YUMMY OR DANGEROUS? PEANUT EXTASY

Peanuts… Yummy! But what if the product designation does not just say „PEANUTS“, but „PEANUT EXTASY“? My first thought as a consumer would still be „Yummy“ expecting that the product contains a high percentage of peanuts and that it, therefore, tastes very „peanutty“ and that it can take you to a state of ecstasy when eating it. The European Union Intellectual Property Office (EUIPO) saw this differently and rejected an EU trademark application for the term „PEANUT EXTASY“.

BACKGROUND

On 24 September 2021, EU Trademark Application No. 018565187 for the word mark „PEANUT EXTASY“ was filed with the EUIPO for different foodstuff and confectionary in Classes 29 and 30. The EUIPO rejected the application saying it was not eligible for registration pursuant to Article 7(1)(f) and 7(2) EUTMR. It argued that part of the relevant public, namely, the French-speaking public, would understand the word „EXTASY“ as a reference to the illicit drug EXTASY and that the application was therefore contrary to accepted principles of morality and could not be registered as a trademark.

DECISION OF THE BOARD OF APPEAL

In its decision of 11 November 2022, the Fourth Board of Appeal of the EUIPO confirmed the examiner’s decision (R 1005/2022-4). It stated that the fight against drugs was a very important objective of the European Union and its member states and that “the Office should not assist positively those who wish to promote their commercial objectives by means of trade marks which are insulting certain fundamental values of a civilised society.” It held that a significant part of the French-speaking general public in the EU will easily understand the word “EXTASY” and make an immediate direct reference to a hard drug. The mark “PEANUT EXTASY” would be perceived by “a reasonable consumer with an average threshold of sensitivity and tolerance” as a message promoting the use of illicit drugs for recreational purposes. As this was contrary to accepted principles of morality, the application could not get registered as a trademark.

The applicant argued that the term “EXTASY” has more than just one meaning and that one of these other meanings was a reference to a state of ecstasy with enthusiasm and happiness and that this other meaning would be the first to come to a consumer’s mind when seeing “PEANUT EXTASY” – not any meaning related to drugs. Without discussing this argument in detail, the Board of Appeal did not consider that the meaning of “extasy” as an illicit drug might not be the first and foremost meaning coming to a French-speaking consumer’s mind when reading the words “PEANUT EXTASY” on foodstuff. Instead, it concluded that the term ‘EXTASY’ was understood by the relevant public as an indication of a type of hard drug and that this fact alone was sufficient to find an absolute ground for refusal.

CONCLUSION

I am definitely with the applicant: The consumption patterns of ecstasy and chocolate bars vary significantly. And I will definitely not fall for the illicit drug just because of seeing the word on foodstuff and confectionary. It sometimes feels like the “well informed, reasonably observant and circumspect average consumer” is not considered well informed, reasonably observant, or circumspect.

How do you feel about the decision? Would you be “shocked” by seeing the word “EXTASY” on a chocolate bar – like the EUIPO argues? Would a connection between a chocolate bar called “PEANUT EXTASY” and the illicit drug ECSTASY come to your mind at all when seeing the mark “PEANUT EXTASY”? Let us know what you think. We welcome your comments and remain at your disposal for further discussion of the issue by email at info@lexdellmeier.com or by phone at +49 89 55 87 98 70.

When you go out to eat and you choose a drink with your meal, would go for mineral water, wine or beer? The answer, of course, depends on your individual preferences and habits. However, when it comes to trademarks, the question might become of interest when the degree of similarity between mineral water, wine and beer has to be assessed and decided in infringement, opposition or invalidity proceedings. The decisions of the different trademark offices and courts are not always consistent and often unpredictable. At least regarding the degree of similarity between “beers” and other beverages, you may now find some guidance by the European Union Intellectual Property Office (EUIPO).

Background

In the context of its Boards of Appeal Action Plan 2021-2026, the EUIPO has published six (6) reports to date which aim at enhancing consistency, coherence and predictability of the work of the Boards of Appeal. The documents reflect existing case law from the Court of Justice, the General Court and the Boards of Appeal, but have no binding effect. However, by identifying and analyzing relevant case law on a specific topic, they intend to enhance predictability of decisions and legal certainty by increasing knowledge, awareness and transparency among the various stakeholders.

