The Court of Justice of the European Union (CJEU) has given a preliminary ruling on questions relating to three-dimensional trademarks forwarded to it by the Dutch courts (Judgment dates 18 September 2014; C‑205/13). Background of the Case and Subject Matter Peter Opsvik designed a chair for children called ‘Tripp Trapp’. The design allows the chair’s shape to accommodate a baby’s growth into childhood. The design of that chair has won a number of prizes and has been displayed in museums. Since 1972, ‘Tripp Trapp’ chairs have been marketed by Stokke, particularly on the Scandinavian market and — since 1995 — on the Dutch market. In 1998, Stokke applied to register the form of the Tripp Trapp chair as a three-dimensional trademark at the Benelux Trade Mark Office.   [[{"type":"media","fid":"4413","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image size-medium wp-image-1816 aligncenter","typeof":"foaf:Image","style":"","width":"223","height":"300"}}]] The German company Hauck GmbH introduced similar chairs named “Alpha” and “Beta” to the market. Subsequently the Stokke A/S brought a lawsuit against Hauck GmBH claiming that the chairs infringed their trademark and copyright, but Hauck filed a counterclaim to delete the trademark.On appeal, the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) referred questions to the CJEU for a preliminary ruling on the laws on trademark registration and the grounds for refusal surrounding the shape of a product.   Preliminary Ruling In its judgment the CJEU ruled that the grounds for refusal of shape marks could extend to shapes that are inherent to the generic function of a product and that the grounds for refusal relating to shapes giving substantial value to the goods could apply to products possessing several characteristics, where each characteristic could give the product substantial value. Therefore, the Hoge Raad der Nederlanden could take both grounds for refusal into account, but, may not apply them in combination. A final ruling on the case will still be taken by the Supreme Court in the Netherlands which has the jurisdiction on deciding over the validity of the two-dimensional trademark of the Trip Trap chair.  

The German Federal Supreme Court decided that only Langenscheidt is allowed to use the color yellow for language training products in Germany (Judgment dated 18 September 2014; I ZR 228/12). Background of the Case and Subject Matter The German publisher Langenscheidt has been selling dictionaries since 1956 and other language learning products since 1986. All the products are designed in yellow color with a blue “L” on the books (see left below). Langenscheidt also uses the color yellow extensively when advertising its product. The software company Rosetta Stone has been offering learning software in 33 languages in Germany since April 2010 – and advertises it in yellow with black lettering and a blue logo (see right below). Rosetta Stone also uses the color yellow for its website, in advertising and on packaging. Langenscheidt was of the opinion that this is a violation of its trademark rights and successfully sued the competitors at the Higher Regional Court of Cologne on omission and damages. Rosetta Stone appealed this decision. Decision The German Federal Supreme Court confirmed the decision of the Higher Regional Court of Cologne. Normally, consumers view colors as mere design or ornamental features. But, the decision is based on the fact that the German market for dictionaries is strongly influenced by colors. Therefore, consumers recognize the predominant use of a color as an indication of the origin of a product. This usage also spreads to neighboring market segments, including language learning software. The yellow color of Langenscheidt has acquired an average degree of distinctiveness through its long and intensive use. Rosetta Stone’s yellow color is very similar to it. Therefore, likelihood of confusion is given. The court held that under the particular circumstances in which the colors have been used, the relevant public recognizes them as individually distinctive signs.

