LEXDELLMEIER WEBINAR ON AMENDMENTS TO EU DESIGN LAW

Are you the owner of a registered design in the European Union and have your design protected products been copied by way of 3D printing with you not being able to proceed against the person selling the 3D printing software? Or have your design protected goods been shown in the metaverse with you not being able to take action against such use for lack of “physical embodiment”? Then we have good news for you. A new EU-Design Directive as well as a new EU-Design Regulation will soon come into force and will extend design protection beyond physical objects. For more information, you are welcome to attend our webinar on 9 October 2024 at 4.00 pm (CEST). Get an overview of the webinar’s agenda by reading our newest blog article.

1. Background

Design law in the European Union had not been updated for over 20 years. For about the last 10 years, reviews and consultations had been conducted between the different stakeholders to determine and discuss the necessity and extent of changes to the EU design law system. In March 2024, the EU parliament finally adopted a new Design Regulation and Directive to be published in the Official Journal shortly. The Regulation will come into effect 4 months after publication and regarding the Directive, the EU member states will have 3 years (36 months) to implement it into national law.

2. Agenda of LexDellmeier Webinar

LexDellmeier IP Law Firm will hold a one-hour webinar on

9 October 2024 at 5.00 pm (CEST)

to present and discuss the new amendments in detail. We will discuss

• The broadening of the scope of design protection by new definitions of the terms “design” and “product”;
• The addition of new acts of infringement to give design owners better coverage in proceeding against infringements;
• The new repair clause which is particularly intended to increase competition in the spare parts market;
• Changes in general terminology which align EU design law with EU trademark law;
• The waiver of the "one (Locarno) class" requirement;
• The adoption of a new design protection symbol consisting of a D in a circle like the C for copyrights and the R for registered trademarks; and finally
• Changes in the official fees that the new Regulation will implement and how it can influence your application strategy.

Come and join us at our Zoom webinar on 9 October 2024 at 4.00 pm (CEST). The webinar is free of charge and you can easily register via Eventbrite or send an email to us at: info@lexdellmeier.com We look forward to seeing you at the webinar!

Should you not be able to attend the webinar, you are welcome to contact us at any time for further information on the new EU design law, either by email to info@lexdellmeier.com or by phone at +49 89 55 879 870.

The Olympic Games 2024 are underway! However, although the merriment surrounding the event invites to light-heartedness, one should be careful not to be carried away when it comes to the use of the so-called “Olympic Properties”. The International Olympic Committee (IOC) and its affiliated entities tend to defend their IP rights fiercely against infringers, which is why businesses should be aware of the following.

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1. What are Olympic Properties ?

The Olympic Charter is the result of the IOC’s efforts to organise the Olympic movement and codifies all principles, rules and by-laws pertaining to the Olympic Games. In its Rule 7, the Charter reserves all rights relating to the symbol, flag, motto (“Citius, Altius, Fortius”), anthem, identifications (including the terms “Olympic Games” and “Games of the Olympiad”), as well as any musical, audiovisual or creative works exclusively to the IOC, covering a broad range of different objects.

Many of the objects defined as Olympic Properties enjoy protection through traditional IP rights such as trademarks, designs or copyright. The IOC allows certain third parties to make use of its IP rights protecting Olympic properties through licensing agreements as part of the Olympic Partners Program such as Coca-Cola, LVMH or Samsung. However, any use of the IOC’s trademarks, designs or other IP rights by an unauthorized third party constitutes an infringement.

2. A specific protection in national French law

Apart from “regular” IP rights, the Olympic Properties benefit from specific protections as such in many countries. For instance, the Nairobi Treaty of 1981 provides that each contracting party (56 countries as of 2023) is obliged to refuse or invalidate the registration of a mark and to prohibit the use for commercial purposes of any sign consisting of or containing the Olympic symbol without the IOC’s authorisation.

