The "déjà vu" feeling - nullity of an EU design (lamp)

In a recent case, the European General Court (EGC) had to deal with the invalidity of a lamp design and to assess whether it had individual character. It was also particularly interesting that the older design had already been declared invalid.

EU Design No. 2503680-0001

I. General facts about EU design protection

Designs are two- or three-dimensional appearances of a product or a part thereof, resulting from the features of the lines, contours, colors, shape, surface structure and/or materials of the product itself and/or its ornamentation. For EU-wide design protection, two requirements must be met: It must be “new” and have “individual character”. Individual character means that the resulting overall impression of the design must be different for the informed user from the impression of older and prior designs. Novelty means that no identical design may have been published in the EU before the filing date. Note: There is however a so-called 12-month grace-period with respect to EU (and also German) designs. Therefore, not absolute novelty is necessary.

II. Background of the Case

On 16 July 2014, the applicant, Davide Groppi Srl, filed the EU design application No. 2503680-0001 with the European Union Intellectual Property Office (EUIPO) as pictured above. The contested design was registered for the product 'lamps' in Locarno Class 26-05.

On 3 March 2017, the other party to the proceedings before the EUIPO Board of Appeal (BoA), Viabizzuno Srl, filed an application for a declaration of invalidity with the EUIPO for lack of individual character. It based its request on the earlier EU design No. 1294664-0010 (pictured below), which had in the meantime been declared invalid on 30 October 2018 due to lack of individual character. Both the Cancellation Division and the BoA, which was subsequently called upon, granted the application for a declaration of invalidity. Now the European General Court (EGC) had to deal with the case.

EU Design No. 1294664-0010

III. Decision of the EGC

First, the EGC clarified that it is irrelevant that the earlier EU design has been declared invalid in the meantime, since the legal prerequisite for the novelty of the design is not the validity of an earlier design but the disclosure of the design. Further, the EGC stated that the assessment of “individual character” of a Community (or EU) design essentially involves an examination in four steps (see judgment dated 13 June 2019, Visi/one/EUIPO - T-74/18, EU:T:2019:417).

Step 1: Determining the industry of the products in which the design is intended to be incorporated or to which it is intended to be applied

The applicant accused the BoA of equating two different products, namely table lamps and garden lamps. This was countered by the EGC. The registration of the challenged design refers to luminaires in general. No additional reference is apparent, so it cannot be determined that the lamp is intended to be used specifically for indoor or outdoor lighting purposes.

Step 2: Determination of the informed user of these products according to their intended purpose and, with reference to this informed user, the degree of knowledge of the state of the art and the degree of attention to similarities and differences when comparing the designs

The BoA also did not err in identifying the "informed user". The EGC noted that this term is not defined in Regulation No 6/2002. However, it must be understood as a concept which lies between that of the average consumer, similarly applicable in the trademark field, who is not expected to have any special knowledge and who generally does not make a direct comparison between the conflicting marks, and that of the expert with profound technical skills. In the present case, that person is rightly deemed to be the person who uses the lamps and is familiar with market offerings in that industry.

Step 3: Determination of the degree of freedom of the designer in the development of the design, the influence of which on the individual character is inversely proportional

The assessment of the BoA on the freedom of design was not objected to by the applicant. The EGC therefore only states in general terms that this is a factor which makes it possible to nuance the assessment of the individual character of the contested design, and not an independent factor which determines the extent to which two designs must differ from each other in order for one of them to have individual character.

Step 4: Comparing, as directly as possible, the overall impressions which the contested design and the earlier design made available to the public each evoke in the informed user

First, the BoA found that the designs at issue represented lamps consisting of the same three parts, which were visually almost identical. According to settled case law, the individual character of a design results from an overall impression of dissimilarity or lack of "déjà vu" from the point of view of the informed user. The differences in the base of the luminaires are not sufficient to create the overall different impression.

IV. Conclusion

In this decision, the EGC examined the individual character of a community (EU) design in a textbook manner. The novelty of the design was rejected on the basis of an interesting aspect – namely, it is not the validity of an older design that matters, but its disclosure.

For further information please read the full decision here.

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• Wann: 30. Juni 2022, 11:00-17:00 Uhr
• Anmeldeschluss: 23. Juni 2022, 18:00 Uhr
• Wo: Richard Pflaum Verlag, Lazarettstraße 4, 80636 München
• Semestergebühr: 395,00 € zzgl. 19% MwSt.
• Plätze: 40

KURZBESCHREIBUNG:

Haben Sie Ihre Marke rechtlich geschützt? Wissen Sie, wie hoch der Anteil Ihrer Marke an Ihrem Unternehmens-Wert ist? Dieses Seminar gibt Ihnen Antworten auf alle Ihre Fragen!