The Court of Justice of the European Union (CJEU) has ruled that European libraries may digitize books and make them available at electronic reading points without first coming to an agreement with the holder of the Copyrights (C‑117/13 dated 11 September 2014). Background of the Case and Subject Matter The university TU Darmstadt operates a regional and academic library in which it installed electronic reading points that allow the public to review works contained in the collection of that library. Since January 2009, those works have included the textbook of Schulze W., “Einführung in die neuere Geschichte” (“Introduction to Modern History”), published by Ulmer, a scientific publishing house established in Stuttgart, Germany. TU Darmstadt did not accept an offer of Ulmer to purchase and use the textbooks it publishes as electronic books on 29 January 2009. Nevertheless, TU Darmstadt digitized the textbook to make it available to users at electronic reading points installed in the library. Those points did not allow for a greater number of copies of that work to be consulted at any one time than the number owned by the library. But users of the reading points could print out the work on paper or save it on a USB stick. In view of this behavior of the TU Darmstadt, Ulmer filed a complaint in front of the Regional and the Higher Regional Court of Frankfurt. The Regional Court prohibited the possibility to get digital copies and the Higher Regional Court also regarded the opportunity to copy the book as impermissible. TU Darmstadt appealed to the German Federal Court of Justice against the last decision. But the Court was not sure about the interpretation of the Copyright Directive, which is essential for a decision. This Directive (Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society), permits Member States to provide for specific exceptions or limitations to the “normal” rights of copyright holders. One exception applies to public libraries which, for the purpose of research or private study, make works from their collections available to users by dedicated terminals. Therefore, the German Federal Court decided to stay the proceedings and asked the European Court of Justice to clarify the scope of this exception. Preliminary Ruling First the CJEU notes that under the EU Copyright Directive, authors have the exclusive right to authorize or prohibit the reproduction and communication of their works. However the Directive also allows for exceptions or limitations. This option exists notably for publically accessible libraries which, for the purpose of research or private study, make works from their collections available to users by dedicated terminals. The Court went on to find that the Directive does not prevent Member States from granting libraries the right to digitize the books from their collections, if it becomes necessary, for the purpose of research or private study, to make those works available to individuals by dedicated terminals. The right of libraries to communicate, by dedicated terminals, the works they hold in their collections would risk being rendered largely meaningless, or indeed ineffective, if they did not have an ancillary right to digitize the works in question. The Court adds that this ancillary right of digitization does not conflict with the normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the right holder, given that the German legislation at issue in this case provides that the number of copies of each work available on dedicated terminals must not be greater than that which those libraries have acquired in print format. Even if the rights holder offers a library the possibility of licensing his works under appropriate terms, the library can use the exception to publish works on electronic terminals. Otherwise, the library could not fulfill its core mission or promote the public interest in promoting research and private study. However, the CJEU also pointed out that it is not part of the right of communication to print out the works on paper or store them on a USB stick from dedicated terminals. This reproduction is not covered by the exception, particularly since the copies are made by individuals and not by the library itself. The CJEU decided that the library could however permit the users to print or store the works on a USB stick if, fair compensation is paid to the rights holder. The case will now go back to the German Federal Court of Justice to be decided.

The Higher Regional Court Celle, Germany, decided that it is misleading to add six stars next to the door of a luxus hotel (13 U 76/14 dated 15 July 2014). Background of the Case and Subject Matter A hotel owner added six (6) stars next to the entrance of his luxury hotel without having an evaluation by an external official hotel evaluator. Therefore, a competitor filed a law suit because, this advertisement is misleading. But, the hotel owner is of the opinion that his advertisement is not misleading because in fact his hotel is very luxurious. Decision The Higher Regional Court Celle decided that it is misleading to add six (6) stars next to a hotel. The public believes that the classification of hotels with stars is given by an independent office which evaluates the hotel on the basis of objective and neutral criteria. After all, hotels use the evaluation for their advertisement and in order to show potential guests the standard of quality of the hotel. Even if the hotel is luxurious, there must be an evaluation by an independent office and therefore this hotel owner may not continue with his advertisement.

              The traditional Oktoberfest will take place from the 20 September to 5 October 2014 in Munich, Germany. During this time, more than 6.7 million liters of beer are sold more than 6 million visitors are expected. But, the Oktoberfest is also a showcase for patented technology. History of the Oktoberfest On 12 October 1810 Crown Prince Ludwig married Princess Therese of Saxe-Hildburghausen. The citizens of Munich were invited to attend the celebrations held on the fields in front of the city gates to celebrate this royal event. The fields were named Theresienwiese ("Theresa's meadow") in honor of the Crown Princess. Horse races in the presence of the Royal Family marked the closeness of the royal event that was celebrated as a festival for the whole of Bavaria. The decision to repeat the horse races in the subsequent year gave rise to the tradition of the Oktoberfest. Since 1810, nearly every year the Oktoberfest at the Theresienwiesen takes place. Of course, the character of the festival has changed. Horse races ended in 1960 and more and more modern activities, like roller coasters, were offered. But, there are still some traditional components like the parade on the first day or the beer tents where up to 5.000 people celebrate. Beer at the Oktoberfest At the Oktoberfest more than 6.7 million liters of beer are usually sold. But, only Oktoberfest beer may be served. To be called “Oktoberfest” beer, a beer has to comply to the German Purity Law and contain a minimum of 13.5% original extract (approximately 6% alcohol by volume). Moreover, the beer must be brewed within the city limits of Munich. The breweries that can produce Oktoberfest Beer under the criteria are the “six” lucky ones, namely: Augustiner-Brau (the oldest brewery in Munich, founded in 1323) , Hacker-Pschorr-Brau, Lowenbrau, Paulaner, Spatenbrau, Staatliches Hofbrau-Munchen. And, “Oktoberfest Beer” is a registered trademark by the Club of Munich Brewers. Technology at the Oktoberfest The Oktoberfest is not just a yearly festival, but, also a platform for new technologies and therefore a marketplace for patents. Taking a look at the collection of the European Patent Office (EPO) shows 1813 patents for beer taps, 285 patents for chicken rotisseries, and even 43 patents on Ferris-wheel technology. Most of the patents are invisible for the visitors because they are either installed with other components in rides or integrated in beer tents. Watch this film produced by the EPO to find out how it's possible to fill a tankard in just three seconds, what Krinoline owner Theo Niederlander has to say about the latest trends in carnival rides and which pulse-racing technologies are winning over the Wiesn's ride-goers:    

