My name is Hanna Lahtela and I am a 25-year-old law student from Finland. I will be working as a Legal Trainee at LexDellmeier Intellectual Property Law Firm from January until the end of June 2019.

My interest in IP law started even before I was accepted to law school. One of our books for the admission test was about IP law and I received a strong basic knowledge already at that point. I am studying my fifth and final year at the University of Helsinki and my interest in IP law has just increased year by year. In 2016, I participated in the annual Nordic IP Moot Court Competition in a team of three persons. Currently I am working on my Master’s thesis regarding trademarks that are contrary to public order or morality.

I have previously worked as a trainee in two law firms in Helsinki, assisting lawyers with various assignments relating to IP law. I am excited about working with IP law related matters also in Munich. This traineeship is an excellent opportunity to widen my knowledge in this field. My goal is also to maintain and practice my German language skills during the traineeship. This is my second time living in Germany, as I have studied one semester as an Erasmus exchange student at the University of Freiburg in 2016. I really enjoyed studying in Germany, and this spring will certainly be just as great.

The European General Court (GC) – quite surprisingly – overruled a decision of the European Union Intellectual Property Office (EUIPO) Board of Appeal with its decision dated 3 October 2018 and ruled that the 3D mark showing the shape of a common amphora, but having a bulge, does not lack distinctiveness and is, therefore, registrable.

                                      Applicant’s/claimant’s EUTM application no. 014886097 (3D mark)

1. Background of the case

On 7 December 2015, the German company Wajos GmbH filed an application for registration of EU Trademark No. 014886097 (3D mark) for a variety of goods in classes 29 and 30 (both foodstuffs, of animal and plant origin, as well as vegetables), 32 (non-alcoholic beverages and beer) and 33 (alcoholic beverages, except beer). The application claimed priority of national German trademark registration no. 30 2015 103 356 (3D mark), which was applied for on 11 June 2015 and registered on 19 August 2015 without being provisionally refused by the German Patent and Trademark Office (GPTO). However, the German company Laux GmbH, which is a competitor of Wajos GmbH, had filed an application for cancellation of the German priority registration due to absolute grounds with the German Patent and Trademark Office – obviously without success, as the German priority mark is still registered and the register does not indicate a pending cancellation proceeding.

The sign in question consists of the shape of a bottle containing a bulge in its middle and being tapered in its lower part.

The EUIPO objected to the registrability of the 3D mark and outlined that the sign is not distinctive, in particular, since the addressed public will perceive the sign as a whole only as packaging of the offered products and the bulge only as a functional detail of this packaging, since this bulge is intended to fix the bottle when being placed in a holder. Also, the EUIPO Board of Appeal confirmed the finding of the first instance. During the proceedings before the Board of Appeal, also a third party filed objections, namely the German Laux Gmbh, which was the Applicant of the request for cancellation of the German priority mark of the EU trademark at issue (see above). Laux GmbH argued in principle that the sign showing a shape of a bottle containing a bulge has to be kept freely available for competitors. While the Board of Appeal at least indicated to some degree that the existence of the bulge might have a certain peculiarity, they came to the conclusion that the overall sign is not more than the sum of its undistinctive parts.

2. Ruling by the European General Court

Wajos brought the matter to the European General Court, claiming a violation of Article 7 (1) (b) of Council Regulation (EC) No. 207/2009. It argued that particularly the bulge contained in the middle part of the shape of the bottle is catchy and notably not merely functional, since it is not necessary for the storage of the products contained in the bottle. Further, the addressed public is, according to Wajos, used to other shapes as standards for packaging of the goods in question, namely, coated cartons, glass bottles, aluminum cans and glass pots.

While the GC did not completely follow Wajos’ arguments, the judges found in the end that the EUIPO Board of Appeal has perceived the features of the mark and its nature in an inappropriate way. In particular, the Board of Appeal has, according to the GC, neglected the overall impression given by the mark. The GC outlined that the combination of the elements of the shape applied for could not be considered entirely common in the view of the addressed public, which could, in particular due to the eye-catching bulge, distinguish the amphora shape of Wajos from the types of bottles which are usually available on the market. The bulge would, hence, lead to an overall characteristic combination of the presentational features of the mark applied for by Wajos. Accordingly, the GC came to the conclusion that the applied for 3D mark encompasses the minimal level of distinctiveness.