Gerichtet ist das Seminar an:

• Unternehmer und Geschäftsführer
• Start-ups sowie
• Leiter und Mitarbeiter von Rechts-, Marken- und IP-Abteilungen.

DETAILS:

Thema 1: Der rechtliche Schutz von Marken

Thema 2: Die Marke als Asset

Thema 3: Die Werterhaltung, Wertsteigerung und Verteidigung von Marken

ANMELDUNG: Eventbrite

WEITERE INFORMATIONEN: s. unseren detaillierten SEMINARFLYER hier: [[{"type":"media","fid":"5390","view_mode":"default","instance_fields":"override","link_text":"flyer_seminar_marken-recht_und_marken-wert.pdf"}]]

PROGRAMM DES SEMINARS:

Thema 1 - Der rechtliche Schutz von Marken

• Nationaler Schutz: München-Bayern-Deutschland: Marken, Designs, Firmen - und Namensrechte, Urheberrechte und ergänzender Leistungsschutz. Was ist wo, wann und wie geschützt?
• Going Global – internationale Anmeldestrategien: Warum sich eine individuelle Anmeldepraxis lohnt – strategisch und finanziell.
• Gerüstet für die Zukunft – aktuelle Entwicklungen

Thema 2 - Die Marke als Asset

• Nichts ist wertvoller als ein guter Name: Mehr als 50 Prozent des Unternehmens -Wertes entfällt auf die Marke.

• Anerkannte Bewertungsstandards: DIN -ISO, IDW und BDU haben Qualitätskriterien definiert.
• Markenbewertung als Prozess: Wer bewertet eine Marke und welche Kosten sind damit verbunden.
• Bewertung einer Marke - Praxisbeispiel: Welche Faktoren spielen bei der Bewertung eine Rolle.

Thema 3 - Die Werterhaltung, Wertsteigerung und Verteidigung von Marken

• Die Auswirkung von IP Management auf die Werthaltigkeit der Rechte: Effektive Portfoliopflege und Überwachung, Tools, Ausmaß, Kosten-Nutzen-Analyse
• Maßnahmen im Verletzungsfall: Handeln, aber wie und wann? – Erfolgreiche Strategien bei Schutzrechtsverletzungen im Markt, im Internet oder durch Markenanmeldungen Dritter.

ZIELGRUPPE:

Dieses Seminar richtet sich an alle Unternehmer, Geschäftsführer, Start-ups sowie Leiter und Mitarbeiter von Rechts-, Marken- und IP-Abteilungen

UNTERLAGEN: 

Die Unterlagen/Slides werden im Seminar ausgeteilt sowie den Teilnehmern im Nachgang per Email oder zum Download (per Link) gerne übermittelt.

TEILNAHMEBESTÄTIGUNG: 

Auf Wunsch stellen wir auch gerne eine Teilnahmebestätigung aus.

MODERATOREN

Alexandra Dellmeier

• Rechtsanwältin/Fachanwältin für Gewerblichen Rechtsschutz - Inhaberin der Kanzlei LexDellmeier – Intellectual Property Law Firm in München
• Berufserfahrung: Im Bereich Intellectual Property: über 24 Jahre - weitere Infos zur Person auf der Website

F. Andrea Schreiber, LL.M.

• Rechtsanwältin, Kanzlei LexDellmeier - Intellecutal Property Law Firm in München
• Berufserfahrung: Im Bereich Markenrecht: über 16 Jahre - weitere Infos zur Person auf der Website

Karolin Schech

• Rechtsanwältin, Kanzlei LexDellmeier - Intellecutal Property Law Firm in München
• Berufserfahrung: Im Bereich Markenrecht: über 17 Jahre - weitere Infos zur Person auf der Website

The oldest perfume manufacturer in the world and its battle for a statutory trademark protection

Source: GPTO website – picture of the company sign of  Johann Maria Farina from 1868  

„Johann Maria Farina gegenüber dem Jülichs-Platz GmbH” is one of the oldest German companies. For over 300 years the manufacturer produces Eau de Cologne. Furthermore, the company is known for leading the way to the first statutory trademark protection.

