On 16 November 2011 LexDellmeier held a one-day seminar on the topic how the strategic creation, maintenance and defense of IP-rights can positively influence the company value. The first part of the seminar featuring as speakers Alexandra Dellmeier-Beschorner and Barbara Niemann Fadani of LexDellmeier dealt with the creation of strong IP-rights and global application and registration strategies as well as the new, mainly internet-based infringement problems (e.g. adwords, wild cards etc.)  and the  latest German and European case law in this regard. After a pleasant lunch, during which the attendees had the further occasion to discuss various "hot" topics with the speakers, the second part of the day started with an expert insight into the economic evaluation of trademarks.  Speaker Johannes Spannagl of  BrandNetworks explained in detail how his company has developed its own method of evaluating trademarks that is now recognized within Germany as one of three major evaluation methods. The last part of the seminar took a close look at the maintenance and the defense of IP-rights covering topics such as monitoring IP rights, defense strategies, coexistence agreements and preliminary injunctions. The day for the attendees from start-up companies and SME's ended with drinks and further "IP talk" at the cozy “Kaminbar” at the seminar venue.

LexDellmeier bietet Unternehmern und Unternehmen die Gelegenheit bei diesem Seminar tiefere Einsicht zu gewinnen, wie eine gekonnte Strategie bei der Schaffung, der Eintragung und dem Schutz von IP-Rechten den Unternehmenswert steigern kann. Weitere Informationen und das genaue Programm können Sie dem zum Download bereitgestellten Flyer entnehmen. Download Seminarflyer (pdf) Download Anmeldeformular (pdf)

Yves Saint Laurent may still sell his red-soled shoes.

As we had reported before on LexDellmeier’s „Not just another IP-Blog“, the famous luxury shoe brand Christian Louboutin had sued the just as famous luxury fashion brand Yves Saint Laurent for damages because of an infringement of Christian Louboutin’s trademark right of the Red Sole. With a preliminary injunction they wanted to stop Yves Saint Laurent from selling the shoes that featured a red sole.

The New York court has now decided in this preliminary injunction procedure in favor of Yves Saint Laurent finding that they can still sell their shoes.

Federal judge Victor Marrero stated: „Because in the fashion industry colour serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.“ German Press reported that in spite of describing the glamorous effect of Louboutin’s Red Soles with nearly poetic words he did not see a right for the brand to exclude other shoe designers from using this element because there were “different reasons why they would do so”.

Until now it is difficult to evaluate what consequences this decision might have on the trademark rights of Christian Louboutin regarding the Red Sole. It has to be seen what will be decided in the main proceeding and on what grounds the decision will be based.

From a European perspective we find it particularly interesting if this decision really means a turning point in trademark law or if the findings of it will have mainly an inter partes importance considering that it regards to competitors with an equal reputation.

Even though the press coverage throughout the world gave the impression that Louboutin’s trademark right was gone and from now on everybody could use red soles, it still has to be seen if this verdict will open the doors to the use of red soles for every shoe designer. Especially producers of cheap no name copies who evidently try to exploit the fame of the luxury brand by copying their look might not get the same result in court proceeding as Yves Saint Laurent did, who on the contrary has no interest in looking like Louboutin and surely needs no limelight of others.

According to our opinion, there is also a great difference between simply pimping up a pair of no-name shoes by adding a red sole, as it happens so often on street markets or online auctions, and creating a sophisticated collection of uni-colored shoes in different colors (not only red), where the sole matches the color of the upper leather, as it was the case with Yves Saint Laurent. In the first case, an infringement seems very likely in second one, the red sole is maybe a mere decorative element with no reference to another trademark.

However, currently and according to our information, Christian Louboutin does have trademark protection for the "red sole" in place in various juristictions around the world. The first verdict from the US does not mean that other countries will automatically have the same opinion.

We are curious how this case keeps developing - and will keep you posted: To be continued…….