So far, the Boards of Appeal Case-law Research Reports have analyzed the following issues:

• The distinctive character of slogans
• Trademarks contrary to public policy or accepted principles of morality
• Similarity between foodstuffs/drinks and services for providing food and drink
• Proof of technical function of a design under Article 8(1) CDR
• Identification of the features of a design under Article 8(1) CDR
• Similarity between beers and other beverages

All reports are available on the EUIPO website at https://euipo.europa.eu/ohimportal/en/boards-of-appeal.

The latest Research Report

The latest research report focuses on the comparison between „beers“ as contained in Class 32 of the Nice Classification and “other beverages” of all kinds contained in Classes 29, 30, 32 and 33 like

• milk and milk-based beverages (Class 29),
• beverages with coffee, cocoa, chocolate or tea base (Class 30),
• any non-alcoholic beverages including mineral waters and fruit juices (Class 32),
• any alcoholic beverages including wine (Class 33).

After analyzing current trends in case law of the Court of Justice, the General Court and the EUIPO’s Boards of Appeal including discrepancies in the degree of similarity found by the different bodies, the research report suggests the following degrees of similarity:

• a high degree of similarity between „beers“ and „non-alcoholic beverages“ of Class 32 in general,
• a high degree of similarity between “beers” and “alcoholic beverages, except beers” [general category] in Class 33;
• a high degree of similarity between “beers” and low-alcohol content beverages in Class 33 such as “cider, perry and alcopops”;
• an average degree of similarity between „beers“ and specific non-alcoholic beverages in Class 32 such as „mineral waters, juices, soft drinks, energy drinks“,
• a low degree of similarity between “beers” and “wines”;
• a low degree of similarity or dissimilarity between “beers” and high-alcohol content spirits and liqueurs;
• dissimilarity between „beers“ and „non-alcoholic beverages“ in Classes 29 and 30 such as „coffee, tea, cocoa, milk-based beverages“.

Conclusion

When assessing the similarity of goods and services in trademark infringement, opposition or invalidity proceedings, all relevant factors relating to those goods and services need to be considered. It is settled case law that these factors include, in alia, their nature, their intended purpose, their method of use, whether they are in competition with each other or are complementary, the distribution channels of the goods or services concerned, and whether or not the relevant public might consider it usual for the goods at issue to be sold under the same trademark. If the latter is not the case, this is a strong indication that there is no similarity between them.

When discussing all of these factors in arguing a specific degree of similarity between “beers” and other beverages, the latest research report of the Boards of Appeal can serve as guidance. It should, however, not be taken as a fact since market practices and the consumers’ perception of market practices can change over time – and this may also change the result of the comparison of “beers” and other beverages. CHEERS!

Should you like to discuss the similarity of specific goods and services with us, do not hesitate to contact us by email to info@lexdellmeier.com or by phone: +49 89 55 87 98 70.

Imagine you are the owner of a registered trademark and you have invested significant amounts of money into establishing your trademark and related product(s) in the market. Would it not be very annoying to see third parties offering replacement parts or accessories for your product(s) using your registered mark? It definitely is so for the Philips Group, one of the world's leading developers and manufacturers of electric shavers. Read here what the Higher Regional Court of Frankfurt recently decided in this case (OLG Frankfurt, 6 W 28/22, Decision of 3 May 2022).

[Screenshot taken at www.amazon.de on 25 September 2022;

similar offer to the one decided upon by the Higher Regional Court of Frankfurt]

Background

Earlier this year, a German subsidiary of the Philips Group tried obtaining a preliminary injunction against a Chinese competitor offering replacement shaver heads on its website by mentioning that they fit certain razors originating from the Philips Group. In its advertisement, it used a sign similar to a registered International Registration from Philips Group containing the word part „Philips“ and protected, among others, for razors and accessories.

Decision of the Higher Regional Court of Frankfurt

The Higher Regional Court of Frankfurt, in its decision of 3 May 2022, decided that use of a third party trademark in advertisements for replacement goods was no trademark infringement as long as it was in line with honest practices in trade and commerce.

According to settled case law of the European Court of Justice (ECJ), use of a third party mark is not in accordance with honest practices in trade and commerce if, for instance,

• it gives rise to the belief that there is a commercial relationship between the third party and the proprietor of the registered trademark;
• it takes unfair advantage of the distinctive character or repute of the registered mark, thus deminishing the registered mark‘s value;
• it disparages or discredits the registered trademark;
• the third party product is presented as an imitation or replica of the original product by bearing the mark of which its manufacturer is not the proprietor (see ECJ, Judgment of 17 March 2005, C-228/03 - Gillette, paragraph 49).