I. Background

In the 19^th century, Johann Maria Farina gegenüber dem Jülichs-Platz GmbH was the world’s leading company with respect to the parfume market. Very famous people like Napoleon, Mozart, Goethe, Schiller, Beethoven, Oscar Wild and Bill Clinton were buyers of the well-known Eau de Cologne. According to the company´s archive, Queen Victoria even bought 600 bottles of the famous perfume. Due to its popularity, Farina´s Eau de Cologne is still made according to the original recipe.

II. History of a statutory trademark protection

The popularity of course also had negative aspects. The perfume market was flooded with various competing products, which were established under similar names. One product even got more popular than the original product by Farina. Nowadays, many people think of the brand “4711” in terms of Eau de Cologne, although it was imitated by “Johann Maria Farina gegenüber dem Jülichs-Platz GmBH”.

As a result, the company fought over decades to get a statutory trademark protection, in order to stop the imitation of their products. In 1836, the company filed a relevant petition for the first time. Almost 40 years later, in 1875, the first statutory trademark protection became operative and the first trademark application was filed by “Johann Maria Farina gegenüber dem Jülichs-Platz”.

III. Conclusion

Therefore, Johann Maria Farina is not only special for being the oldest perfume company, but, also for leading the way and being a pioneer with respect to statutory trademark protection.

To read more details in German, please click here.

Just recently, in December 2021, the EU Directorate-General for Interal Policies published an extensive Study on "Cross Border Enforcement of Intellectual Property Rights". 

This excellent and over 100 page study aims to provide both an overview of the current state-of-play as well as a set of policy recommendations with respect to cross-border enforcement of intellectual property rights (IPRs) in the European Union (EU), with a particular emphasis on the enforcement of copyright and related rights in the online environment. The study utilises information drawn from a combination of legal texts, existing EU and Member States (MS) legislation, specialised literature and practical insights gathered from a range of legal experts and copyright stakeholders representing various cultural sectors, to evaluate currently available options for cross-border enforcement. 

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The content in a nutshell:

1. The Legal Framework for Cross-Border IPR Infringements in the EU

2. The Online Environment and Cross-Border IPR Infringements: The Challenge of Copyright and Related Rights

3. The Status Quo of Online Enforcement Options in the EU: Voluntary, Administrative and Judicial Measures

HAPPY HOLIDAYS!!!!

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LexDellmeier - 2021 Holiday Greetings from the whole IP team here in Munich, Germany.

"Santa Claus is coming to town" is the music you will hear, when you watch our Xmas video card and turn on the sound... but, do you also remember the lyrics of the first line of the song which is: "You better watch out, you better not cry"... REMEMBER, some color marks are regsitered by trademark owners... and even though #colormarks are not simple to apply and register for, you may be eligible, too! Different countries around the world have different rules... it may be worth looking into for you in 2022. In general, color mark protection is possible in Germany at the #gpto and at an EU level at the #euipo

It would be great to read, if color mark protection is possible in your country?! Comments and insights welcome! #LexDellmeier #trademarks

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HAPPY HALLOWEEN!!!

Anyone who wants to know when and where Halloween originates from should check out the great article the German Patent and Trademark Office (GPTO) published in German and English. 

Fact is that Halloween, not really known in Germany for many years, has meanwhile become a million dollar business. As you can imagine, the need for intellectual property rights - trademarks, designs, utility models and patents - therefore has increased. The GPTO has picked some unusual, fun and/or gruesome patents.

It's a fun article to read that we wanted to share with you - Link: https://www.dpma.de/english/our_office/publications/background/halloween/index.html

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LexDellmeier supports great local charity project “SPENDIERMAß”

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© Karolin Schech, LexDellmeier

2021 – the second year in the pandemic. The second year in which Oktoberfest and most other festivals in Bavaria are not taking place. For most Bavarians and worldwide “Oktoberfest lovers” this is of course a disaster. The situation is however a catastrophe for those whose income depend on these festivals and thereby support their entire families. The second corona year has paid its toll to these families and threatening their existence.

Anton Kölbl, a local goldsmith with great affinity to Bavarian tradition decided to support these travelling showmen with a creative and lovely idea: the ”Spendiermaß”. This is a small pin in sterling silver or bronze in the form of a Bavarian „Maß“ – a beer mug which holds a whole liter of beer. Anton designed the unique little masterpieces of jewellery in his “Atelier Kölbl” (check it out on Instagram!) in Parsdorf. The “Spendiermaß” is poured externally, and Anton refines and finishes each single piece in painstaking detail work in his spare time. Anton donates 100% of the net profit to the “Historische Gesellschaft Bayerischer Schausteller“ (Historical Society of Bavarian Showmen), whose goal is "the reappraisal of the history, as well as the preservation and promotion of historical cultural assets of all kinds of the German showmen's trade".