In this spirit, the French lawmaker has provided a series of new rules in the French Sports Law (Code du Sport), whereby the French National Olympics and Sports Committee (CNOSF) is the sole owner of the national Olympic emblems as well as the sole custodian on the French territory of many of the IOC’s Olympic Properties. As a special measure, the Organisation Committee for the Olympics and Paralympics (COJOP) is the only entity authorized to file an action against infringements to the new rules committed between 1 January 2019 and 31 December 2024, with the CNOSF only being able to join the proceedings to seek compensation for its own damages. With these new rules, any third party registering as a trademark, reproducing, imitating, affixing, deleting or modifying the elements and terms enjoying the new specific protection without due authorisation from the CNOSF is deemed to infringe against the CNOSF’s rights and is liable to the same criminal sentences as those provided for in trademark infringement matters by the French Intellectual Property law (Code de la Propriété Intellectuelle). These range between three and seven years imprisonment and between EUR 300.000 and EUR 700.000 fines depending on the nature of the infringement. However, contrary to trademarks, Olympic Properties enjoy absolute protection, as there is no need for the COJOP / CNOSF to prove the existence of a prior IP right or of a likelihood of confusion between the Olympic Property concerned and the infringing sign. It is worth noting that these rules do not compel the French Trademark Office to refuse trademark applications for signs that resemble an Olympic Property – attempting to register such a sign without authorisation may only give cause to a civil lawsuit before the competent civil law court.

3. Useful links

For more information on Olympic Properties and their protection, please visit the following links:

https://olympics.com/ioc/olympic-properties

https://stillmed.olympics.com/media/Document%20Library/OlympicOrg/General/EN-Olympic-Charter.pdf

https://cnosf.franceolympique.com/les-proprietes-olympiques (in French)

In the cutthroat world of advertising, the temptation to proclaim superiority over competitors is ever-present. Whether it is claiming to be “Europe’s Number One” or touting oneself as simply “the best,” such declarations can be powerful tools for brand promotion. However, beneath the surface lies a legal minefield that companies must tread carefully to avoid running afoul of competition law.[[{"type":"media","fid":"5484","view_mode":"default","instance_fields":"override","attributes":{"style":"width: 400px; height: 281px;"},"field_file_image_alt_text[und][0][value]":"Europes Number One","field_file_image_title_text[und][0][value]":"Europes Number One"}]]

The crux of the issue lies in the potential for such claims to mislead consumers and distort market competition. While it is natural for companies to want to highlight their strengths and unique selling points, competition law sets strict parameters on the validity and veracity of such assertions.

One of the key principles of competition law is the prohibition of false or misleading advertising. When a company declares itself as “the best” without sufficient evidence or context, it risks misleading consumers into making decisions based on inaccurate information. Such practices not only undermine consumer trust but also create an uneven playing field by unfairly disadvantaging competitors who may offer comparable or superior goods or services.

Moreover, claims of supremacy can also raise concerns under competition law regarding unfair competition practices. By positioning oneself as unequivocally superior to competitors without proper substantiation, companies may engage in deceptive advertising tactics that violate the principles of fair play and market integrity.

In response to these challenges, competition authorities closely scrutinize advertising claims of superiority to ensure compliance with legal standards. Companies must be prepared to substantiate such claims with objective evidence, such as market share data, customer satisfaction surveys, or independent evaluations, to demonstrate the validity of their assertions.

Furthermore, comparative advertising, where companies directly pit themselves against competitors, must be executed with caution to avoid disparaging rivals or making false comparisons. Competition laws require comparative claims to be accurate, verifiable, and not unfairly denigrating to competitors, ensuring a level playing field for all market participants.

In conclusion, while it is natural for companies to want to assert their dominance in the market through advertising, they must do so within the confines of competition law. By ensuring that claims of superiority are backed by credible evidence and are not misleading to consumers, businesses can effectively navigate the legal complexities of advertising while maintaining integrity and fair competition in the marketplace. Remember, in the realm of advertising, honesty and transparency are the cornerstones of sustainable success.

LexDellmeier will be happy to advise and support your company on questions of competition law, including comparative advertising. Please feel free to contact us under info@lexdellmeier.com.

On May 1, 2009 LexDellmeier was founded! Incredible that 15 years have gone by. Therefore, it is time to briefly comment and appreciate these past years and our #amazingjourney.

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        Thank you to…

• Fantastic clients in Germany, France, Spain & other EU countries, UK, Switzerland, USA, Canada, China, Japan, Brazil, Argentina, Australia and from everywhere around the world – thank you all for entrusting #lexdellmeier
• Outstanding and longstanding IP team including members who have worked at LexDellmeier for all of these 15 years – thank you for serving our clients and doing a great job every day

Noteworthy

• LexDellmeier has achieved an #award in either the category “Trademark Law Firm of the Year” or “Small IP Law IP Firm of the Year” – every year in a row since 2010 – see https://lexdellmeier.com/de/awards
• The firm is – as one of the few IP firms – still female owned and run

Achievements in the past 15 years

• Organic growth of approx. 500%
• State of the art Management IP System with client access to full files, reports, export of trademark & design portfolios, (renewal) deadlines etc. 

