In the issue 8-9/2023 of “GRUR-RR – Gewerblicher Rechtsschutz und Urheberrecht, Rechtsprechungs-Report”, BOEHMERT & BOEHMERT lawyer Dr. Julian Wernicke discusses the judgement of the OLG Düsseldorf of 27.04.2023 (case: 20 U 41/22) on the distinction between the use of a trade mark and the use of a purely descriptive sign.

Specifically, the question is whether the plaintiff’s trade mark “Eieiei” is infringed by the text “Ei, Ei, Ei, Ei, Ei” on packaging for egg liqueur. For this to be the case, the disputed sign would have to be used as a trade mark, i.e. the sign would have to contain an indication of the origin of the product. According to Dr. Julian Wernicke, the Düsseldorf Higher Regional Court was right to reject this and dismiss the action. The relevant public perceives the product presentation as a particularly catchy, keyword-like indication of ingredients (Ei is German for egg) or as an advertising campaign in the sense of a particularly strong expression of surprise (German expression: Ei, ei, ei).

You can read the complete judgement of the OLG Düsseldorf and the comment of Dr. Julian Wernicke in issue 8-9/2023 of GRUR-RR from page 349 or download the article as a registered user of Beck Online here.

In the recently published GRUR issue – Gewerblicher Rechtsschutz und Urheberrecht 12/2023, BOEHMERT & BOEHMERT lawyer Fabio Adinolfi sheds light on the shadowy existence of the trademark law protection of working titles among the trademark rights.

In doing so, he concentrates in detail on particularly practice-relevant questions in connection with the creation of protection as well as the likelihood of confusion with trademarks, among others. This is done with the aim of closing the gap left open by the lack of case law and legal literature.

In his comprehensive contribution, he examines the following aspects in detail:

1. the work title – definition and delimitation
2. the origin of title protection
3. expiry of title protection
4. enforcement of title protection rights

In conclusion, he comes to the conclusion that some relevant legal questions concerning title protection law, which is highly relevant in practice, are still open and that parts of the previous case law should be critically questioned. The latter would lead to a corresponding need for advice, especially as the popularity and reach of titles should not be underestimated.

Read the entire article (in German) by Fabio Adinolfi entitled “Der kennzeichenrechtliche Werktitelschutz – das Aschenputtel unter den Kennzeichenrechten“ in the 12/2023 issue of GRUR from page 858 onwards. Registered users of Beck-Online can download it here.

That inactivity can cost trademark protection is shown by the latest example of the German trademark Flip-Flop. The supplier of the light and airy footwear has now had to pay for its inaction in defending its own trademark protection rights by losing them. The Zweibrücken Higher Regional Court has ruled that the word mark, which has been registered in the trademark register since 1997, is subject to cancellation (Decision dated 02.03.2022 – 4 U 63/21). The designation “flip-flop” does not convey any indication of origin with regard to a specific company, but rather designates a type of footwear per se in linguistic usage.

In his guest article in Markenartikel 3/23, Fabio Adinolfi, attorney at law at BOEHMERT & BOEHMERT, analyzes the factors that led to the cancellation of the registered word mark, describes how this could have been prevented, and provides tips for trademark owners who could face a similar fate.

Read more in the print edition of the German magazine Markenartikel 3/23, which can be ordered here.

In issue 23/2022 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht, Praxis im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOHEMERT attorney Fabio Adinolfi discusses the judgment T-273/21 of the ECJ of 26.10.2022 on the right-preserving use of a 3D trademark.

With its judgment, the court overturned the previous decisions of the Cancellation Division and the Board of Appeal of the EUIPO. It recognized the registered shape of the used shape of a baby bottle for sweets without deviations. Also, the application of colored word marks and other figurative and word elements on the surface of the bottle did not interfere with the recognizability by consumers of the 3D mark, which was registered in Class 30 in 1999 without color.

Read the full discussion of the ECJ ruling by Fabio Adinolfi in issue 23/2022 of GRUR-Praxis. Registered users of Beck-Online can download the article in German here.

In his article “CJEU: EU trademark courts keep jurisdiction for counterclaims even if main action has been withdrawn” on the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney at law Fabio Adinolfi discusses a decision of the Court of Justice of the European Union (CJEU) in case C-256/21 of October 13, 2022, KP v. TV.

In it, the court clarifies that an EU trademark court still has jurisdiction to rule on the validity of a trademark in the context of a counterclaim even if the infringement action has been withdrawn.

The decision was issued in the context of a reference for a preliminary ruling from the Higher Regional Court of Munich and will avoid unnecessary proceedings with the risk of contradictory decisions in the future.

Registered users of WTR Daily can access the full article in English online here!