Regarding the shaver heads, the Court in Frankfurt acknowledged that use of a registered trademark of the original manufacturer was generally not allowed and considered trademark infringement. At the same time, it confirmed the necessity to refer to the original manufacturer’s trademark to let the consumer know that its own goods can be used as replacements for individual parts of the original product. Such reference was found allowed as it did not create the impression that the offered goods were original replacement parts from the trademark owner. The preliminary injunction sought for was denied.

Conclusion

If a competitor uses the registered trademark of an original manufacturer to say that its goods are non-original replacement parts or accessories for a product manufactured by the trademark owner, the use of the registered mark can be privileged as long as such use is in accordance with honest practices in trade and commerce.

Should you like to receive further information on the legal situation regarding the use of registered trademarks for third party replacement products or accessories or should you like to discuss your own use of somebody else’s mark, do not hesitate to contact us by email to info@lexdellmeier.com or by phone: +49 89 55 87 98 70.

Following a request for a preliminary ruling by the German Federal Court of Justice (BGH) on January 30, 2020 the European Court of Justice (ECJ) ruled on when unregistered designs of individual parts enter into force in the event of disclosure of the overall product.

I. Facts of the case and background information

Ferrari is an Italian automobile manufacturer of luxury sports cars and Formula 1 vehicles. Mansory Design & Holding GmbH (Mansory Design) is a manufacturer of technical exclusive car equipment - mainly for luxury car brands and specializes in the development and distribution of tuning products and accessories.

In the year 2014 Ferrari had launched the FXXK sports car. A costly racing car that is not approved for road traffic in a limited edition at a price of 2.2 million Euros. The special feature is the eye-catching design of its front hood. This is characterized above all by a ”V”-shaped element curving downwards at the front, a fin-like element protruding centrally from this element and a two-layer front spoiler. Ferrari first unveiled its FXX K sports car in a press release on December 2, 2014 featuring the following photographs of the vehicle:

Mansory Design manufactured comparable tuning front components that mirrored the overall impression of the FXX K sports car by Ferrari. Ferrari claimed that the marketing of those components by Mansory Design constitutes an infringement of the rights conferred by one or more unregistered Community designs of which it is the holder.

In its infringement action Ferrari asseted the infringement of the rights arising from several unregistered Community designs (UCDs). The action was based on three unregistered UCDs: the "V"-shaped front bonnet, alternatively the two-layer front spoiler and as a third alternative based on the vehicle as a whole as disclosed in the press release. In addition, Ferrari asserted claims limited to Germany based on supplementary protection of intellectual property under German competition law (§ 4 no. 3 UWG).

The Regional Court of Duesseldorf dismissed the action in its entirety. In the next instance, thef Higher Regional Court of Düsseldorf dismissed Ferrari's appeal on the grounds that only an unregistered UCD had arisen on the sports car published by the press release as an overall product, but, that this had not been infringed by the distribution of the tuning kits in dispute by Mansory Design.

The BGH submitted a request for a preliminary ruling under Article 267 TFEU (Treaty on the Functioning of the European Union) to the ECJ.

II. The issue and legal questions relating to unregistered designs

In the revision procedure the BGH had to deal with the question whether the making available to the public of the image of a product in its entirety also amounts to the making available of the designs of the parts of that product. In principle, the issue is whether unregistered Community designs can arise on individual parts of a product by way of disclosure of an overall representation of the product und if so, which legal standards have to be applied when determining the requirements for protection of these parts or elements.

The BGH submitted the following questions to the ECJ as a request for a preliminary ruling under Article 267 TFEU:

(1)      Can unregistered Community designs in individual parts of a product arise as a result of disclosure of an overall image of a product in accordance with Article 11(1) and the first sentence of Article 11(2) of Regulation No 6/2002 (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs- CDR) ?

(2)      If Question 1 is answered in the affirmative:

What legal criterion is to be applied for the purpose of assessing individual character in accordance with Article 4(2)(b) and Article 6(1) of Regulation [No 6/2002] when determining the overall impression of a component part which – as in the case of a part of a vehicle’s bodywork, for example – is to be incorporated into a complex product? In particular, can the criterion be whether the appearance of the component part, as viewed by an informed user, is not completely lost in the appearance of the complex product, but rather displays a certain autonomy and consistency of form such that it is possible to identify an aesthetic overall impression which is independent of the overall form?

