The German Federal Patent Court clarified with its judgment (Judgment dated 5 August 2014; Case No.: 27 W (pat) 18/14) in the case “BOSCH” vs. “boshi” that likelihood of confusion is only given if various factors are cumulatively applicable: The similarity of the goods and services, script, sound and meaning of both trademarks and the reputation of the older trademark. Background of the Case and Subject Matter In April 2011 the German Startup – myboshi GmbH – filed an application for the word mark “boshi” (German TM No. 30 2011 018269) for – among others – clothing and toys. Thereon, the German manufacturer Robert Bosch GmbH filed an opposition based on their word mark “BOSCH” (German TM No.: 300 71 712) for the same goods. The German Patent and Trademark Office decided that “boshi” can be registered because there is no likelihood of confusion to “BOSCH”. Below you can see the signs used in commerce of both companies. [[{"type":"media","fid":"4455","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter size-full wp-image-1940","typeof":"foaf:Image","style":"","width":"600","height":"162"}}]]   Decision The German Federal Patent Court compared the signs and came to the result that there is no likelihood of confusion. Likelihood of confusion is assessed on the basis of if there is a high risk that the targeted consumers must assume that the relevant goods and services derive from the same or connected companies. Therefore, various factors need to be taken into account. On the one hand side, the specific goods and services of the applied for mark and the earlier sign need to be evaluated. On the other hand, the script, sound and meaning of the two trademarks have to be compared. Also the reputation of the older trademark can be taken into account. The court compared the signs and took note of the fact that, both parties use the trademarks for the same goods and services. But the phonetic and visual differences between the two signs are sufficient in order to rule out the similarity of the goods and services. Therefore, the court pointed out, that “boshi” is completely written in lowercases while “BOSCH” is completely written in uppercases. Furthermore, the rare combination “sh” in “boshi” creates an unusual script. Moreover, the sound is not the same because “boshi” ends with “i”. Besides, the word “BOSCH” is a family name and “boshi” is a neologism which is created out of the japanese word „boushi“ for cap. Finally, the court pointed out, that “BOSCH” may have a high reputation for electronics but, not for clothing and toys. Consequently, the court decided that there is no likelihood of confusion between the trademarks.

[[{"type":"media","fid":"4452","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1927 alignright","typeof":"foaf:Image","style":"","width":"122","height":"174"}}]] The World Intellectual Property Organization (WIPO), a specialized agency of the United Nations headquartered in Geneva, Switzerland, has just published the Global Innovation Index (GII) Report. The report provides a wide range of indicators covering the following areas of intellectual property: patents, utility models, trademarks, industrial designs, microorganisms and plant variety protection. Trademarks As you can see from the figures below, the total number of classes specified in applications for the first time surpassed the seven million. The ranking of the top 20 Trademark Offices was similar to that in 2012. China had the highest trademarking activity with 1.88 million class counts, followed by the United States with 486,128 million class counts and Europe (OHIM) with 324,749 million class counts. Only the Russian Federation edged in front of Turkey and therefore, enters into the top five. In addition, the Republic of Korea and India surpassed Germany. [[{"type":"media","fid":"4447","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter size-full wp-image-1922","typeof":"foaf:Image","style":"","width":"600","height":"221"}}]] As you can see below, trademark filings were equally low and stable until the mid-1980s. Chinese filings took off in the 1990s. Filings in the US have doubled since 1995 despite the decline at the end of the dot-com era in 2001 and 2002 and the financial crisis in 2008 and 2009. [[{"type":"media","fid":"4448","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter size-full wp-image-1923","typeof":"foaf:Image","style":"","width":"600","height":"241"}}]]   Below you can see the trademark applications by sector (Top Three Sectors) and origin. Trademarks relating to the service class that is associated with business management and administration have continued to the top. They are followed by the goods class that cover clothing and the research and technology class relating, among others, to scientific, photographic and computers.   [[{"type":"media","fid":"4449","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter size-full wp-image-1924","typeof":"foaf:Image","style":"","width":"600","height":"198"}}]] Patents In total, innovators filed 2.57 million patent applications worldwide in 2013. This is a 9% increase in comparison to 2012. The global total consists of 1.71 million resident filings and 0.86 million non-resident filings. China (32.1% of world total) and the US (22.3% of world total) received more than half of the global filings, while the European Patent Office (EPO) has to recognize that, its share of the world total felt to 5.8%. Below you can see the top three technology fields for the top ten origins. In total, computer technology (7.6% of total) are the most published applications worldwide, followed by electrical machinery (7.2% of total), measurement (4.7% of total), digital communication (4.5% of total) and medical technology (4.3% of total).   [[{"type":"media","fid":"4450","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter wp-image-1925","typeof":"foaf:Image","style":"","width":"606","height":"205"}}]]   Below you can see the patent applications at the Top10 offices in 2013. As the figure shows, China’s State Intellectual Property Office (SIPO) maintained its position as Top Patent Office in the world with 825,136 filings, followed by the United States with 571,612 filings and Japan by 328,436 filings. The European Patent Office (EPO) received fewer applications in 2013 than in 2012. [[{"type":"media","fid":"4451","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter size-full wp-image-1926","typeof":"foaf:Image","style":"","width":"600","height":"217"}}]]   For more detailed information and the full report including charts, overviews and other statistics please see: http://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2014.pdf

