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

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

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

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

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

Just a few days before Europe headed into the 2010 Christmas break the General Court released a range of decisions that had a very festive topic as if the Court had scheduled it right on time to get into the right Christmas mood. The Court dealt with the question whether the three-dimensional form of a chocolate object and/or its wrapping was suitable to be registered as a Community Trademark. In this specific case, the decisions dealt with a particular shape of a sitting chocolate Easter Bunny (Case No. T-395/08), the same bunny but in a golden wrapping and a red pleated ribbon with a bell around its neck (Case No. T-336/08), a reindeer, also in a golden wrapping with the same red ribbon and bell around its neck (Case No. T-337/08) and finally the red pleated ribbon with the bell itself (Case No. T-346/08).   The photographs show samples of the chocolate bunny and the ribbon as they are currently on sale in German stores.       All cases were brought to the Court by the famous Swiss chocolate producer Lindt & Sprüngli, which apart from the applications that were subject to the above mentioned proceedings, has already registered the gold wrapped bunny as a 3D trademark as CTM No. 008577298, however, in a version where the name “Lindt” is printed on the golden paper. So the question that was raised now was whether the 3D-form itself without the name "Lindt" would be distinctive enough to be registered.

The photograph shows a Lindt Bunny in the version of CTM No. 008577298

  In essense, the Court found that none of the elements of the trademark application (neither shape, golden paper, red ribbon or bell) by themselves or even in combination give the trademark sufficient distinctiveness for the goods. The decision whether a trademark is distinctive or not has to be based on the general impression of the trademark, which does not mean that first of all the singular elements of the trademark have to be examined. The Court states that a rabbit belongs to the typical range of shapes that is used for chocolate, especially during the Easter season - similar to the reindeer during Christmas. The argument that the bunny was particular because sitting and the combination of the bunny with the golden wrapping and the red ribbon was unique on the market did not change the Courts view. A rabbit is a rabbit. Its position, the length of its ears, the size of its eyes or any additional elements do not change this, sustained OHIM and was confirmed by the Court. Additonally, the Court had to evaluate the reindeer.  The shape, even in the most simplified or abstract form is part of the typical range of animal shapes for chocolate during the Christmas period. All graphic elements such as antlers, paws, mouth and eyes are common elements and not of such artistic level that they could be considered as a sign of origin by the relevant public. The golden wrapping was judged to be within what is normally and commonly used for chocolate on the market, even though it might have been that 50 years ago the applicant had brought it on the market as novelty. The red ribbon was also seen as a commonly used decorative element for chocolate - especially during the festive seasons. The fact that this particular ribbon was pleated was not seen as a distinctive element either. According to the Court it is sufficient that the Board of Appeal had based its opinion on the general practical experience in the commerce of chocolate goods that is known to everybody. As an overall assessment the Court therefore came to the conclusion that the trademarks under examination where not distinctive as they did not differ much from commonly used shapes and packaging of other chocolate products. The fact that the applicant already obtained the CTM registration No. 008577298 (the bunny with the name “Lindt” written on the golden wrapping) and had used it successfully in several infringement cases against similar products was seen as a proof that the risk of a monopolization of the respective golden wrapping exists. This would coincide with the general interest of the absolute grounds of refusal of the registration according to Art. 7 I b) CTMR. Finally, the Court also denied the acquired distinctiveness as it considered it not to be proven that such distinctiveness had been acquired in territories outside of Germany.  

If you are interested in obtaining a trademark or a design you surely have visited the websites of the relevant offices like GPTO (DPMA), OHIM or WIPO and you will have discovered that they provide a useful guidance and all necessary forms you need for registering your trademark or your design. So why should you spend money hiring an IP-lawyer? Why shouldn’t you do it all by yourself, you might ask yourself. It’s true you can do it all by yourself. Most offices do not require that you are represented by a lawyer. But registering trademarks and designs by yourself bears a great risk that can most probably make the registration an extremely expensive adventure that might not even end with obtaining the trademark or the design. Here are four reasons why hiring us as your IP-lawyers is a good investment: 1. In Germany and Europe trademarks and designs need to match certain requirements. A trademark must be distinctive and not descriptive for the goods and services for which protection is sought. The trademark „chair“ for example cannot be registered for furniture, but „Apple“ can be very well registered for computers. A design has to feature peculiarity. That means it has to be distinguishable from yet existing designs. There is a wide variety of case law that define which trademark is distinctive and which is descriptive, which design is peculiar or not. Only an experienced IP-Lawyer can give you advice and guidance whether your trademark or design matches these criteria. Without consulting a lawyer you might risk that an office rejects your application. 2. Registering a trademark or a design always carries the risk of infringing someone else’s prior rights. This can lead to expensive and long opposition and court proceedings that you would rather avoid. Therefore, it is absolutely necessary before the application to conduct a search for identical of similar trademarks and already existing and registered designs. Such a search has to be done by a professional because a self-conducted search might be suitable to find identical trademarks. However, it will never cover similar (visual, phonetic or conceptual) marks. Without an experienced IP-lawyer you will also not be able to evaluate the risk of a similarity because in order to do that, experience and excellent knowledge of the office and court decisions are absolutely necessary. 3. If you need to protect your trademark or your design in more that one territory it is also extremely important to set up the right strategy how to register because on an international level there are different ways with different time frames and costs that lead to the same result. Only an experienced IP-lawyer that specializes in the field of trademark and design law is able to find the right strategy for you. 4. After you have become proprietor of a trademark or a design you want to make sure that no one else infringes your rights by registering something that is identical or similar to your trademark or design or even by using a similar or identical trademark or design on the market. Therefore, you need someone who monitors published applications and also the market in order to make sure that you can act against any infringements right on time to safeguard your intellectual property. Only an experienced IP-lawyer, such as the attorneys of LexDellmeier, is able to recognize infringements and suggest suitable means to stop them.

Instead of the ©, there might be a reference to §§ 53, 54 UrhG, which regulate the admissibility of replication and the duty of compensation, and to § 106 UrhG, regulating the criminal liability of unauthorized use.

The protection begins with the creation of the work, lasting throughout its creator´s lifetime and being upheld for further 70 years after his death (as the right of his legal heirs). Concerning anonymous works, the protection ends 70 years after their publication.

1. Lingual works as writings, speeches, computer programs
2. Works of music
3. Pantomimical works and dance art
4. Fine arts, including architecture and applied art, as well as there outlines
5. Photographical works, including similarly constructed works
6. Film works including similarly developed  works
7. Scientific and technical representations e.g. drawings, plans, maps, outlines, etc.

The copyright comes into existance with the creation of the work, not depending on its publication. An unpublished manuscript contains the same copyright protection as a painting exhibited in a museum. In contrast to trademarks, designs and patents, the copyright does not have to be registered and no fees. The copyright automatically receives its validation, beginning with its creation. Through the so called „Berne Convention for the Protection of Literary and Artistic Works” (a treaty in International Public Law), the copyright is automatically protected in more than 160 countries. Proprietor of the copyright is the creator or the creators if it is a work that was created by more than one person. The proprietor must be a natural person. Important: Proprietor is not the employer of the creator. The copyright itself always remains with the creator. It cannot be transferred, which makes German copyright law very different from the anglo-american copyright law. The copyright owner can only grant certain rights of use regarding his work to third parties.