III. Legal starting point
Within the European Union designs can be protected and commercialized without registration on the basis of a so-called unregistered Community design (UCD) right.
An UCD is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. There is no extension of the protection after three years. The act of making available to the public is called ‘disclosure'.

The wording of the Design Regulation abstains from the question whether the protection of the (registered or unregistered) design of a product in its entity automatically includes the isolated protection of its parts or elements.

Pursuant to Article 2 (a) of the CDR a design is protected by an "unregistered Community design", if made available to the public.

The substantive requirements for obtaining design protection in the EU - registered or unregistered -  i.e. novelty and individual character, are the same for products and their parts. For the protection of the appearance of a component part of a complex product, the requirements set out in Art. 4(2) CDR must also be observed. These are visibility when used as intended and novelty and individual character of the visible features of the component part itself.

Pursuant to Art. 11(1) and (2) CDR, protection arises if the design, which in particular meets the requirements of Art. 4 CDR, has been made available to the public within the EU, i.e. if it has been made known, exhibited, used in trade or otherwise disclosed in such a way that it could be known in

However, on the basis of the wording of the CDR the initial question cannot be clarified, so that it was in need of interpretation.

IV. The decision of the ECJ

The ECJ ruled that Article 11(2) CDR must be interpreted as meaning that the making available to the public of images of a product, such as the publication of photographs of a car, entails the making available to the public of a design of a part of that product, within the meaning of Article 3(a) of that regulation, or of a component part of that product, as a complex product, within the meaning of Article 3(c) and Article 4(2) of that regulation, provided that the appearance of that part or component part is clearly identifiable at the time the design is made available. In order for it to be possible to examine whether that appearance satisfies the condition of individual character referred to in Article 6(1) of that regulation, it is necessary that the part or component part in question constitute a visible section of the product or complex product, clearly defined by particular lines, contours, colors, shapes or texture

The ECJ answered the submitted question of the BGH in the affirmative and stated that a design on a part of this product or on a component part of this product as a complex product is made available to the public if illustrations of a product are made available to the public. Thus, by making the images of a product available to the public, designs can be created on the entire product as well as on parts or components without the latter having to be disclosed separately. Further, the ECJ stated that protection arises on condition that the part or component in question represents a visible part of the product or complex product, clearly delimited by lines, contours, colors, shape or a particular surface structure. This requires that the appearance of this part or this structural element of a complex product must be capable of itself creating an overall impression and not be completely lost in the overall product.

V. Conclusion

The Court recognizes that the disclosure of an overall product may give rise to a plurality of unregistered designs in individual sections of the overall product. Contrary to what has been assumed by German case law so far, neither an independent act of disclosure in relation to the respective sub-component is necessary, nor does the sub-component have to show a certain independence and unity of form. In this understanding designers are not required to make available separately each of the parts of their products in respect of which they wish to benefit from unregistered Community design protection. The decision of the ECJ opens up flexible ways and provides broader protection of unregistered design rights and also individual parts.

For more information and the case law cited in this blog article please be referred to the court judgements in German and English:

LG Düsseldorf, Entscheidung vom 20.07.2017 - 14c O 137/16 -

OLG Düsseldorf, Entscheidung vom 06.12.2018 - I-20 U 124/17

BGH, Urteil vom 10. März 2022 - I ZR 1/19

EuGH, Urteil vom 29.10.2021 - C‑123/20

In the digital world of social media platforms – you come across NFTs everywhere. It has even become Collins English Dictionary´s word of the year in 2021. But do you actually know what those three letters truly stand for?

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In the digital world of social media platforms – you come across NFTs everywhere. It has even become Collins English Dictionary´s word of the year in 2021. But do you actually know what those three letters truly stand for?

What is a “NFT”? The meaning behind the three “gold” letters

In general, traditional artworks such as paintings (i.e. Mona Lisa) are valuable because they are one of their kind. Contrary thereto, digital content can easily duplicated thousands of times. The question therefore is: How to own and protect such digital artworks? And the answer is via NFTs.