2014 was an exciting year for our law firm: We are especially delighted that Mrs. Hannah Eckermann and Mrs. Marlene Treffler joined our team. Besides, we are lucky that we could expand and transmit our knowledge to others at numerous seminars and conferences in 2014. Also, we earned the Corporate INTL Legal Award 2014 in the Category: Boutique Intellectual Property Law Firm of the Year 2014 in Germany Furthermore, we are very proud that we gained a lot of new readers of our IP blog and we want to thank you for all the nice comments you left for us. Moreover, we created a Newsletter and a Facebook account. With this in mind, we wish you all a Happy New Year.

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Christmas is a time for tranquility, contemplation and the family. But, it is also a time of consumption: Many people receive a 13th salary or holiday bonus which they spend on presents, decoration and at Christmas markets. Approx 20% of the trades revenue is generated on and around Christmas. Therefore, companies try to “trademark” Christmas. As a result of that, competition is fierce during the holiday season. The office responsible for the registrations of trademarks in the EU, OHIM, reports numerous registered trademarks that incorporate “Christmas”. For example, HELLO SANTA (USPTO: Serial No.: 78655862) for toy telephones designed to simulate calls to Santa Clause in the North Pole; THE CHRISTMAS FACTORY (OHIM: CTM No.: 008726101) for Christmas decoration; the movie heading THE NIGHTMARE BEFORE CHRISTMAS (OHIM: CTM No.:  004601183) and WHITE CHRISTMAS (OHIM: CTM No.: 012140794). Below you can see some further holiday season word / device marks:   [[{"type":"media","fid":"4437","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone wp-image-1883","typeof":"foaf:Image","style":"","width":"97","height":"171"}}]][[{"type":"media","fid":"4438","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone wp-image-1884","typeof":"foaf:Image","style":"","width":"272","height":"144"}}]][[{"type":"media","fid":"4439","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone wp-image-1885","typeof":"foaf:Image","style":"","width":"130","height":"149"}}]]   OHIM: CTM No.: 004586863; OHIM: CTM No.: 003362845; OHIM: CTM No.: 012063624 But, there are also many Christmas combinations which were not able to be registered as trademarks: For example, the United States Patent and Trademark Office (USPTO) decided “MERRY CHRISTMAS” (Serial No. 78161138) for non-alcoholic juice beverages is not distinctive and gives no indication for the origin of the product. The Office for Harmonization in the Internal Market (OHIM) refused, for similar reasons, the applications "CHRISTMAS BLEND" (CTMA No.: 000595140) for coffee and “Silent night holy night - the Christmas concert” (CTMA No.: 006442487) for picture and audio carriers. Therefore, it is important to think and plan a “Christmas Trademark” carefully. Not every name is protectable as a trademark. And, the question always remains, how far does its protection in case of infringement reach.