3. Remarks

The present decision is in a way astonishing as it seems contradictory to settled case-law, where the European Court of Justice (ECJ) has established the principle that only a mark which significantly departs from the norm or customs of the sector is not devoid of distinctive character (ECJ of 12 February 2004, C-218/01 – Henkel) and, with specific reference to the shape of a product packaging, has confirmed that the mere fact that a shape is a variant of a common shape of a particular type of product packaging is not sufficient to establish its distinctiveness (ECJ of 7 October 2004, C-136/02 P – Mag Instrument). Also jumping into the role of an average consumer instead of a trademark law practitioner, it seems questionable whether one would actually see an indication of origin in an amphora containing a bulge instead of a common packaging containing a mere functional feature.

For a better insight on this topic, please read the whole decision here.

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On 3 December 2018, the World Intellectual Property Organization (WIPO) published its annual report on World Intellectual Property Indicators 2018 (WIPI). The report analyzes the IP activity around the world in the previous year 2017 and gives an insight on the overall number of filings, registrations and maintenance of trademarks, patents, utility models and designs.

                                                                                                   Source: WIPI

As in the year 2016, China remained the overall leader according to volume of applications for all intellectual property rights. The highest growth of filing activity was then monitored in the field of trademark applications, when in just one year the number grew from 9.77 million to 12.39 million trademark filings.

Trademarks – overall number of filings in 2017: 12.387.600

• China: 5.739.823
• U.S.: 613.921
• Japan: 560.269

The most trademark applications were accounted in Asia with 66,6 %. Europe´s share fell to 17,7 %, third is a combined share of Africa, Latin America, Caribbean and Oceania with 9,2 % and the last is North America with 6,4 %.

In 2017, most of the trademark applications were sought for the field of advertising and business management. The second most “common class” of application was clothing, then computers/software and instruments and then followed by the education and entertainment sector.  

Patents – overall number of filings in 2017: 3.168.900

• China: 1.381.594
• U.S.: 606.956
• Japan: 318.479

Utility models – overall number of filings in 2017: 1.761.200

• China: 1.687.593
• Germany: 13.301
• Russian Federation: 10.643

Industrial designs – overall number of filings in 2017: 1.242.100

• China: 628.658
• EUIPO: 111.021
• Republic of Korea: 67.357

For the whole report and rankings for 2017, please click here.

On the 12 December 2018 our law firm LexDellmeier is organizing an online webinar with the topic “Changes in German Trademark Law” which are going to come into effect on the 14 January 2019.

Date:               Wednesday, 12 December 2018 - LIVE WEBINAR

Time:              10:00 – 11:00 am

Place:               Webinar (online) – at your computer

ALLTERNATIVE:

The webinar was recorded on 12 December 2018. If you wish to listen to the content and see the presentation, please use the follwing available registration:

Registration:    Email: info(a)lexdellmeier.com - LogIn data will be sent to you (former registrants - free of cost - new registrants: fee: 59,90 EUR)

Documents:      [[{"type":"media","fid":"4945","view_mode":"default","instance_fields":"override","attributes":{"class":"file"},"link_text":"final_lexdellmeier_webinar_momag_aenderungen_dt_markenrecht_12_dez_2018.pdf"}]]

The webinar is in German and covers - among others - the following topics:

• legal background of the changes
• changes regarding renewals and fees
• significant changes in German opposition proceedings
• new absolute grounds of refusal
• changes in cancellation/revocation proceedings

IT IS TIME TO CELEBRATE !!! 

What inspired me (Alexandra Dellmeier) to write this article? Well, I was born in Bavaria - in the capital city of Munich to be precise - and, I am an intellectual property attorney. Even though I had the opportunity to live in the US for a total of six years and do internships there and in Israel, my "roots" lie in Bavaria. Naturally, I want to write about the 100th anniversary of my "homeland" in combination with start-ups, trademarks and how Bavaria has developed over the past decades. 

Bavaria - in German called the "Freistaat Bayern" (Free State of Bavaria) just turned 100 years old. Officially, Bavaria was founded on 8 November 1918 after the last king was disposed of. Bavaria today is known for its world famous Oktoberfest. However, there is much more to it than beer and pretzels. Did you know that we have our own "Statue of Liberty" which is called "Bavaria" (as seen in the picture below)? It stands on top of the hill at the "Theresienwiese" in Munich, Germany, where the Oktoberfest takes place every year and is a symbol of freedom and peace and also represents strength and glory.