Our recommendation: Join the Munich conference to be held in English on 26 - 27 September 2011. For more information and reduced attendence fees for LexDellmeier Blog readers (special thanks you to the host of this outstanding conference, United Domains) - see links at the end of this article. On 20 June 2011 ICANN (Internet Corporation for Assigned Names and Numbers) has deliberated to launch the so called New Generic Top Level Domains (TLDs). New Generic Top Level Domains means that any word in any language can be used as a TLD. For trademark owners this new concept brings new possibilities, but also new risks. Instead of using your trademark a.e. ”LexDellmeier” under a TLD like .com or .de, the trademark itself becomes the TLD a.e. “something.lexdellmeier”. Sounds great? Yes, because in theory it gives the owner of a TLD infinite possibilities to expand and tailor the own web presence according to the needs, e.g. franchise owners, sales offices etc.. No, because it is not that easy to obtain a TLD and there are numerous legal questions that are unanswered and can potentially lead to conflicts of which the outcome is unpredictable. So how can one obtain a New Generic TLD? Getting a New Generic TLD is not as easy as registering a domain name under an already existing TLD such as a.e. “.com”. ICANN has established a very detailed procedure according to which a potential applicant has to apply to form and operate a New Generic TLD. That means, unlike any other domain registration, where an applicant can simply register what is still available, a New TLD will only be assigned to an applicant if ICANN assessed him to be suitable. How this assessment will take place is described in the 352 pages Applicant’s Handbook. The main elements of an Initial Evaluation are the quality of the string and the technical, operational and financial capacity of the applicant to operate a registry. According to the timeline published by ICANN the application period will begin on 12 January 2012 and will close on 12 April 2012. In the following the applications will be published on ICANN’s website and this is the moment when trademark owners, who see an infringement of their rights can object to the respective applications. The evaluation process is expected to last from 8 to 18 months. There are several stages that an application might be required to pass through prior to a final determination being rendered. The "basic" fee will be US$185,000. Applicants will be required to pay a US$5,000 deposit fee per requested application slot when registering. The US$5,000 will be credited against the evaluation fee. Needless to say that the existence of these New TLD leads to numerous legal and factual questions such as: What will happen if a.e. BMW registers “.auto” or “.car”? How will competitors like Audi react? What will happen to identical brandnames that are registered for different companies in different classes such as “Triumph”? What strategies will the companies adopt with regard to the New TLDs? Those and many more will be discussed in an upcoming conference in Munich  held in English on 26 and 27 September 2011. LexDellmeier will attend this high profile conference which will give background information on legal and technical aspects and opportunites to network. All trademark owners who are interested in obtaining a New Top Level Domain should attend. Click here to register your attendance.

Besides the traditional fields of trademarks, designs, copyrights, the attorneys at LexDellmeier also advise on media & web issues relating to intellectual property. Due to the expertise in the fields of IP, internet, media & web, LexDellmeier's founder, Alexandra Dellmeier-Beschorner, has just recently been appointed as an Expert in Group III of the European Economic and Social Committee (EESC). The EESC was created in 1957 and serves as an advisory and consultative board for the European Commission and the European Parliament. On 19 July 2011 the EESC's first meeting with respect to "The open internet and net neutrality in Europe" together with representatives from the European Commission and Parliament took place in Brussels. 1. What is net neutrality? The principle of net neutrality has not been defined in the EU yet. However, "net neutrality" in essence means that companies providing internet services should treat all sources of similar internet data (e.g. emails, VoIP, internetTV etc.) equally and not discriminate between different types of traffic for commercial motives. 2. The (potential) problem? Fact is, that countries, companies and network operators are restricting access to the public internet, or changing how it operates, for political, commercial or technological reasons. The burning question and hot topic in the EU - as well as in the US - is: Should "net neutrality" be defined, regulated and thereby be ensured for all users? A detailed study by the EU has been conducted and published in May 2011 with the title: "Network Neutrality: Challenges and Responses in the EU and in the U.S." 3. The EU Commission's current position According to the study, the EU Commission and Parliament is of the opinion that there is no evident threat that countries or operators are taking advantage of the internet and its possibilities to limit access in any way. In short: the position is that of a "wait and see"-one - which in essence is reflected as an opinion at the end of the above mentioned EU Study. If something happens or goes wrong, then the EU will react, define the terms "open internet" and "net neutrality" and what is allowed and what not. Currently, the position is that competition on the market and the existing telecommunications laws are sufficient in order to secure consumers' and users' interests. 4. The EESC's position In its first joint meeting on 19 July 2011 the EESC with its responsible Rapporteur from Portugal, Mr. Pegado Liz, with his technical expert, Mr. Pádraig Kenny, have drafted a Working Paper with the title "The open internet and net neturality in Europe" for consultation. Approx. 18 representatives and members from all of EESC's three groups (Group I, II and III), the EU Commission and EU Parliament attended the meeting to discuss the first draft. The EESC in its working paper (not published yet) is essentially taking a more proactive approach with respect to "net neutrality". Irregularities, e.g. the Dutch case regarding KPN and its public disclosure on possibly trying to circumvent the concepts of "net neutrality", have raised concerns among a large number of the EESC's members of not addressing the topic and not defining it. The first draft of the Working Paper - in essence favoring a more pro-active approach to tackling "net neutrality" as well as defining it and setting up principles has been discussed in detail. The second meeting on the Working Paper and its implemented revisions on the basis of the joint discussions of 19 July 2011 is on the EESC's agenda on 31 August 2011 in Brussels. LexDellmeier will participate in the further discussions, give expert input and will update its blog readers accordingly.