Outlook and Goals

• Continue our work with #PASSION and JOY and HAVE FUN
• Continue to strive to be one of the most knowledgeable, successful and enjoyable “Boutique Trademark & Design Firms” to work with – around the world

Really looking forward to the next 15 and more years!

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Over the past 17 days, we posted a picture a day mentioning that #LexDellmeier supports #World IP Day. Well, today is the day! Implemented 24 years ago to promote and increase general understanding of #intellectual property (IP), World IP Day is dedicated to a different IP related theme each year and this year, it focuses on the United Nations Sustainable Development Goals –  of which there are a total of 17, introduced to you over the past days.

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(Source:  #United Nations, Department of Economic and Social Affairs, https://sdgs.un.org/goals#icons)

Looking at the pictures we shared, you might have wondered what our intention was, what we were trying to say or if we were simply promoting certain organizations, institutions and companies. Well… it was all together. The 17 Sustainable Development Goals are all unique but they all interact at the same time. And they all have a clear connection to #intellectual property.

For some Goals, like Goal No 9 “Industry, Innovation and Infrastructure”, the connection is obvious. Innovation of any kind is strongly linked to patents and utility models and to protecting technical ideas as #intellectual property. For other Goals, like Goal No 1 “No Poverty”, the connection to #intellectual property is not as obvious, but it is still there.

At #LexDellmeier, we focus on non-technical IP and in particular trademarks clearly contribute to reaching the United Nations Sustainable Development Goals. We gave you examples for this in each of the 17 pictures posted over the past days. No matter if you are working for an international non-profit organization, for a research institute, for a big multinational player or for a small local company, your products and services and the reputation and goodwill associated with them are an important asset and build your company’s “trademarks”. Registered or not, strong names and trademarks raise the same expectations: reliability, consistency, prosperity, sustainability. Only if people can rely on your goods and services, they will come back buying your products, supporting your ideas, promoting your business. The organizations, institutions and companies in our 17 examples have built strong names and trademarks and they are associated worldwide with the expectations mentioned above.

Strong trademarks are needed to bring people together, to share common goals and to cooperate closely in reaching these goals. And if we all work together in building strong trademarks, we can all contribute to reaching the United Nations Sustainable Developments Goals. Together, we can make a difference! Let’s start today – on #World IP Day!

For further information on #World IP Day and the initiatives of #WIPO taken to enhance understanding on #intellectual property, you are welcome to visit https://www.wipo.int/web/ipday/2024-sdgs/index. More information on the United Nations Sustainable Development Goals, can be found at https://sdgs.un.org/goals#icons.

For comments of any kind, you are welcome to contact us by email at info@lexdellmeier.com or by phone at 089 55 879 870.

Genuine Use of a Trademark – Always relevant, always worth a Reminder

In our series of blog articles, genuine use of a trademark has already been an issue. But since the topic is very important and can even lead to loss of trademark rights, awareness raising cannot be rated high enough. We therefore chose the “LUTAMAX” decision of the General Court of the European Union (Joined Cases T-221/22 and T-242/22) to bring the topic to your attention once again.

(Source: Shutterstock Vector ID: 2148722679)

BACKGROUND

If you are the owner of a registered trademark, you are allowed to take action against somebody else using a younger identical or similar mark for goods and services that are identical or similar to the ones for which your trademark is registered. However, the scope of protection of your trademark is not only defined by the mark and the list of goods and services, but also by the actual use of the mark for the registered goods and services. While the owner of a European Union trademark is privileged during the first five (5) years after registration, a trademark might lose its enforceability against third parties after those first five (5) years if it is not used for all registered goods and services. Defining the actual scope of protection of your registered trademark is therefore essential when taking action against somebody else. Unfortunately, the scope is not easy to determine as it is strongly influenced by the specific circumstances in each case and even different judicial instances may come to different conclusions.

In the “LUTAMAX” case concerning a revocation proceeding against EU Trademark No. 003472974 “LUTAMAX” (word mark), the contested mark was, inter alia, registered in Class 5 for

• “Dietary supplements adapted for medical or dietetic use; none of the aforesaid goods for veterinary purposes”.