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Bavaria has approx. 13 million inhabitants (Germany in total has approx. 83 million) and is one of the largest out of the 16 federal states of which Germany consists of. Over the past 50 years, Bavaria has changed considerably. From the outset, the majority of the income was made through farming and agricultural products. This has changed. Bavaria has meanwhile become "tech land". Most people know that large companies like BMW, Siemens, Airbus, Mercedes, Porsche, Brainlab, Fresenius, Krones AG etc. who are either headquartered or have large manufacturing facilities in Bavaria. However, what makes Bavaria economically and financially strong are the large number of mid-size and family owned businesses - the so-called "Hidden Champions". But also the start-up scene is on the rise. Every year, one of the most outstanding start-up meetings - "Bits & Pretzels" - takes place during the Oktoberfest in Munich, Germany. Speakers and participants dress up in traditional Bavarian clothing (Dirndl and Lederhosen) and meet to discuss what start-ups need, how to get venture capital, how to protect intellectual property and more. LexDellmeier IP Law Firm, Munich, Germany, regularly attends this start-up conference and and helps some of the companies set up their trademark, design, copyright and licensing portfolio in Germany, the EU and with the help of associates around the world on an international basis.

As regards trademarks and patents: Bavaria is and has been front runner in the past years. According the the German Patent and Trademark Office (GPTO) and its 2017 Annual Report, 15,482 patent applications were filed in 2017 (32.4% of all German domestic applications). The number of trademarks applied for in Bavaria in 2017 reached 12,518. According to the GPTO and its statistics, the inhabitants of Bavaria were the most creative, filing 97 trademark applications per 100,000.

For more information on trademarks, Bavarian castles (including the trademark battle regarding "Neuschwanstein") see the what the GPTO has to say and write about the 100th Anniversary of the "Freistaat Bayern" (in English) here: 

If you would like to know what events are going on, please look at the the offical website of the State of Bavaria - here on the events page (in German). An English summary of the offical website can be found here.

On 5 November 2018, Canada became a contracting party to the Hague Agreement. As of this day, the users of Hague System are newly allowed to designate Canada in their international design application.

Source: Pixabay

In the international design application, the applicant can name all countries that are parties to the Hague Agreement. The total number of contracting parties is now 70, including Germany, United States of America, United Kingdom, Russian Federation, BENELUX countries, Switzerland etc.

For the whole list of contracting parties, please click here.

Interbrand just released its new rankings of the best global brands for the year 2018. By no surprise, the leading companies are again mostly active in the technology sector.

Source: Interbrand

Interbrand is a brand consultancy company that is specialized in brand strategy, brand analytics and brand valuation. For 19 years, Interbrand is gathering the performance of brands throughout various sectors, analyzing the information and creating ratings of the most successful ones. Now, they released a ranking of the Best Global Brands for the year 2018 regarding the value of brands.

According to the statistics, the best global brand of this year was the American smartphone and computer developer Apple. The value of the Apple brand has risen during the examined time period over 16% and the current brand value is estimated to be around USD 214,480 million.

The second place goes to Google, which is also active in the technology sector. The brand value has grown approx. 10% and is now at USD 155,506 million. Google is then followed by Amazon.com, the largest Internet retailer. In 2018, the American company detected the biggest brand value growth – more than 56%. Its value has been constantly growing since 2010 and is now at its maximum of USD 100,764 million.

The next places then go to Microsoft, Coca Cola, Samsung, followed by the automotive companies Toyota and Mercedes and social media giant Facebook. Last but not least, place 10 in the ranking goes to McDonald´s.

For a better insight on this topic and all the rankings, please read here.

On 15 August 2018, the World Intellectual Property Organization (WIPO) published its Information Notice No. 12/2018. In this Notice, WIPO released a new version of the 11^th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) that will enter into force on 1 January 2019.

Source: Pixabay

The new version “NCL (11-2019)” is going to be applied by the International Bureau of WIPO to any international registration that fulfills following requirements:

• “The application for an international registration is received by the Office of Origin on or after 1 January 2019”, or
• “The application for international registration is received by the International Bureau of WIPO on or after 1 January 2019, when the said application is received by the International Bureau of WIPO after the two-month time limit referred to in Article 3 (4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks".

According to this announcement, the Madrid Goods and Services Manager (MGS) is also going to be updated in order to reflect all the changes in the NCL (11-2019).