NFT is an abbreviation for „Non-Fungible-Token” and stands for a digital ownership certificate. It manifests one’s ownership of digital content, such as of original versions of videos, pictures, GIFs or even tweets. The certificate (so-called token) can then be further traded in an auction, or the owner can grant a usage license to others. All these transactions seem to be similar to the marketplace with traditional artworks. However, in comparison to traditional artworks, the certificate does not bear a copyright. The owner only holds the digital token representing the artwork, but not the artwork itself. Another distinction is that the sales are usually made in crypto currencies.

The transaction and official database of owners is then stored on a publicly available ledger called “blockchain”. To sum it up in an easy way: the NFTs are a new sort of “bitcoin” – only not covering digital currency, but digital collectables.

Most famous NFT sales – alias NFT as a source of fortune?

In the age of social media where videos, pictures and GIFs can quickly be shared and go viral– such content does not only make the creator famous within few clicks, but, can also be a source of great fortune. Currently, one of the so far most successful and well-known NFT sales was the clip of “Charlie bit me”. Even though the plot of the video is actually very simple – portraying a baby Charlie biting his brother Harry´s finger – for over the past 14 years the clip has become one of the most looked at videos on YouTube with over 885 million views. And in 2021, the clip then made a record sale when it was sold as a NFT for incredible 588.000 EUR!

However, “Charlie bit me” is not the only example of a great NFT deal – also other NFTs are currently worth millions. To name few other great sales – the famous “Nyan Cat” GIF was sold for ca. 656.000 EUR, the original picture of the so called “Disaster Girl”, Zoë Roth, for ca. 400.000 EUR, the “Overly-Attached Girlfriend” image for ca. 388.000 EUR and the “Side-eyeing Chloe” image for ca. 72.000 EUR. But, not only pictures can be sold as NFTs – for example the co-founder of Twitter, Jack Dorsey, has sold his first ever tweet for approx. 2,7 Million EUR.

Also, in March 2021 the traditional auction house Christie´s held the first digital-only art auction for the purely digital NFT based artwork “The Frist 5000 Days” by the American graphic designer Beeple. The artwork – a collage of thousands of individual daily images – was sold for unbelievable 65,5 Million EUR, positioning the artist among the three most valuable living artists of our time.

The downside of NFTs and legal protection

The NFTs have been around since 2014, but only now they are gaining public awareness – especially in the arts sector. However, the million-dollar business also has some downsides. Many experts question the actual durability and risks accompanying this business as it can “disappear” any time causing monetary damages. Next, the NFT - such as bitcoins - also face some critics with respect to its environmental impact as to maintain the blockchain and to enable the payment in crypto currencies, the process requires a vast amount of energy and resources.

Legal protection in Germany

As stated above, the certificate does not grant its owner a copyright to the artwork with respect to a legal standpoint. The NFT itself does not fulfil the requirements set by the German Copyright Act on “personal spiritual creation”. Also, German copyright is not transferable (as in other countries, e.g. the US). As a result, only the actual artwork enjoys the copyright protection under German law, not the NFT itself. Therefore, the creator of the artwork remains its copyright owner – but by selling the NFT he can grant usage rights (e.g. via a license). 

It remains to be seen if and how the protection will change within the next years. LexDellmeier if following the changes and will report on different aspects of NFTs in the upcoming blog articles.

#nft #nfts #copyright #monalisa #artwork #nontangiblefunds #licensing

1. Subject matter and background of the action

In its decision of 29 June 2022, the European General Court (EGC) upholds the contested decision of the Board of Appeal of EUIPO dated 6 April  2021. According to the EGC, the EUIPO’s Board of Appeal  correctly ruled an infringement of Art. 8 (5) of the regulation on the European Union Trademark (EUTMR).The basis of the Board of Appeal's decision is Puma SE's opposition proceedings dated 1 August 2018 01.08.2018 against the registration of the EU Trademark “PLUMAflex by Road” (word/device mark) applied for by the applicant on 27 March2018.

The following trademarks are the subject of the case for the goods footwear (except orthopedic footwear):

                           vs.         

EU Trademark No. 12579728                        EU Trademark Application No. OJ 2017 L 154

2. Legal background

The present judgment of the EGC deals with the applicability of Article 8(5) EUTMR and its requirements. This provision is a relative ground for refusal which may be invoked by third parties against the registration of a trademark in opposition proceedings.