Actual use of the trademark had been for a capsule of lutein to be ingested on a daily basis, as part of a balanced diet, intended for the dietetic treatment of age-related macular degeneration (AMD), a specific eye disease.

The Cancellation Division of the EUIPO held that such use was use of the contested mark for

• “Dietary supplements adapted for medical or dietetic use for the treatment of age-related macular degeneration; eye care preparations (for pharmaceutical purposes) for the treatment of age-related macular degeneration; none of the aforesaid goods for veterinary purposes”.

Upon appeal, the EUIPO’s Board of Appeal amended the wording and confirmed use of the mark “LUTAMAX” for

• “Dietary supplements adapted for medical or dietetic use for supporting eye health, none of the aforesaid goods for veterinary purposes”.

Upon further appeal, the General Court decided that EU Trademark No. 003472974 “LUTAMAX” (word mark) had been used for

• “Dietary supplements adapted for medical or dietetic use; none of the aforesaid goods for veterinary purposes”.

Same case – three instances – three different decisions.

DECISION OF THE GENERAL COURT

Based on the evidence presented by the trademark owner, the General Court first had to decide whether use for a capsule of lutein was use for dietetic food (as the revocation applicant claimed and for which the trademark was not registered) or for dietary supplements (as registered). Most consumers rarely think about the difference between these two terms as it is more of an administrative difference than one that really effects consumers. However, for a trademark owner, the difference can become crucial when its trademark rights are at stake.

Regarding the “LUTAMAX” product, the General Court held that

• To determine whether a product was a “dietary supplement” or a “dietetic food”, it was necessary to refer to norms of EU law for guidance. In particular case, Directive 1999/21/EC of 25 March 1999 on dietary foods for special medical purposes and Directive 2002/46/EC of the European Parliament and of the Council of 10 June 2002 on the approximation of the laws of the Member States relating to food supplements needed to be taken into account.
• Based on the Directives, the trademark owner’s lutein product fell into the definition of “food supplements” and, more precisely, into the category of “dietary supplements adapted for medical or dietetic use”.
• The category of “dietary supplements adapted for medical or dietetic use” was sufficiently clear in itself and did not require a division into a subcategory specifying the therapeutic indication of supporting eye health as held by the Board of Appeal.

“Dietary supplements adapted for medical or dietetic use” already constitute a subcategory in Class 5 of the Nice Agreement. Unlike “pharmaceutical preparations” in Class 5, “dietary supplements adapted for medical or dietetic use” do not necessarily have a precise and specific therapeutic indication. The systematic identification of coherent subcategories within this category of goods based on their therapeutic indication would, inter alia, excessively limit the rights of the trademark proprietor in the legitimate interest in expanding the range of goods or services for which the trademark is registered and must therefore be ruled out.

Three different decision making bodies, three different decisions. As you can see, maintaining registered trademark rights based on actual use is not always a clear-cut case. Thank you to the General Court for further guidance regarding Class 5 goods.

Should you have a similar issues with the list of goods and services of your trademark(s), you are welcome to contact us by phone at 089 55 879 870 or by email at info@lexdellmeier.com

Geographical Indications (GIs) and the upcoming changes to the EU system starting in December 2025

The protection system of geographical indications (GIs) in the European Union is set to undergo changes as two new specific EU regulations were recently adopted. The framework in place since 1992 to protect wines, spirit drinks and agricultural products will be modernised, while geographical indications for craft and industrial products will be eligible for protection at EU level for the first time in history.

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1. What is a GI?

According to the European Union Intellectual Property Office (EUIPO), geographical indications are intellectual property rights protecting the name of a product that has a specific geographical origin and owes its qualities and/or reputation to its particular origin. They are meant to protect such products against misuse or imitation of the registered name and guarantee the true origin of the products to the customers. Well-known GIs are for example: Parmigiano Reggiano, Kalamata olives and Bayerisches Bier.

A study published by the European Commission on 20 April 2020 has shown that geographical indications are key assets for the EU economy, as the sales value of agri-food and drink products whose names are protected represent a sale value of no less than 75 billion Euros (see also our blog article from 5 February 2021 – “GIview – the new database for Geographical Indications”).

