Dr Florian Schwab discusses in WTR Daily a recent judgement of the CJEU in the dispute about the protectability of the word/figurative mark “achtung!”

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On the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr Florian Schwab reports on a decision of the Court of Justice of the European Union according to which the EU part of the international registration of the word/figurative mark “achtung!” was refused protection.

The CJEU thereby confirmed the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO), which had already rejected international protection of the trademark “achtung!” in 2019 due to a lack of distinctive character. 

Dr Schwab summarizes the judgment as follows:
“The decision of the Court of Justice (ECJ) confirms the view of the previous instances that for the Union trademark part, an international registration of the word/figurative mark Achtung! of a German advertising agency for goods and services in various classes is devoid of distinctive character. The mark will be perceived by the German-speaking public only as an ordinary advertising message and not as an indication of commercial origin. Therefore, the finding of the lower courts that the mark is purely descriptive is in itself incorrect and irrelevant to the decision on the merits. Moreover, earlier conflicting decisions of national offices or even of the EUIPO on the identical sign do not preclude this”. 

The complete article in English is available here as a PDF document for download!

Dr. Eckhard Ratjen in an interview with the trade magazine “Tightly Packed” on the subject of “How do I protect a packaging?”

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In the jungle of offers of similar products, not only the brand serves potential customers as orientation, but also the packaging of a product. Consequently, their protection under trademark law is often very important. 

But how do you proceed when applying for registration of a packaging as a trademark? Which protection criteria must be fulfilled? And can any product packaging be protected as a trademark? 

BOEHMERT & BOEHMERT attorney Dr. Eckhard Ratjen addresses these and other questions as well as prominent case studies in his detailed interview with the trade magazine “Tightly Packed”. 

Read the complete interview here (temporarily only available in German)!

Silke Freund and Dr. Sebastian Engels contribute to the “International Comparative Legal Guide – Digital Business 2020“

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The Global Legal Group has published the first edition of the “International Comparative Legal Guide – Digital Business 2020”. The guide is aimed specifically at corporate attorneys and offers a comparative legal analysis of current legal requirements and topics for digital business. 

Under the heading “Digital Business Laws and Regulations – Germany”, BOEHMERT & BOEHMERT attorneys Silke Freund and Dr. Sebastian Engels provide an insight from a German perspective. 

In eleven chapters, they deal with regulations for e-commerce, data protection, cyber security, cultural norms, brand enforcement online, cloud computing and further digital topics. 

The complete article is available here online or as PDF.

Use of trademarks for re­seller websites

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It is settled case law that the use of a trademark in a domain name can constitute a “use as a trademark”. The Federal Court of Justice has now further defined the legal constraints for a use of such domain names by (re)sellers and thereby strengthened the rights of owners of well-known trademarks.

It is well established that the use of a trademark in a domain name that refers to a website offering goods or services covered by the trademark generally constitutes a trademark infringement.

It has, however, been a matter of dispute whether and to what extent sellers or resellers of branded goods are entitled to use domain names containing the trademark for their websites and online shops. The German Federal Supreme Court has now defined the criteria for the admissibility of such use in relation to well-known trademarks in more detail, thereby strengthening the rights of the owners of well-known trademarks (BGH, judgement of June 28, 2018 – I ZR 236/16 – keine-vorwerk-vertretung).

In the case in question, the proprietor of an online shop for used Vorwerk vacuum cleaners as well as spare parts and accessories for Vorwerk products from various manufacturers had operated an online shop under the domain name keine-vorwerk-vertretung.de. The owner of the well-known trademark Vorwerk took action against this practice based on an alleged trademark infringement. The operator of the online shop referred in the first place to the fact that he was entitled to use the trademark pursuant to the exemption in Section 23 Para. 1 No. 3 German Trade Mark Act, since he used the trademark for the purpose of identifying the goods offered on the website as those of the owner of the trademark or as an indication of the intended purpose of the goods as accessories or spare parts for Vorwerk products. Furthermore, he argued that his right to use the trademark in the domain name followed from Section 24 German Trade Mark Act as the trademark rights of the trademark owner had been exhausted with regard to the used goods offered on the website.