The wording of Art. 8(5) EUTMR reads as follows:

"Upon opposition by the proprietor of a registered earlier mark within the meaning of paragraph 2, the mark applied for shall not be registered even if it is identical with or similar to an earlier mark, regardless of whether the goods or services for which it is to be registered are identical with, similar to or dissimilar to those for which an earlier mark is registered if, in the case of an earlier Union mark, it is a mark with a reputation in the Union and, in the case of an earlier national mark, it is a mark with a reputation in the Member State concerned, and the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. "

The ECG emphasizes that for the applicability of Art. 8(5) EUTMR, the following cumulative conditions must be fulfilled:

• identity or similarity of the marks in dispute
• a certain degree of recognition of the earlier mark

likelihood that, in the absence of due cause, the mark to be registered will take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark addition to the conditions required by the wording of the provision, according to the ECJ, the following additional circumstances are relevant:

• Art. 8(5) EUTMR requires that the public, on the basis of a certain degree of similarity
• Unlike the provision of Art. 8 (1), the provision in (5) does not require a likelihood of confusion. Rather, Art. 8(5) requires that the targeted public establish a connection between the earlier and later marks.
• The relevant public for the assessment of the detriment to the distinctive character or the repute of the earlier mark is the average consumer of the goods or services for which that mark is registered, who is reasonably well informed and reasonably observant and circumspect.

3. The EGC Decision

The Court mainly deals with the finding of similarity, distinguishing between visual, phonetic and conceptual similarity, which are to be examined comprehensively. In line with the Board's decision, it is found that overall similarity is to be affirmed.

As far as the conceptual similarity is concerned, the Court confirmed that the similarity of the marks in the German-speaking area must be taken into account. This is because it is precisely in this area, where the Puma mark enjoys an exceptionally high degree of recognition. The word "pluma" has no meaning and there is no conceptual equivalent of "pluma" in the German language. As a result, the German public is more inclined to associate a meaningless word which is phonetically and visually similar to another word with meaning - as is the case here between “PUMA” and "pluma". Thus, the mental link required by Article 8(5) EUTMR is established. It is true that the word "pluma" has the meaning of feather in Spanish, Portuguese and French, so that there is no conceptual similarity. However, in view of the high reputation of the mark for the German-speaking public, the conceptual similarity in that area alone must be taken into account. In that sense, it cannot be assumed that the mere depiction of a feather is sufficient to convey to the German-speaking public the meaning of the word 'feather' in other languages. A divergent conceptual similarity due to such a hypothetical mental transfer cannot be assumed.

From a visual point of view, the court also confirmed that a figurative element - such as the grey feather in this case - may give a mark a slightly different impression, but does not have the potential to take away its overall similarity to an earlier, well-known mark. This follows from the fact that figurative elements in combination with word elements are only secondarily noticeable in the perception. On the contrary, in the case of marks containing several word elements, the consumer tends, for practicable reasons, to take in only the primary or first  word(s) and to neglect the subsequent ones. In the case of "PLUMAflex by road", this means that the consumer only focuses on the word "PLUMA" when perceiving the mark.

4. Conclusion

With this judgment, the EGC has shown that it applies a very broad standard when assuming a likelihood of confusion with respect to well-known marks. It has clarified that already a similar detail of a trademark, which stands next to other word or design components, can already cause a likelihood of confusion, if this appears as a dominant feature. Furthermore, the EGC has recognized that the degree of awareness may play a role in the context of determining the likelihood of confusion in such a way that the assessment of the similarity of two marks is ultimately affected on the basis of that traffic area in which awareness is of a particularly high degree. It will remain to be seen if the ECG decision is final or appealed to the European Court of Justice (ECJ).

The ECJ Decision dated 29 June 2022 can be found here:

https://curia.europa.eu/juris/document/document.jsf?text=&docid=261888&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1

The question, whether two stripes on the side of a shoe have a distinctive character or can lead to the invalidity of a trademark was subjected in the case of 4 May 2022. But how did the European General Court (EGC) decide the case and based on which criteria?
 

I. Background of the case

On 6 November 2002, Munich, SL filed an application for a European figurative mark (EUTM Nr. 002923852) with EUIPO (see picture above). However, this led to an application for declaration of the invalidity of the trademark by Deichmann SE. Deichmann SE claimed that the application does not comply with Article 7 (1) (b) of the EU Trademark Regulation (EUTMR), which forbids the registration of trademarks which are devoid of any distinctive character. After the appeal was rejected by the EUIPO, Deichmann filed an appeal against the decision of the Cancellation Division, which was also without success. According to the Cancellation Division, the intervener had convincingly demonstrated, “that many undertakings used relatively simple patterns on the side of the shoe to indicate the commercial origin of shoes”.