2. The upcoming changes to the EU protection system for GIs

For the first time in history, an EU Regulation will provide protection to geographical indications for craft and industrial products. Under the current system of protection, no protection is granted at EU level for this type of products: GIs for crafts and industrial products are only protected on a national basis, with only 16 EU Member States having implemented a specific protection system. Producers of craft and industrial products whose quality or reputation are essentially attributable to their geographical origin will now have the possibility to benefit from a uniform protection system across the entirety of the EU. A straightforward two-step registration process must be followed for a name to obtain protection as a GI. The full competence for the management of the registration process of this new IP right is given to the EUIPO, whereas the EU Commission remains the competent authority for the registration of GIs for wine, spirits and agricultural products. In addition, producer groups will be able to apply for protection of a name as a GI for craft and industrial products (such as textile, porcelain, jewellery or glassware, such as Bohemian glass), similarly to producers of agricultural products. The new EU regulation on GI protection for craft and industrial products will be applicable from 1 December 2025.

It is not yet known when the upcoming EU Regulation on GI for wine, spirit drinks and agricultural products will be applicable, as the co-legislative bodies of the EU still need to formally approve the text. What is certain is that the existing GI system will be improved with the introduction of a simplified registration procedure: whereas there currently exist separate procedures for the registration of GIs in each of the three sectors (wine, spirits and food), the new regulation will provide for a single registration procedure with shorter registration times. Protection will also be granted to GI names that are used as domain names, forcing EU Member States to block domain names infringing GI names, and additional rules will be aimed at ensuring that GIs used as an ingredient in a processed product and GI products sold online remain protected. Finally, producers will be able to form groups to better manage, enforce and develop their GIs, with the added possibility of deciding to make some sustainable practices mandatory for their products.

3. Links with more detailed information

For more information on GIs and the incoming changes to the protection system of the GIs in the EU, please consult the following links:

https://www.euipo.europa.eu/en/news/council-adopts-new-regulation-on-geographical-indication-protection-for-craft-and-industrial-products

https://intellectual-property-helpdesk.ec.europa.eu/news-events/news/new-regulation-eu-geographical-indications-wine-spirit-drinks-and-agricultural-products-2023-11-06_en#:~:text=The%20new%20Regulation%20on%20EU,GIs%20as%20ingredients%20and%20online

LexDellmeier, the creative trademark, design, copyright and licensing law experts from Munich, Germany, and its team members would like to extend to all clients, colleagues and IP friends from around the world a happy, healthy and successful New Year 2024!

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Our specialized IP firm is turning 15 years on 1 May 2024 and for this reason printed a 2024 calender - the front page of which you see here. Our aim was to thank our clients and trademark, design, copyright and patent friends from around the world with a gift that would bring joy all year around. In 2024. LexDellmeier celebrates its firm’s anniversary on 1 May 2024. This calendar shows our passion for our work with clients and IP as well as for our hometown Munich, Germany – one of the major hubs for intellectual property in Europe. In order to see the calander and the pictures electronically, please see: https://monochrome-fineart.de/referenzen

Thank you, Ralf Gebhardt – for all your hard work, patience and advice in creating this special calendar for LexDellmeier – Intellectual Property Law Firm. It has been a great pleasure and honor working with such a fantastic photographer. With a passion for photography, he loves to search for images in nature, mountains and cities. His entire portfolio can be viewed on his website and is available as a limited edition in gallery quality. For more photographs and pictures please see his website at: www.monochrome-fineart.de

Some interesting and fun facts about LexDellmeier:

- We all still LOVE our job(s) and are PASSIONATE about intellectual property and our clients.

- Our "founding" office manager Elisabeth (and my first employee) still works at LexDellmeier (special thanks from my side here - could not have done it without her or the other long-standing team members, such as Andrea, Karolin, Eva and all the others on the team).

- LexDellmeier has an office dog "Ben" - a dachshund - who comes to work every day - cheering everyone up in the office.

- Working paperless for many, many years helped us get through the pandemic and supported all lawyers and staff members by being to be able to work remote.

- Winning three large new clients in 2022/2023 with over 1,500 trademarks (and beating some of our large IP firm competitors in tenders - so-called "beauty contests") has made us really proud and makes us work even harder.

- State of the art technology and letting clients have access to their files has really given the firm a boost in the past 15 years.