The Federal Court of Justice followed the online shop operator’s line of argument to the extent that it confirmed that the use of a well-known trademark in the domain name of a reseller who – in addition to the trademarked goods – also sells compatible products of other manufacturers, represents an indication of the intended purpose of the goods within the meaning of Section 23 No. 3 German Trade Mark Act. At the same time, however, the court found that there were more adequate alternatives available for the reseller to indicate the compatibility of his products. The use of the trademark in the domain name was furthermore found to be contrary to moral standards because it also serves to draw the attention of potential customers to the range of goods offered under the domain. The trademark was thus used in the domain name for advertising purposes exceeding the incidental advertising effect associated with the necessary indication of the intended use of the products. Accordingly, the use in question was not found to be privileged pursuant to Section 23 para. 2 German Trade Mark Act and constitutes a trademark infringement.

Since the court of appeal had not provided sufficient reasoning in relation to the possible exhaustion of the plaintiff’s rights in the trademark, the case was referred back to the lower instance court. The Federal Court of Justice, however, inidcated that by using a well-known trademark in a domain name, the reseller illegitimately exploits the advertising effect resulting from the trademark’s reputation for promoting his online shop. The owner of the well-known trademark is thus entitled to prohibit the use of the trademark notwithstanding the principle of exhaustion.

Even though the judgment concerns a well-known trademark, it contains general considerations defining legal limitations to the use of trademarks in domain names. According to the considerations of the Federal Court of Justice, the use of a trademark as part of a domain name is more than a mere indication of the compatibility of one’s own products with the trademarked goods. Rather, it has a considerable advertising effect which surpasses the usual advertising effect associated with the necessary indication of the intended use. Though it remains to be seen how this decision will be received by the lower instance courts, resellers will probably find it more difficult in the future to justify the use of a trademark as part of the domain name without a prior permission by the trademark owner.

New administrative invali­dation proceedings in German trademark law as of May 2020

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As part of the implementation of the EU trademark law reform as of 1 May 2020 German trademark registrations might be challenged in full administrative invalidation procedures due to earlier rights as well as for revocation. This mirrors already existing proceedings on the level of the EU Trademark Regulation. It offers a further, rather cost economic option next to the respective action before the civil courts and broadens the strategic considerations in trademark conflicts. German trademark registrations are likely to be far more under attack, namely directly before the German PTO.

New options for objections to registered trademarks in Germany: administrative invalidation and revocation proceedings as of 01 May 2020

The German Trademark Law Modernization Act (MaMoG) essentially came into force on January 14, 2019. It implemented the EU trademark law reform, technically EU Directive 2015/2436 into the German Trademark Act (see B&B Bulletin article of 15 January 2019). With a delay – but largely within the term for implementation-, namely as of 1 May 2020, a highly practice-relevant core aspect of the implementation will come into force: namely a full administrative  invalidation procedure due to earlier rights as well as a full revocation procedure, extending the competence of the German Patent and Trade Mark Office (German PTO).

Extended range of attacks against trademark registrations

As a result of the new provisions, a new option is given for attacking registered trademarks: apart from exclusively bringing an actions before the civil courts, older rights (relative grounds for invalidity) and revocation due to lack of genuine use can also be completely invoked at an administrative level before the German PTO.

Thus, applicants might safe costs in terms of procedural economy as well as to make use of the professional competence of the registration authority. The MaMoG now offers the full trias to have registered trademarks cancelled in purely administrative proceedings – not only as until now on the basis of absolute grounds for invalidity (lack of registrability) but also for revocation (not only as formal preliminary proceedings) and due to conflicting earlier rights. Thus, the German trademark law is adapted to the systematics on the level of the European Trade Mark Regulation.

New administrative invalidation proceedings due to conflicting earlier rights

The proprietor of one or more earlier rights (within the meaning of Sections 9 to 13 of the German Trade Mark Act, i.e. on a broader basis than in opposition proceedings, for example also due to rights to names, copyright or design rights) can now for the first time obtain a declaration of invalidity and cancellation of a registered German trade mark in proceedings before the German PTO. The same applies to the withdrawal of protection of a part of an International Registration which designates Germany.

From a practical point of view, the following must be observed:

  • The adversarial part of the proceedings will only be carried out if  the owner of the registered trade mark objects to the declaration of invalidity within two months of notification of the application for the declaration of invalidity; otherwise, the German PTO will declare the trade mark invalid and cancel it with effect ab initio (ex tunc).
  • Relationship to opposition proceedings: official invalidity proceedings are admissible despite pending opposition proceedings, even on the basis of the same earlier right.
  • In contrast to opposition proceedings, in invalidity proceedings, the „moving period of use“ continues to exist; therefore, if the grace period for use expires during the invalidity proceedings, proof of use of the earlier mark during the five years preceding the decision must be provided, if the proprietor of the challenged mark objects.