Brand Finance Football 50 is an annual study conducted by one of the leading brand valuation and strategy consultancies. The study determines which of the word largest football clubs have the most powerful and valuable brands. As you can see below, this year FC Bayern München maintained its No. 1 position with a brand value of 896 million US-Dollars. This year's Champions League Winner, Real Madrid, and the UK football club, Manchester United, follow on second and third position. [[{"type":"media","fid":"4434","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1872 aligncenter","typeof":"foaf:Image","style":"","width":"369","height":"176"}}]] Bayern München made its way up to the top and reached ist No. 1 position for the first time last year. [[{"type":"media","fid":"4435","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1873 aligncenter","typeof":"foaf:Image","style":"","width":"306","height":"345"}}]] But, according to Country, the most valuable football brands are still from England with a total value of 3.790 million US-Dollars. Germany and Spain rank as No. 2 and No. 3. [[{"type":"media","fid":"4436","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1874 aligncenter","typeof":"foaf:Image","style":"","width":"366","height":"254"}}]] For more information please see BrandFinance’s just published report of 2014 – which includes an executive summary, charts, brand value and much more: http://www.brandfinance.com/images/upload/brandfinance_football_50_2014_web.pdf

The European General Court (EGC) ruled that the three dimensional shape of the Rubik‘s Cube as a Community trademark is valid (Judgment dated 25 November 2014; Case No.: T‑450/09). Background of the Case and Subject Matter In 1974, a young Professor of Architecture in Budapest (Hungary) named Erno Rubik created the multi-colored “three-dimensional puzzles” you can see below. The so called “Rubik's Cube” can be twisted and turned around without falling apart. The aim is to make each side of the cube a single color. Seven Towns, a UK company which manages the intellectual property rights relating to the “Rubik’s Cube”, registered the shape of the cube as a three-dimensional Community Trademark (No: 162784), in April 1999. In 2006, Simba Toys, a German toy manufacturer, applied at the Office for Harmonization in the Internal Market (OHIM) to have the three-dimensional trademark cancelled. Simba Toys is of the opinion that the cube involves a technical solution consisting of its rotating capability and such a solution may only be protected as a patent and not as a trademark. OHIM dismissed Simba Toy’s cancellation request. Therefore, Simba Toys brought a final action before the EGC against the decision of OHIM. [[{"type":"media","fid":"4433","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1869 aligncenter","typeof":"foaf:Image","style":"","width":"373","height":"328"}}]] Decision of the Court The EGC recognized that the famous Rubik’s Cube is a valid three-dimensional trademark. First, the Court pointed out that the essential characteristics of the contested trademark are the “cubic grid structure”, namely the cube per se and the grid structure which appears on each of its surfaces. According to the Court, the rotating capability of the vertical and horizontal lattices of the Rubik’s Cube does not result from the black lines or the grid structure. Its capability is the result of an internal mechanism which is invisible on its graphic representations. Therefore, the registration of the shape of the Rubik’s Cube as a Community Trademark cannot be rejected because the shape does not include any technical function. The Court determined that the trademark does not allow its holder to prohibit others from selling different types of three-dimensional puzzles that have a rotating capability. Instead, of the marketing monopoly is limited to three-dimensional puzzles that have the shape of a cube with surfaces which bear a grid structure (as seen above). Finally, the Court came to the result that the cubic grid structure of the trademark differs from the structure of other three-dimensional puzzles on the market. Therefore, the structure has a distinctive character which enables consumers to see the structure as an indication of the origin of the product.

The VDMA (Verband Deutscher Maschinen- und Anlagenbau e.V.) is a German engineering association which is based in Frankfurt and has political offices in Brussels and Berlin. With over 3.100 member companies the VDMA is one of the largest industrial associations in Europe. The VDMA covers the entire engineering sector from component manufacturers, machine builders, plant erectors, system suppliers and system integrators through to service providers. It published its Product Piracy Study 2014 in its 7th edition this year. The data was collected between February 3rd and March 10th 2014 among VDMA company members. This year 337 companies from all over Europe took part at the study. With 71 % of companies affected, the threat has reached a new record high in the mechanical engineering industry. Larger companies with more than 500 employees are particularly frequent targets. The damage to German mechanical engineering businesses in 2014 is estimated at 7.9 billion Euros. Revenue in this dimension would represent approx. 38,000 new jobs in mechanical engineering. As you can see below, the producers of woodworking machines are particularly frequent victims of product pirates. Other preferred victims are the textile and agricultural machinery. [[{"type":"media","fid":"4427","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1860 aligncenter","typeof":"foaf:Image","style":"","width":"288","height":"357"}}]] Most of the counterfeiters imitate components. Followed by design imitations but, also copying entire machines has become very popular. [[{"type":"media","fid":"4428","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1861 aligncenter","typeof":"foaf:Image","style":"","width":"315","height":"359"}}]] China is world’s single largest market for counterfeit products. [[{"type":"media","fid":"4429","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1862 aligncenter","typeof":"foaf:Image","style":"","width":"403","height":"231"}}]] Companies take care and take preventative measures to protect themselves against counterfeiters. Therefore, more than 80 percent of the companies rely on registering intellectual property rights, for example, in the form of patents or trademarks. [[{"type":"media","fid":"4430","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1863 aligncenter","typeof":"foaf:Image","style":"","width":"337","height":"413"}}]]