NOTICE: If anyone we know or who knows us did not receive a calender - this might be caused to either a delay or loss via the German Post Office (which seems to have happened). We still have a few calenders at the office. Please send a short personal message to me via LinkedIn or via email to info(a)lexdellmeier.com and we will send you one - or, alternatively, look at the calendar online at: https://monochrome-fineart.de/referenzen 

Protecting slogans as trademarks is becoming more difficult. The European Union Intellectual Property Office’s (EUIPO’s) Board of Appeal (BoA) has dealt with the question of  registrability of slogans as trademarks in no less than three decisions recently. 

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The slogans concerned were:

-    “IN PURSUIT OF ANSWERS” (case R 2424/2022-4, decision of 8 August 2023)
goods/services: a.o. diagnostic test kits (class 10) and diagnostic and analytical testing services (class 42)
-    “VISION OF TOMORROW” (case R 1707/2022-4, decision of 8 August 2023)
goods/services: a.o. business consultation services in relation the optical sector (class 35)
-    “GUTER GESCHMACK GUTES GEWISSEN” (English: „good taste good conscience”) (case R 883/2023-1, decision of 14 August 2023)
goods/services: a.o. liver; charcuterie; sausages (class 29) and meat pies (class 30)

1.    EUIPO’s examination criteria

In all three cases, the EUIPO’s basically argued as follows: 
-    A trademark which is devoid of any distinctive character is not to be registered.
-    A trademark has distinctive character when it serves to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and thus distinguishing the goods or services from those of other undertakings.
-    As regards signs which are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded per se.
-    It is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of signs.
-    A trademark is devoid of distinctive character if its semantic content indicates to the consumer a characteristic of the product or service relating to its market value which comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of origin.
-    The question whether a sign has distinctive character must be assesses by reference to the goods or services in question and the perception of the relevant public.

So far, so good. However, the EUIPO also claimed in the above cases:

-    A higher level of attention and knowledge of the relevant public does not necessarily imply that a sign is less subject to any absolute grounds for refusal. In fact, it can be quite the contrary since well-informed consumers do not see purely promotional indications as decisive.

So, the BoA on the one hand acknowledges that actually no stricter examination criteria should apply with respect to slogans. However,  the fact that the relevant public does not necessarily perceive each category in the same way and therefore, it may prove more difficult to establish distinctiveness for some categories of trademarks than for others…

… resulting de facto in: stricter criteria for slogan marks than for other categories of trademarks.

2.    The slogans at issue

Let us take a closer look at what the EUIPO’s BoA had to say to the three slogans at issue, all of which were  refused to be registered as trademarks with the argument of being non-distinctive:

1)    “GUTER GESCHMACK GUTES GEWISSEN” (English translation: “good taste good conscience”) 
goods/services: a.o. liver; charcuterie; sausages (class 29) and meat pies (class 30)
-    The sign lacks distinctiveness, even if it is a tautogram. The average consumer will not even notice that it is a tautogram, since there is no reason for a deeper analysis.
-    The goods are everyday goods which are bought quickly and without great attention. The level of attention will be low. 
-    The sign is a mere laudatory slogan indicating that the goods taste good and the consumer is allowed to have a good conscience when consuming them.

2)    “VISION OF TOMORROW” 
goods/services: a.o. business consultation services in relation the optical sector (class 35)
-    The sign lacks distinctiveness, even if it may contain different meanings, as “vision” may not only be understood as “perspective”, but (as the applicant explained) also as “power of imagination“ and as “ability to see”. The two latter definitions do not have a bearing on the distinctiveness of the sign, as the message remains purely promotional.
-    Regardless how the word “vision” is understood, the message remains that the services in question are related to the optical industry and that they are provided in such a way that they incorporate the most innovative methods and standards.

3)    “IN PURSUIT OF ANSWERS”
goods/services: a.o. diagnostic test kits (class 10) and diagnostic and analytical testing services (class 42)
-    The sign lacks distinctiveness, as it will be understood by the relevant public (whose attention will be above average) as “trying to achieve a solution to a problem”. The purpose of the goods/services at issue is to provide an answer/solution to a health-related problem or the diagnosis of a disease or condition. Hence, the addressed public will see a direct link to the contested goods/services.
-    The relevant public does not expect promotional signs to be precise or to fully describe the characteristics of the goods/services.

3.    LexDellmeier Comment

The slogan “GUTER GESCHMACK GUTES GEWISSEN” is – admittedly – descriptive for food products. The BoA consequently denied trademark protection. 

The two other cases are in our view open to discussion. 