II. Judgement of the European General Court (Sixth Chamber)

Deichmann filed an appeal against the decision at the EGC and claimed, that the EUIPO was incorrect with assuming that the average consumer perceives simple patterns on the side of sports shoes as inherently distinctive signs. However, the EGC found that the absolute ground for refusal must be interpreted with respect to the general interest underlying it. In this case, the general interest relies on the essential function of a trademark: To guarantee the identity of the origin of the marked product to the consumer by enabling him or her to differentiate them from other products of another origin. In addition, there are two relevant criteria to consider, when deciding whether a trademark is distinctive or not:

1. The goods or services

2. The relevant public´s perception of the mark (meaning average consumers being well informed and reasonably observant and circumspect of the category of the goods and services)

Furthermore, the appellant must present the facts which cause the validity. In this case, the appellant submitted evidence that several registered designs with similar stripes on the side of sports shoes exist. According to the EGC, this does not lead to the conclusion of an actual use on the market and is therefore no evidence capable of proving that the relevant public perceives the contested mark as not having distinctive character.

III. Conclusion

Therefore, the EGC dismissed the action with the judgement of 4 May 2022. As a result, two stripes on the side of a shoe are distinctive which means that the mark can stay registered.

To read the whole case, please click here.

Source: GPTO Website – picture of logo of the GPTO and the Imperial Patent Office

As you may know, the headquarter of the German Patent and Trademark Office (GPTO) is located in Munich, Germany. However, this has only been the case since 1949. The history of the GPTO already began in 1877 in Berlin.

I. The Office

The very first German patent authority was located in Berlin and started operating under the name “Imperial Patent Office” in 1877. Already one day later, when the ceremonial opening had not even taken place yet, the first German patent was granted for a “production process for a red ultramarine color”, which was invented by Johann Zeltner of the “Nürnberger Ultramarin-Fabrik”. Until 1894, it was only possible to apply for figurative marks at the competent local courts. However, after the act on the Protection of Trademarks of 1894, the GPTO received responsibility for trademarks. The Act also led to the possibility to apply for words, letters, numbers, colors, holograms, multimedia signs and sounds. The first word mark application was in 1894 by the metal goods entrepreneur Carl Holty and was the trademark “Perkeo”, which was registered for lamps and lamp parts. Because of the Second World War, the GPTO had to cease its business, until 1949, when the German Patent Office was set up in Munich. In 1998, the office ´s name was turned into “German Patent and Trade Mark Office” to underline the increasing significance of trademarks as a part of the work of the GPTO. Today, there are three offices: the headquarter in Munich and the sub-offices in Jena and Berlin.

II. Further interesting facts about the GPTO

• The GPTO is the largest national IP office in Europe and the fifth largest national patent office in the world
• The majority of the staff is located in Munich with approximately 2,200 employees
• In 2021, there were 58,568 patent applications at the GPTO
• There are more than 845,000 registered trademarks and 290,000 registered designs, which are managed at the sub-office in Jena
• Since 2013, there is the possibility of filing a trademark application online, which still causes an ongoing boom of trademark applications

IV. Outlook

In 2027, the GPTO will celebrate its 150^th birthday, which is a huge milestone in the history of the GPTO.

To read more details, please click here.

Every year on the 26 April, we celebrate the World Intellectual Property Day to draw attention to the important role of intellectual property rights (IP). This year, the official theme is “IP and Youth: Innovating for a Better Future” and aims to honor the innovations and creativity led precisely by young people!

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Source: WIPO - official picture of this year´s theme 

I. History of the World Intellectual Property Day

The World Intellectual Property Day (WIPD) has already a long history as it has been celebrated for over 22 years! However, the date of WIPD has not been chosen randomly – as the 26 April is the day on which the WIPO Convention came into force in 1970. And later in 2000, the WIPO´s member states set this very day as a day designated to bring attention to intellectual property rights and increase the general understanding about them.

Since then, on 26 April each year, we honor the contribution of IP rights in fostering technological and artistic innovations as well as their role in our everyday lives and businesses.

II. About this year´s theme

The theme of 2022 “IP and Youth: Innovating for a Better Future” is focused on the work of young innovators. Across the globe, young people are stimulating the innovation by using their energy and curiosity to navigate us to a better future. So, in order to give these young creators a platform to raise awareness about their contributions, the WIPO has started a campaign to promote and celebrate their work on its website. There you can now learn about all the innovative and aspiring projects focused on improvement in the field of environment, health, communications, or research.