Full revocation proceedings before the German PTO

Upon request, the registration of a trade mark is revoked and cancelled, primarily if it has not been used within a period of five years. In the absence of an opposition, the trademark is cancelled – normally with effect for the future (ex-nunc). However, if the trademark owner objects within two months after notification of the application for revocation, the adversarial part of the proceedings will, as new provision, be continued before the German PTO – upon payment of a follow-up fee by the applicant.

Consequently, the applicant – in contrast to the previous law – is no longer obliged to pursue his application before the civil courts in an action for revocation.

Special procedural aspects for both options

  • Alternative but not cumulative option: Civil law action and corresponding requests for invalidity or for revocation before the German PTO exclude each other for the same subject matter in dispute.
  • An appeal against the decision of the German PTO may be filed with the Federal Patent Court.
  • Already the written request for invalidation or revocation must be substantiated and evidence must be indicated (unlike for filing an opposition).
  • Hearings shall be held in official proceedings at the request of one of the parties or if deemed relevant.
  • Upon request, the providing of a security for the costs of the proceedings may be required from an applicant outside the EU/EEA.

Increased need for consultancy – far-reaching strategic decisions

Especially for owners of older rights, the options for taking action against younger trademarks increase. The strategic considerations – also relevant for negotiations on an amicable settlement – are complex. Only the following aspects can be touched upon:

Lower cost threshold for administrative proceedings, but no reimbursement

The proceedings before the German PTO are far less expensive than the corresponding legal action before the civil courts. This aspect alone will increase the number of attacks on registered trademarks for revocation and invalidation based on earlier conflicting rights on an administrative level. On the other hand and unlike in case of a successful lawsuit, there is normally no reimbursement of costs in the relevant administrative proceedings.

Reduced burden of proof concerning genuine use in administrative proceedings

An affidavit continues to be accepted as main element of the formally increased threshold to prove (instead of the showing of a plausibility) genuine use of a trademark – at least before the German PTO – in administrative proceedings. In contrast, the stricter full proof applies in legal proceedings.

Provocation of the administrative revocation proceedings in case of opposition

As is the case at the level of European Union trade marks, an owner of earlier trade mark(s) will have to consider more in detail the consequences of the filing of an opposition. Should his prior trademark have fallen out of the grace period of non-use, it might not only become subject to the plea of non-use in the context of the opposition proceedings. There is now the much more far reaching threat of total loss of such prior mark via the inexpensive counter-attack in an official revocation procedure.

All in all, the new low-cost administrative trademark cancellation procedures, while maintaining the corresponding legal action, lead to expanded strategic options, a corresponding need for advice and certainly to an increase in attacks on registered trademarks.

International jurisdiction for infringement of an EU trade mark by advertising on the Internet

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With its judgment in Case C-172/18 (AMS Neve Ltd and Others v Heritage Audio SL and Others), the Court of Justice of the European Union (CJEU) significantly strengthened the legal position of EU trade mark owners. In the case of an infringement of an EU trade mark on the Internet, also courts of the Member State, in which consumers or traders to whom the infringing advertising and offers for sale are directed are located, have jurisdiction. Often, this now allows the owner of an EU trade mark to take legal action in his home country against infringements on the Internet. At least with respect to Germany, this means that the legal situation is changing considerably.

In the underlying facts of the case, the plaintiffs, who come from the United Kingdom, had sued for infringement of their EU trade mark in connection with the advertising and sale of audio equipment via the Internet in England. The defendants were domiciled in Spain and sold their products via their online shop operated from there. The Court of First Instance had dismissed the action due to the lack of international jurisdiction of the English court. The Court of Appeal decided to suspend the proceedings. Inter alia, it referred the following question to the CJEU for a preliminary ruling: ‘In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B: Does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory?‘

In principle, the CJEU has answered this question in the affirmative. According to the Court, an infringing act is in principle committed in the territory where the consumers or traders, to whom the advertising and offers for sale are directed, are located. Courts of that Member State therefore have international jurisdiction. It is irrelevant whether the operator of the website is established in another Member State of the European Union and has placed the trade mark infringing offer on the Internet from there. It is also irrelevant whether the server is located in another territory or whether the goods which are the subject of advertising and offer for sale are located in another territory. In the opinion of the CJEU, any other view would entail the risk of circumventing the tort jurisdiction laid down in Article 125 (5) of the European Union Trade Mark Regulation (EUTMR), which would ultimately undermine the effectiveness of the European trade mark law. 