In “VISION OF TOMORROW”, the EUIPO acknowledges that this sign may be understood in three (!) ways with completely different meanings. So, there could be three consumers understanding the sign in different ways. According to the BoA, This is still not sufficient for the required “minimum level of distinctiveness”. 

And honestly, the EUIPO takes the cake when translating “IN PURSUIT OF ANSWERS” into “trying to achieve a solution to a problem”. An answer is not always a solution to a problem. When for example a testing kit – let’s say a pregnancy test – is used by the consumer – and it tests positive, it only says “yes”. While “yes” may be an answer, it is far from being the “solution” to a “problem”… 

However, all this is of course a matter of finding and tailoring arguments. . From the perspective of a trademark lawyer, the only conclusion that can be drawn here is that EUIPO seems to become even  stricter (as it used to be already) when it comes to the question of registrability of slogan marks.

Protection of slogans as trademarks differ around the world. In case of questions to protection of trademarks and/or slogans in Germany or the EU, please feel free to contact us at: info@lexdellmeier.com
 

All these small Gimmicks – Trademark Infringement?

Vacation time. Travelling time. Hamburg. Miniatur Wunderland - the world´s largest model railway. An amazing place to spend a whole day, discovering all the small gimmicks that the Wunderland crew has built and is still continuing to expand. Looking at all the trademarks used, one might wonder if this could be considered trademark infringement. Earlier this year, the German Federal Supreme Court (BGH) had to decide about a similar question and we would like to share the decision.

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(Source:  BGH, I ZR 86/22, Decision of 12 January 2023)

The last time I was at Miniatur Wunderland in Hamburg, I overheard a young boy telling his dad how amazing it was to see all these real-life places, trains, cars, buildings and more. Obviously, he had just discovered a truck with advertisement for a product he knew and he could not wait to find more. His dad responded that he also liked to look out for signs, designations, trademarks, comic figures and the like that he knew, but that he was not sure if Miniatur Wunderland was really allowed to use all these references to real-life designations and landmarks as they might be protected by third party intellectual property. Hearing these words brought to mind that the German Federal Supreme Court (BGH) had just decided about a similar question earlier this year.

BACKGROUND

The court’s decision of 12 January 2023 (see here) concerned use of German Trademark No. 30 2008 055 294

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and German Trademark No. 30 2009 028 020

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both registered since 2008 and 2009, respectively, for goods and services in logistics and transport covering Classes 9, 35, 39 and 42.

The trademark owner had sued a company specializing in scale modeling and in particular in the sale of models of landscapes, buildings and vehicles, including the following truck and warehouse models:

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(Source:  BGH, I ZR 86/22, Decision of 12 January 2023, see here)

The claims were based on an alleged infringement of the abovementioned trademarks being well-known and reputed. The trademark owner won the first instance but lost on appeal. It then took the case to the BGH for review.

DECISION

In accordance with existing case law, the BGH rejected this further appeal and confirmed that use of the registered “DACHSER” marks on model toys was no trademark infringement. It held

• that detailed replicas have been existing in scale model toy construction for decades and that the public was expecting them to be as close to the original as possible;
• that there was a legitimate interest in replicating a vehicle that exists in reality and affixing to it not only the trademark of the manufacturer of the vehicle, but also trademarks that companies use on such vehicles for the purpose of advertising their services;
• that it is no exploitation of the reputation of a well-known service mark "in an unfair manner" if a truck model faithfully reproduced in detail the image of the well-known mark in the same place where it was shown on real-life trucks for advertising purposes;
• that there was no difference in consumer expectation regarding replicas of toy cars and other scale modeling items like buildings;
• that there is a justified interest of toy manufacturers to be able to sell not only vehicles but also buildings as scale models on which well-known trademarks are affixed, insofar as they represent a miniature representation of reality;
• that, depending on the circumstances of the individual case, it may be sufficient for toy buildings if the scale model adopts the design features that are decisive for the corporate identity of a company, including the logo, so that the public recognizes in the model the replica of a building of the trademark owner that typically occurs in reality.

So, overall, no reason for the dad of the young boy mentioned above to worry about trademark infringement by use of replica trucks, trains, buildings and the like.

Are you a fan of Miniatur Wunderland and would like to share your thoughts on the above, let us know. If you are a trademark owner and would like to discuss a possibly infringing use of your trademarks by someone else, you are also welcome to contact us by phone at 089 55 879 870 or by email at info@lexdellmeier.com.