At the beginning of his project – which initially runs until 3 October 2021 – the actual last day of this year’s Oktoberfest – Anton had anticipated to collect a total sum of EUR 10,000 for his charity project. This goal was reached at the beginning of September, already, because the “Spendiermaß” was extremely well received throughout Bavaria and found many supporters.

LexDellmeier became aware of Anton and his “Spendiermaß” through an article in SZ (Link). Karolin Schech, an Oktoberfest enthusiast, and one of our senior attorneys contacted Anton and recommended him to seek for trademark protection for the creative name “Spendiermaß”.

We at LexDellmeier enjoy the Bavarian culture and usually spend one day together at each Oktoberfest. As this could not happen this year for the second time, we decided to support the Bavarian showmen indirectly by supporting Anton‘s great project. Hence, we advised Anton for free with respect to trademark protection and filed the application DE 30 2021 114 823.1 “Spendiermaß” (word mark) with the German Patent and Trademark Office without charging attorney fees. And, as we fell in love with the nice little beer mug pins, we also bought 15 pieces of the “Spendiermaß” for our staff – see the picture.

What a great project! And Anton is really fun to work with. We look forward to his further plans and ideas.

If you also want to obtain and buy a “Spendiermaß” and support the great cause, you have to be quick: Anton offers the “Spendiermaß” until 3 October 2021 – official end of Oktoberfest (if it would have taken place) – on his website www.spendiermass.de (Link).

The 187th Oktoberfest should have taken place as usual on the Theresienwiese in Munich in 2021. But also this year the Corona pandemic ensures that unfortunately nothing will come of it. At the press conference on May 3, 2021, it was explained that a unanimous decision had been taken to recommend that the major public festivals in Bavaria, including the Oktoberfest, should not take place. However, on this occasion we took a look at the developments and news about the word mark "Oktoberfest".

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I. Historical Outline

Since the City of Munich has applied for a word mark for "Oktoberfest" as such it is disputed whether it has distinctive character or not. In September 2019, the applicant withdrew the application for a trademark registration “Oktoberfest” (No. 30 2018 008 442.3), after the German Patent and Trademark Office (GPTO) had found that the trademark lacks distinctive character.

On 26 August 2020 another decision regarding an application for the European Union Trademark (EUTM) “Oktoberfest” was issued - this time in appeal proceedings pending at the European Union Intellectual Property Office (EUIPO). The EUIPO Board of Appeal (BoA) very profoundly analysed the distinctive character of the word “Oktoberfest” and found

• that it was not an invented word created by the applicant, but a word that is commonly used to describe a festival taking place in the month of October
• that it was only descriptive for goods and services that are a festival or are an essential part of a festival.

The BoA refused registration in some classes. However, it allowed registration for all services in class 43 that do not relate to offering food and drink, but only to accommodation, for all services in classes 35 (tourism advertising is particularly important here) and 45, and for all other goods designated in the application - regardless of whether they are sold at festivals, or whether they are goods related to festivals (decision of the EUIPO BoA No. R 1840/2019-4).

For more information about the proceedings of the BoA check out the blogpost from last year: https://lexdellmeier.com/de/blog/be-or-not-be-oktoberfest

II. New developments

On 7 October 2020 the City of Munich took advantage of the EUIPO BoA’s indication and applied for the word marks "Münchner Oktoberfest" (No. EU 018317924) and "Oktoberfest München" (No. EU 018317926). These two marks were registered and published on 31 May 2021.

On 30 April 2021, 5 years after the City of Munich applied for registration of the EUTM "Oktoberfest", the trademark (EUTM No. 015535008) was published. The subsequent opposition period expired on 30 July 2021. After no oppositions were received, it is now official – “Oktoberfest” is an EU Trademark Registration.

On 25 June 2021, the Munich Regional Court I issued a preliminary injunction against two organizers of the Oktoberfest in Dubai (for the German version click here.) It prohibited advertising with the phrase "Oktoberfest goes Dubai" as well as the accompanying illustration, as it saw in this both a misleading of consumers and an unfair exploitation of reputation.