The CJEU’s decision deserves approval in every respect. With its ruling, the CJEU provides clarity and strengthens the position of EU trade mark owners. The enforcement of rights will be made considerably easier. The ruling de facto revises the ‚Parfümmarken‘ decision of the German Federal Supreme Court (BGH) from 2017, which was strongly criticized in Germany. At the time, the BGH had taken the completely opposite view in a very similar case. In the case of cross-border offers on the Internet, the BGH had considered the place where the process of publishing the infringing content was initiated to be decisive. By its interpretation, the German Federal Surpreme Court had de facto abolished Art. 125 (5) EUTMR. From now on, this will no longer be able to endure, and German courts will have to follow the outlined guideslines of the CJEU. 

Brexit is there

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On January 31, 2020, 11 p.m. GMT, the UK has left the European Union. However, with no changes for businesses and consumers as of now. The Withdrawal Agreement includes a transitional period until December 31, 2020 within which EU laws fully continue to apply in and towards the UK.

It is generally possible to jointly extent this transitional period. EU bodies and the UK will use the transitional period to conclude an agreement to regulate their future relations.

We will continue to keep you updated regarding your rights and options following Brexit. For the time being, we may refer to our previous newsletters and client communications on our homepage, see here.

Dr. Florian Schwab discusses important case of the Court of Justice of the European Union regarding genuine use of an EU collective mark for packaging system in WTR Daily

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Attorney Florian Schwab reports on a legal dispute before the Court of Justice of the European Union (CJEU) on genuine use of a collective mark in the online portal of the trade journal World Trademark Review.

In the case Der Grüne Punkt – Duales System Deutschland GmbH v European Court of First Instance (EUIPO) (C-143/19 P, 12 December 2019), the CJEU, overruling the judgment of the General Court, has given guidance on the genuine use of a collective mark. The court fundamentally strengthened this type of EU trade mark as proof of genuine use of a collective mark concerning a system of collection and recovery of packaging waste was also accepted for countless (every day consumer) goods (such as beverages, foodstuff or clothing) on whose packaging the collective mark was affixed. .

Read the whole article here.

The article was published on 09.01.2020 in WTR Daily (part of the World Trademark Review).

Dr Martin Wirtz discusses current issues in trademark law in the Mitteilungen der deutschen Patentanwälte German patent attorney bulletin (1/2020)

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An article by BOEHMERT & BOEHMERT partner Dr Martin Wirtz was published in Issue 1/2020 of the Mitteilungen der deutscher Patentanwälte German patent attorney bulletin (p. 9 ff.), entitled “Aktuelles aus dem Markenrecht” (“Current issues in trademark law”). In this piece, attorney Dr Wirtz addresses a number of recent rulings and new developments in the field of trademark law.
Although the author’s article, in his own words, “does not purport to be exhaustive”, he does take a detailed look at new developments within the field in 2019.

The following topics of trademark law are discussed:
Registration/cancellation procedures, absolute grounds for refusal, identity protection/risk of confusion/protection based on reputation/protection of geographical origin, usage that preserves rights, infringing usage, proceedings.

The aforementioned article is the author’s 24th consecutive piece to be published. Dr Martin Wirtz has been writing reports about new rulings in the field of trademark law for the Mitteilungen der deutschen Patentanwälte German patent attorney bulletin for twelve years; these articles are published in the bulletin twice a year.

Read the whole article here (only available in German).

Dr. Sebastian Engels in WirtschaftsWoche: Trademark law in Beethoven’s anniversary year

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This year he would be 250 years old: Ludwig van Beethoven, eternal superstar of classical music and formative composer to the present day. Therefore, the efforts of numerous manufacturers to advertise their own products with “Beethoven” are undiminished. There is Beethoven beer, Beethoven tea, even a computer centre is adorned with the name of the famous composer. The list of entries in the trademark register is long. So the question remains, in what way the name of this unique musician may still be used without committing trademark infringement?

BOEHMERT & BOEHMERT attorney Dr. Sebastian Engels was interviewed on these topics by WirtschaftsWoche in the context of the article “Beethoven Anniversary Year – Who benefits from the Beethoven brand”.

Read the complete article here!

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