is a line in the lyrics of a Jennifer Lopez song. The song somehow flopped, but the shoes  are a legend and commonly recognized by their famous red soles. And because of those shoes the eyes of fashionistas and lawyers are fixed on a law suit that was filed by Christian Louboutin against Yves Saint Laurent  before a Federal Court in Manhattan just recently. Subject matter is of course the famous red sole that Louboutin has registered as a trademark with the US Patent and Trademark Office. He also has pending applications in the European Union - among others as referred to a so-called "position mark". Louboutin is suing Yves Saint Laurent now because in the latest collection the red soled shoes (the “Palais Pump“ and the „Palais Slingback“) were featured. Louboutin considers this an infringement of his trademark(s). While trademark lawyers and the fashion industry call it „The Clash of the Titans“, fashionistas shake their heads in disbelief. But, from a legal point of view the questions raised are various and quite interesting,  especially from the European point of view. Can one designer have a monopoly on the right to colored soles? Can the registration of the red sole as a trademark be upheld (e.g. because a trademark does not have to be "new" in order to be applied or registered for). Or, does it have an influence that red soles been around and used for a long time a.e. for the famous ruby slippers of Dorothy in the Wizard of Oz movie, by KingLouis XIV in the 1600s or even by Yves Saint Laurent itself in the 70’s? Is the red sole, in case of the Yves Saint Laurent shoe, used as a trademark or merely ornamental decoration considering that the same shoe also comes in other colors like green or blue where the sole is then accordingly green or blue. Furthermore, does Yves Saint Laurent have any interest or advantage in being potentially mistaken for another brand considering that both brands are prestigious and famous? As a fashionista I would throw on my Louboutins and my Yves Saint Laurents an equally adore  them. As a lawyer I am more than curious about the outcome of the dispute and especially on the consequences that might have on the European trademark registrations and filing strategies. We will keep you updated. For further information please read: http://www.huffingtonpost.com/2011/05/24/ysl-louboutin-red-soles_n_866144.html http://www.washingtonpost.com/lifestyle/style/christian-louboutin-sues-yves-saint-laurent-over-red-soles-on-heels/2011/04/14/AFV2Z4eD_story.html http://www.dailymail.co.uk/femail/article-1390229/You-didnt-invent-red-soles-Yves-Saint-Laurent-kicks-Christian-Louboutin.html

LexDellmeier is thrilled and proud to announce that our firm is the winner of the Finance Monthly Law Award 2011 in the category "Trade Marks Law Firm of the Year in Germany". Just a couple of days ago we were informed by Finance Monthly, a leading magazine for chief executive officers, chief financial officers, corporate tax directors, investment professionals, lawyers, professional advisors, government organisations and academics. We take the opportunity to thank all of the people - clients and colleagues - who have voted for our firm. Special thanks goes to our incredible hard-working team. Without such a great and enthusiastic staff of trademark, design, copyright and domain name specialists, our IP boutique would not be where it stands today. LexDellmeier focuses on the relationship with its clients' and their needs. We strive to understand the clients' business so we can be their “strategic partners”. Combining out-of-the-box thinking with technical excellence, proactive trademark strategies and clear communication to maximize the clients' trademark and IP portfolio is what we do best. For more information please see our "Awards" Page on our LexDellmeier Blog or see the Finance Monthly Law Award 2011 Handbook.

For the first time a German court had to decide on the question if the use of the Facebook “Like” button on an internet sales page complied with the rules against unfair competition, if the button was placed without indicating that data of logged-in Facebook users would be transmitted to Facebook. The decision by the Regional Court of Berlin dated 14 March 2011 meanwhile published in German is of great interest with respect to the question of infringement of (German) unfair competition laws. Background of that decision was that the claimant filed a restrictive injunction to obtain the omission of the embedding of the Facebook “Like” button on the website of a competitor, who offered similar goods online as the claimant. The embedding of the Facebook “Link” button leads to the result that data of logged-in Facebook users are transferred to Facebook when visiting the respective website of the competitor, even if they do not click on the “Like” button. It was not clarified to what extent if the same happened to data of Non-Facebook-users or such Facebook users that were not logged-in. The claimant sustained that it was unfair competition to embed this button without informing the website visitors that a transferal of data to Facebook could take place. The missing indication of the data transfer according to the claimant infringes § 13 of the German Telemedia Act (TMG) where the obligation of a service provider is codified to inform about what kind, to what extent and for what purpose any collection and use of data, is provided. According to the Court, § 13 TMG however is not a law that indicates a rule of conduct in business. For this reason a violation of the obligations provided in § 13 TMG does not fall under the provision ruled in § 4 Nr. 11 of the German Unfair Competition Law (UWG). § 4 Nr. 11 UWG rules that a violation of a law that has also the purpose to regulate the behavior of competitors on the market is to be considered unfair competition. According to the decision practice such law must at least have the function to create equal possibilities to the competitors. This requires a secondary market related purpose of protection and this purpose has to be in the interest of the competitors. § 13 TMG on the contrary does not have any protective purpose for the competitors, but, for the content users only. Note: The Court did not decide on that question under the aspect of data protection - only under the aspects of unfair competition laws. Decision dated 14 March 2011 by Regional Court of Berlin (Official Court Ref: 91 O 25/11 )