For a better insight on this topic, read the new 11^th version of the Nice Classification or the whole Information Notice No. 12/2018 which are available on the WIPO website here.

On 26 June 2018, the General Court (GC) upheld the decision of the Board of Appeal (BoA) and confirmed that the word and device trademark “France.com” cannot be registered in the EU due to a likelihood of confusion with the earlier trademark “France”.

                                                  Applicant´s EU Trademark No. 013158597 (word/device mark)          

                      Opponent´s International Registration No. 1032440 designated for the EU (word/device mark)

I. Background of the case

On 9 August 2014, an American company FRANCE.COM, Inc. filed an application for registration of the EU Trademark No. 013158597 (word/device mark) for the services in the class 35 (advertising services), class 39 (services related to travel) and in the class 41 (on-line publications).

The application was then later, on 5 December 2014, questioned when the French Republic filed a notice of opposition. The opposition was based on its prior international registration No. 103244 (word/device mark) which was in 2010 designated for the area of the European Union. This earlier trademark was registered for goods in the class 9 (apparatus and media for recording) and 16 (printed matter) and further for services in the class 35 (advertising services) and 41 (cultural activities and on-line publications). The opponent claimed likelihood of confusion set out in the Article 8 (1) b) Regulation No. 207/2009 (now Art. 8 (1) b) Regulation No. 2017/1001).

On 13 October 2015, the Opposition Division firstly rejected the opposition. The opponent appealed against this decision. On 20 October 2016, the Board of Appeal came to the opposite conclusion than the previous instances and annulled the decision of the Opposition Division. The BoA held that the marks are overall highly similar. The decision was based on following founding:

• the goods and services in question are in part identical and in part similar
• the marks are registered for the same territory,
• the signs have an average degree of visual similarity and are phonetically and conceptually identical.

France.com then brought the action to the General Court and further requested that the GC refers questions about this case to the CJEU for a preliminary ruling.

II. Ruling by the General Court

On 26 June 2018, the GC came in its decision (T-71/17) to the conclusion that the sought trademark “France.com” cannot be registered due to likelihood of confusion with the prior registered trademark “France”.

The GC answered two main questions concerning this case:

a) Likelihood of confusion - similarity of the signs in question?

The GC emphasized that the global assessment must be based on the overall visual, phonetic and conceptual impression of similarity given by the signs and that important by such analysis are the distinctive and dominant elements of each sign. Likelihood of confusion is then given, if the relevant public considers the signs in question to be too similar.

As depicted above, the marks are a combination of a word and of a figurative element. Regarding the case-law, where a sign is composed of a word and figurative element, the word element is given the primary attention as the average consumer will more easily refer to the goods and services by name than by describing the figurative part of a sign.

In the case at hand, both signs have the same key word element “France”, which is according to the GC to be understood as a shortened name of the official name of a public entity - French Republic. Next, the earlier mark also contains a depictured Eiffel tower, the later one a colored pentagon as well as the abbreviation “.com” in addition to the word element “France”.

The Court ruled that the marks as a whole share only a low degree of visual similarity as the dominant color and the figurative elements are different. Further, the word element is also not completely the same as the later mark has an added “.com”.

Concerning the phonetical similarity of the signs, the Court found the signs to be almost identical. The signs only differ in the word part “.com”. This part is easily noticed by the consumers as a reference to a website and is therefore usually not attended to. As a result, most consumers will refer to the mark applied for only by the word “France”, which is then identical with the earlier mark. When examining a phonetic reproduction, only word elements need to be taken into account as the figurative elements are of more importance when analysing the signs visually.

Finally, also from a conceptional point of view the signs were determined to be identical as they both consist of colors, word and figurative elements that refer to the same concept - to the country - the French Republic.

Further, the Court found that the goods and services in question are partially identical and in part similar.

In light of the above-mentioned examination and given the particularly high degree of phonetic and conceptual similarity between the signs, the GC held that there is a likelihood of confusion within the meaning of the Article 8 (1) b) of Regulation No. 207/2009 (now Art. 8 (1) b) Regulation No. 2017/1001).

b) Request to refer the case to the CJEU  

Next, the Court rejected the applicant´s plea to refer the case to the CJEU for preliminary ruling with the argumentation that the procedure under Art. 267 TFEU is an instrument for cooperation between the CJEU and national courts, and is therefore not admissible to the GC.  

For a better insight on this topic, read the whole decision here.