The Higher Regional Court of Munich decided that the German consumer group “Stiftung Warentest” is not allowed to claim that the chocolate producer “Ritter Sport” is using synthetical flavor for his “Whole Hazelnut Chocolate” instead of the stated natural vanilla flavor.

Background of the Caseand Subject Matter

The German consumer group “Stiftung Warentest” compared nut chocolate bars of different producers and published the results on their website and in their magazine in November 2013. The “Whole Hazelnut Chocolate” of Ritter Sport just gets the evaluation “poor” because Stiftung Warentest is of the opinion that the chocolate contains the artificial vanilla flavoring “piperonal”, which is falsely labeled as a natural flavor. Therefore, the list of ingredients is misleading.

Ritter Sport argued that natural resources also contain piperonal, for example vanilla or pepper. To produce the chocolate, Ritter Sport only uses natural piperonal with methods which are allowed by the Regulation of the European Parliament and of the Council on flavourings and certain food ingredients with flavoring properties. Thus, the claim of Stifung Warentest is wrong.

But, the Consumer group was still convinced that the flavor cannot be obtained in a natural way and therefore they still showed the test results. Therefore Ritter Sport obtained an interim injunction against Stifung Warentest at the Regional Court Munich (I) (13 January 2014/ Case No: 9 O 25477/13). But, Stiftung Warentest appealed the decision.

Decision

The Higher Regional Court of Munich confirmed the first instance decision and rejected the appeal because Stifung Warentest’s claim was not proven. They have no evidence that “piperonal” is not natural. The court also pointed out that because of the importance of their statement, product testers have to examine very carefully if their statements are proper before they publish them.

As and from 1 October 2014, the Office of Harmonization in the Internal Market (OHIM) will begin examining the classification of international registrations designated in the European Union (EU), for vague terms. This change brings OHIM's practice into line with that of EU national and regional IP offices, as previously outlined in the Common Communication on the implementation of IP Translator (Case C-307/10). For more information follow the link: https://oami.europa.eu/ohimportal/en/change-in-examination-of-international-registrations-designated-in-the-eu

The European Commission published its Annual Report 2013 on EU customs enforcement of intellectual property rights on 31 July 2014. The annual report contains statistical information about detentions made under customs procedure at the EU external borders.     The report this year shows that counterfeit goods are a danger to different markets and emphasizes the role of customs authorities in stopping such products from illegally entering the EU. Customs authorities at EU borders detained nearly 36 million goods suspected of infringement with an estimated value of more than 760 million euros. Clothing (12%) and medicines (10%) are among the top categories of goods detained (see below). Nearly 87.000 detention cases were registered by consumers, most of which were incidents involving small parcels in express and postural traffic, most probably a result of internet sales. China remains to be the leading source of infringing goods overall, since 66% of all goods detained in 2013 originated there (see below). Turkey is the leading source of fake perfumes and cosmetics, and Egypt for food products.   As in previous years, the majority of articles detained by customs in 2013 was suspected of infringing a Community or national trademark and covered all product sectors. Around 90 %of all detained goods were either destroyed or a court case was initiated to determine the infringement. In almost 8% of the cases, the goods were released because they appeared to be non-infringed original goods or because no action was undertaken by the right holder after receiving notification by the Customs authorities. The full report can be found under the following link: http://ec.europa.eu/taxation_customs/resources/documents/customs/customs_controls/counterfeit_piracy/statistics/2014_ipr_statistics_en.pdf