For decades  Germans have been watching "Tatort" (in English "Crime Scene") on Sunday evenings. It is a famous crime series in which each episode shows a different crime movie of about 90 minutes. „Tatort“ is created by several different directors, and every one of them has created his own detective with his own personal work and lifestyle in one of Germany’s cities (similar to the much younger US series "CSI").  The „Tatort“ series has brought forward the talent of many directors and the G erman audience loved the various detectives and with which the different actors were associated with. Fact is, that  „Tatort“ has entertained many generations in Germany - watching detectives appearing, aging and retiring with the years. One specific aspect though never changed in all those years: The opening scene. A tension creating film sequence where one can see running feet on wet asphalt in the dark, and then the circles of a target mark appear that in the end form the letter “o” of the word “Tatort” which means "crime scene".  It has been shown more than 30.000 times over the past decades. The music that is featured in this sequence is probably more well-known to the Germans than the national anthem. A real cult. Roughly 40 years ago when the opening scene was created the creator had earned a fee of what nowadays would be an approx. equivalent of EUR 1.300. Considering the huge success of the “Tatort”-series, she now claimed an additional fee  from the respective public television channels based on § 32 a of the German Copyright Act (GCA). In fact  § 32 a GCA, the so called “Bestseller Rule” and one of the most controversially discussed provisions in German Copyright Act, grants an additional compensation in case that there is a remarkable misbalance between the revenues of the work and the compensation that has been paid to the creator, even many years later, even in case that the amount of the revenues or the success of the work was not foreseeable. While the Regional Court in Munich I in an unexpected and surprising decision had granted the requested fee, the Court of Appeal now revoked that decision for the following reasons: §32 a GCA  grants an additional fee only, if the contribution of the creator was not of subordinate importance for the work as a whole. However, the opening sequence of a movie has never been considered a separate work of its own, but, has rather always been treated like an advertising jingle or teaser. It only has the purpose of labeling the program iself. The fact that the opening scene of “Tatort” was very well-known to the German television audience, was only due to the fact that it had been repeated for over 40 years, but according to the Court of Appeal this does not mean that it had a particular importance for the program. Therefore, the television channel did not have any additional advantage from that sequence, but, the viewers were watching because they wanted to watch the following crime story. Nevertheless, the creator did win the proceeding  partly as far as the court had ordered the television channels to omit sustaining that the opening scene was created by one off their employees as this was incorrect and therefore violated the rights of the creator as the sole and true copyright holder. (Decision of the Court of Appeal, Munich in Case No. 29 U 2749/10 on 10 February 2011)   Copyright protection in Germany shows a bundle of significant differences to copyright laws in other countries around the world. In case of questions, please contact Barbara Niemann Fadani, the author and creator of this article and one of the copyright experts and lawyers at LexDellmeier.

The German Federal Patent Court (Bundespatentgericht - BPatG) has confirmed the cancellation of the trademark „Neuschwanstein“. The trademark “Neuschwanstein” had been registered for a wide range of goods and services but after a cancellation request because of its lack of distinctiveness according to § 8 II No. 1 German Trademark Act (GTA), the German Patent and Trademark Office (GPTO) had cancelled it. Upon the appeal the German Federal Patent Court had confirmed the missing distinctiveness for the following reasons: The expression “Neuschwanstein” is the name of the world famous castle and tourist attraction in Bavaria, that was originally built for King Ludwig I and that has reached an outstanding cultural and historical importance and recognition. With regard to tourist services , tour-operator services as well as catering and accommodation services the trademark protection for the expression “Neuschwanstein” is excluded because it is suitable to describe the characteristics of the services, such as a.e. the destination. With regard to goods that are generally offered near tourist locations such as souvenirs or food and beverages to cover their needs - according to the German Federal Patent Court there is also a lack of distinctiveness according to § 8 II No. 1 GTA. In general, denominations of places and buildings that belong to the cultural heritage of a country are common knowledge and are therefore barred from a monopolization and commercialization through the registration via a trademark. (Decision of German Federal Patent Court in Case No.: 25 W(pat)182/09 on 8 February 2011)