When counterfeits are discovered by the owner of the original products, 46 % will take legal action.

[[{"type":"media","fid":"4431","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-1864 aligncenter","typeof":"foaf:Image","style":"","width":"386","height":"189"}}]] For more detailed information and the full report including charts, overviews and other statistics please see: http://www.vdma.org/article/-/articleview/3842960

The EGC (European General Court) decided that a wavy line is not distinctive for Vans and not registrable as a Community Trademark (Judgment dated 6 November 2014; Case No.: T-53/13). Background of the Case and Subject Matter In September 2011 the American shoe manufacturer – VANS Inc. – filed an application for Community Trademark No. 008543183 at the Office for Harmonization in the Internal Market (OHIM) for the following word/device mark for - among others - clothing:

 [[{"type":"media","fid":"4426","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone wp-image-1857","typeof":"foaf:Image","style":"","width":"273","height":"115"}}]]

Decision of the Court Both OHIM and the EGC rejected its registrability. First of all, the court argued that the wavy line is not sufficiently distinctive to be recognized by the general public as an indication of the origin of the product. In that regard, the court determined that, the goods covered by the mark applied for were aimed at the general public, which would pay an average degree of attention to them at the time of purchase. Furthermore, it noticed that that public would not meticulously analyze the characteristics of the mark applied for, but would recall only the concept of a wavy line, which is too vague to identify the goods as coming from a certain producer. Finally, the court pointed out that lines and stripes are commonly used within the clothing industry. Therefore, the relevant public may well take the view that the wavy line is simply an ornamental pattern and not a indication of origin. Secondly, the court found that the fact that the mark applied for had already been registered in certain Member States was irrelevant. The Community Trademark system is autonomous and, in addition to that, the Board of Appeal is not bound by previous or erroneous decisions made by OHIM, since each case must be assessed on its own merits. Finally, the applicant was not able to prove that the wavy line has such a high reputation in the European Union be able to claim acquired distinctiveness in order to get the trademark registerd. The applicant just submitted as evidence (intended to prove the distinctiveness acquired through use of the trademark applied for) an affidavit of its Vice President of Events, Promotions which shows that the sign applied for has been used since 1977. The various documents submitted were not sufficient in order to prove the sign in question was perceived by the relevant public as an indication of the commercial origin for the goods in question throughout the European Union.

The Office for Harmonization in the Internal Market (OHIM) celebrated its 20^th anniversary on 17 November 2014 in the new auditorium of OHIM's premises, in Alicante, Spain. On this day OHIM commemorates 20 years of the Office and also the opening of OHIM's new building. History of OHIM OHIM is the trademark and designs registry for the internal market of the European Union (EU). It was set up in 1994 in Alicante, Spain. The decentralized agency registers Community Trademarks (CTM) since 1996, and Registered Community Designs (RCD) since 2003. The CTMs and the RCDs are valid throughout each of the currently 28 member states of the EU. It has received 1.3 million CTM applications from businesses within the EU and all over the world since 1996. Thus, OHIM has developed to be the largest EU agency. Below you can see a timeline with the most important changes at OHIM since 1994: [[{"type":"media","fid":"4423","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone wp-image-1843","typeof":"foaf:Image","style":"","width":"625","height":"350"}}]] Allocation of OHIM The Office is a public establishment which enjoys legal, administrative and financial independence. OHIM was created under EU law and has an own legal personality. The Court of Justice of the European Union is responsible for overseeing the legality of the Office's decisions. The Office is responsible for its budget. The budget derived mainly from registration fees and fees for the renewal of trademark protection. For more information to the 20^th anniversary of OHIM, please click on the following link: https://oami.europa.eu/ohimportal/de/twenty-years