The list of the nominees is very diverse. To name just a few – you can for example learn about a bioengineer from Spain who created the first prosthetic arm made from LEGO, a French Start-Up turning CO2 into a resource or a young CEO of a company providing a mobile app that connects patients with healthcare providers in Uganda.

You can read about all the projects of this year´s nominees here: https://www.wipo.int/ip-outreach/en/ipday/2022/youth-gallery.html

III. Nominate young innovators yourself!

Now, you can also be an active part of the celebration by nominating someone that you think deserves the recognition! If you know some young innovators whose work is dedicated to creating a better future, do not hesitate to promote and praise their work by sharing their story with the world by sending an email to WordIPDay@wipo.int.

For more information about the World Intellectual Property Day of 2022, please visit WIPO´s official website: https://www.wipo.int/ip-outreach/en/ipday/. Further, we would also like to thank WIPO for the possibility to use the great graphical toolkit which offices and law firms are allowed to use while promoting the WIPD.

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Liebe Mandanten, Gäste und Freunde!

Ergänzend zu Ihrer personalisierten Einladung wollten wir Ihnen zum Sommerempfang 2022 folgende Highlights mitteilen:

Es erwartet Sie ein Empfang in der MOTORWORLD München mit kulinarischen und automobilen Highlights! 

ZUSÄTZLICHE INFORMATIONEN

Führung durch die MOTORWORLD München
Wir haben für Sie zwei optionale 30-minütige Führungen durch die MOTORWORLD geplant:

    Von 18:30 bis 19:00 Uhr
    Von 19:30 bis 20:00 Uhr

Herr Dr. Hans-Jürgen Schraut wird am Eingang des Restaurants WACA auf Sie warten. Eine Voranmeldung ist nicht erforderlich.

Dresscode
Der Dresscode für den Abend ist Business Casual.

Datenschutz, Fotografieren
An dem Abend wird ein Fotograf vor Ort sein, der für uns den Abend digital festhalten wird. Sollten Sie NICHT auf den Fotos erscheinen wollen, können Sie dies einer unserer Mitarbeiterinnen am Abend kurz mündlich mitteilen. Wir werden dies später bei der Auswahl der Fotos entsprechend berücksichtigen.

Corona-Regelung
Es sind keine besonderen gesetzlichen Regelungen im Hinblick auf Maskenpflicht oder sonstige Beschränkungen zu beachten.
Um die Sicherheit für alle Teilnehmer zu erhöhen, bitten wir alle Teilnehmer, sich im Vorfeld freiwillig per Schnelltest (Selbsttest) zu testen. Es werden zusätzlich am Abend Schnelltests bereitgestellt, von denen Sie gerne noch kurzfristig Gebrauch machen können, falls ein Schnelltest (Selbsttest) im Vorfeld nicht möglich sein sollte. LexDellmeier Mitarbeiter werden alle aktuell getestet sein, um Ihnen die größtmögliche Sicherheit für Ihre Gesundheit zu bieten.

Parken
Es stehen vor Ort ausreichend Parkplätze zur Verfügung. Für die Ausfahrt liegen nach der Veranstaltung 50 Parktickets für Sie bereit, die Sie von den LexDellmeier Mitarbeitern auf Wunsch erhalten.

Geschenke (-ersatz): Spende für unsere ukrainischen Gäste

Wir freuen uns immer über kleine Aufmerksamkeiten und Geschenke… aber in diesem Jahr werden wir Geschenke (Sach- oder Geldspenden – Spendenbox steht am Empfang) an unsere beiden ukrainischen Gäste (Margerita, 19 Jahre, und Pavlo, 23 Jahre alt) weitergeben, die wir seit Ihrer Ankunft in München Anfang März 2022 mit Unterkunft, Sprachkursen und Behördengängen unterstützen.

Die Zeiten sind zum Teil belastend und es stehen auch noch schwierige Zeiten bevor. Wir blicken jedoch mit viel Optimismus in die Zukunft und freuen uns auf einen wunderbaren, sommerlauen Abend mit Ihnen!

Herzlichst

Alexandra Dellmeier,

F. Andrea Schreiber, Karolin Schech und

das gesamte LexDellmeier Team