Garage Door” decision and the above cited decision GRUR-RR 2020, 289 (decision keyword “Repeater”) with the Federal Court of Justice (Ref. X ZR 48/20 and X ZR 72/21, respectively). The Federal Court of Justice will therefore have the opportunity to set the course for practice in these and comparable cases.

Stuttgart Higher Regional Court rules on a claimed copyright infringement of “Happy Birthday” by modified radio spot

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The OLG Stuttgart has ruled that the mere adoption of the words “Happy Birthday” as well as the use of an only slightly modified original melody does not constitute copyright infringement (OLG Stuttgart, judgment of 28 October 2020 and rectification order of 17 March 2021 – 4 U 656/19).

Background

The dispute began with the 50th anniversary of a cooperative association of electronics retailers. For this occasion, the association broadcasted a radio spot in which the modified words “Zum Geburtstag für dich” (“Happy birthday for you”) were sung to the tune of the well-known birthday song “Zum Geburtstag viel Glück” (“Happy birthday to you”).

The association was then issued with a warning letter by a publishing house. The publisher claimed that this was an infringement of the processing copyright to which he was entitled (§ 3 UrhG), since he was the legal successor to the author of the German song “Zum Geburtstag viel Glück”. This song is essentially based on the American version “Happy Birthday to you”. The original American version of the song has been in the public domain in Germany since 2016 and can, therefore, be used freely by anyone. However, exclusive rights are also granted to anyone who creatively modifies such a “free” work.

The Regional Court of Stuttgart (LG) rejected a copyright infringement (LG Stuttgart, judgement of 10.09.2019, ref. 17 O 384/19). Even if there was a copyright in the lyrics and melody, this was not infringed by the association.

The Stuttgart Higher Regional Court (OLG) has now confirmed this decision.

Decision of the OLG

The OLG agreed with the Regional Court and also found that a possible infringement with regard to the lyrics and the melody had to be assessed separately. Even if the two are directly connected and exploited together, they are separate works within the meaning of copyright law.

The key to determine whether a work is protected by copyright is to establish that it was a personal intellectual creation. It is particularly important that the individuality of the creator is expressed in the work. These principles also apply to adaptations of other works. Only in cases where the adaptation itself constitutes a personal intellectual creation can the adaptor be entitled to his or her own (adaptor’s) copyright.

Everyday language and literal translations are not eligible for protection

The OLG did suggest that the text of “Happy Birthday” might be sufficiently individual and thus enjoy copyright protection. However, according to the OLG, this was not the issue in the case at hand.

In the radio spot, only the words “Happy Birthday” were taken over from the original version. Admittedly, the adoption of mere parts of a work could also constitute an act of infringement. However, it was important that the part taken over had the character of a work in itself. Unprotected parts of the text, on the other hand, could be taken and published in an altered form.

Above all, mundane lines of text which are generally linguistic terms without any particular originality or level of creation, or very short parts of the lyrics of individual songs remain unprotected (cf. marg. no. 104). In the case of “Zum Geburtstag”, it was only a matter of two words which, as a brief sequence of words, originated in general language and did not convey any particular thought or emotional content. Copyright protection was also not justified by the fact that the words in question were repeated several times (see para. 106). The adoption of the two words, therefore, did not constitute an infringement of copyright.

The translation of the original English text “Happy Birthday to you” into German did not result in anything different. In principle, a translation could also enjoy copyright protection. The decisive factor here was whether the translator had used the creative leeway available to him in an imaginative way. This might be the case with the translation of “Happy Birthday to you” as “Happy Birthday”, as it was not a strictly literal translation (cf. para. 109). However, here again only the part of the text actually taken over was to be taken into account. A translation from “Birthday to you” to “Zum Geburtstag” was more of a routine translation without any leeway of its own. Thus, the court came to the conclusion that only an unprotectable part had been taken over, also with regard to the translation.

Overall character is crucial

The OLG also found no copyright infringement with regard to the melody. Although the so-called “small coin” is also protected in musical works, the standard for the level of creativity should not be set too low here either. This principle also applies to adaptations. In this context, such changes were not protected by copyright if they were merely in the realm of craftsmanship and left the original character of the piece unchanged. In the present case, the arranger had merely adapted the original melody to the German text version. However, the “overall impression of a simple, clear, popular melody which spreads a cheerful mood” was not affected by the changes made (para. 129). Thus, the edited melody did not enjoy copyright protection.

On the other hand, it is irrelevant for the assessment of copyright protection whether the piece is registered with GEMA. Such registration takes place without prior examination.

Conclusion

As the decision has once again shown, it is difficult to find clear abstract criteria for determining when a work is protected by copyright. Rather, a multitude of criteria and the actual circumstances of the individual case are decisive for the assessment. This makes it almost impossible for creators to judge whether they may freely use certain works or parts thereof without obtaining legal advice.

However, the ruling also makes it clear that the threshold of the required level of creativity – also and especially when it comes to the adaptation of other works – must not be set too low at the same time.

Promotion in the EU, liability in Germany? – News on cross-border trademark infringements

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The worldwide availability of offers and ordering options is one of the great achievements of online commerce. However, the expansion of the territorial reach can also be accompanied by an expansion of liability for the infringement of intellectual property rights. The operator of an online store in another EU country has now had to learn this before the Frankfurt Higher Regional Court (judgment of March 11, 2021 – 6 U 273/19).

The store operator had – at a time when the United Kingdom had not yet left the EU – promoted a product in his Northern Irish online store under the MO trademark, which is protected in Germany for identical goods, whereby this trademark was not reproduced on the product itself or its packaging. The online store was exclusively available in English under an address with the top-level domain .co.uk and the currency was exclusively the British pound. However, the store operator advertised a “worldwide shipping” of the offered goods. A test purchaser of the owner of the MO trademark ordered the product advertised in the online store under the sign MO to Germany and the store operator delivered. Subsequently, the trademark owner and the store operator disputed whether the delivery to Germany of the product advertised in the Northern Irish online store under the sign MO constituted an infringement of the German trademark MO, if the sign MO was not used on the product itself or its packaging.

The Higher Regional Court of Frankfurt am Main overturned the decision of the first instance and found a trademark infringement. According to the judges, the mere fact that the product promoted on the Northern Irish website was delivered to Germany was sufficient to establish a sufficient “commercial effect” for an international jurisdiction of German courts and a trademark infringement in Germany. The fact that the disputed designation MO was not even reproduced on the product itself or its packaging did not seem to matter to the court.

The decision, which has become final and binding, could be the starting point for an expansion of the liability of operators of foreign online stores in Germany. Although scenarios of trademark infringements through cross-border acts of use on the Internet have been discussed in various decisions, case law has so far endeavored to set rather narrow limits here. In several decisions, the German Federal Court of Justice (BGH GRUR 2005, 431 – Hotel Maritime; GRUR 2012, 621 – Oscar) required that the infringing acts be clearly aimed at the German public or the German market, which could be expressed, among other things, in an offer in the German language, by providing German contact details or by accepting German currency. It remains to be seen to what extent the current decision of the Frankfurt Higher Regional Court is the start of a shift of paradigm. In any case, operators of online stores in other EU countries, as well as operators of German online stores that ship throughout the EU, should be aware that the EU internal market not only brings increased opportunities for sales, but also increased risks of trademark infringement, even if measures have been taken to reduce the risk in the goods offered, for example, by means of a neutral product presentation.

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