On 7 August 2014 the Regional Court of Munich (I) decided that REAL is not allowed to use symbols that look similar to the club logo of the German Football Association (Case No: 11 HKO O 10510/14). Introduction During the course of a legal dispute, it sometimes becomes necessary for a party to seek a temporary remedy in the form of an injunction. Interim injunctions are a separate, very quick court action prior to in parallel to a main court proceeding. They can be essential in circumstances where a party wishes to preserve the status quo until the dispute has been fully and finally resolved. Background of the Case and Subject Matter The German Football Association uses the famous logo with an eagle on it since 1920. The logo - you can see on the left side below - is protected as a German and a Community Trademark. The defendant, REAL, is a large German supermarket chain. During the World Cup, REAL started selling products for football fans like clothing, foot mats, etc. with a symbol (see below in the middle) on it which looks like the logo of the Association. Therefore, the German Football Association was of the opinion that the products of REAL infringe their trademarks. For that reason the Association obtained an interim injunction from the Regional Court of Munich on 20 May 2014. Against this interim injunction REAL filed an opposition. One of the fundamental points in the dispute was the protectability of the trademark, because in general, trademarks which contain national symbols, cannot be protected and the eagle of the logo looks like the German Federal Eagle (see right below).                                    Decision The Regional Court of Munich (I) decided that there is likelihood of confusion between the logo of the German Football Association and the one used by REAL. Therefore, REAL has infringed the rights of the Association. Note: It remains to be seen if the German Football Association will file and prevail in a main court action and if, e.g., the German Trademark No. 30 2012 058 752 “Deutscher Fußball Bund” (word/device mark) inclusive the “eagle” will remain registered or if the mark will be cancelled from the register of the Trademark Office.  

The world’s fifth largest national Patent and Trademark Office (GPTO) contributes greatly to the protection of technical and industrial innovations in Germany. This protection is of upmost importance for companies. The GPTO grants, registers and administers the industrial property rights, e.g. patents, utility models, trademarks and designs in Germany. But, it also provides information to the public. Therefore, the GPTO has just published its annual report 2013, which includes information and statistics regarding all IP rights.     Patents  After the decline in applications during the financial crisis, in 2013 a high level of filing activity was again reached. Therefore, the applications filed at the GPTO increased to more than 63.000. Most of the patent applications were filed in the sectors: vehicles in general, engineering elements or units and basic electric elements. The ten most active national and foreign companies and institutions are: Robert Bosch GmBH (4.144 applications), Schaeffler Technologies AG & Co KG (2.100 applications), Daimler AG (1.854 applications), Siemens AG (1.784 applications), GM Global Technology Operations LCC (1.289 applications), Bayrische Motoren Werke AG (1.182 applications), Ford Global Technologies LLC (1.060 applications), Audi AG (1.027 applications), Volkswagen AG (836 applications), ZF Friedrichshafen AG (708 applications).   Trademarks Trademark filings have also slightly increased over the previous year (see below). The applications include 60.161 national applications and 4.805 requests for the extension of protection based on international registrations. A similar picture is given for Community Trademarks, which are examined by the Office for Harmonization in the Internal Market (OHIM). In 2013, 20.035 applications filed at OHIM originated from Germany, compared to 20.050 in 2012. Accordingly, the ratio of German trademarks to Community Trademarks filed by German applicants was 75:25. This suggests a strong export orientation of German companies towards the European Union. Among the big European countries (Germany, France, the UK, Italy and Spain) only the UK has a similar ratio of national applications to applications for Community Trademarks. The trademark applications 2013 are mostly in the fields of class 41 (Education, sporting and cultural activities), class 35 (advertising, business management) and class 9 (electrical apparatus and instruments). The ten largest trademark filers at the GPTO in 2013 were: Boehringer Ingelheim International GmbH (138 applications), Deutsche Telekom AG (84 applications), Vodafone GmbH (67 applications), VOLKSWAGEN AG (60 applications), Daimler AG (59 applications), Fraunhofer-Gesellschaft e.V. (58 applications), Henkel AG & Co. KGaA (58 applications), Merck KGaA (55 applications), Bayer Intellectual Property GmbH (44 applications).     Designs In 2013, also an increase of design applications could be observed. The GPTO received 6.388 applications (2012: 6.330) covering 55.829 (2012: 53.133) designs. The number of designs filed increased by 1.3%, - the applications by 0.9%. Furnishing, Textile piecegoods, artificial and natural sheet material as well as graphic symbols and logos, surface patterns and ornamentation were the main sectors.     Click on the following links to be redirected to the GPTO’s website for the full Annual 2013 Report in English. http://www.dpma.de/docs/service/veroeffentlichungen/jahresberichte_en/dpma_annualreport2013.pdf