World Intellectual Property Day and 50th anniversary of the WIPO Convention on 26 April 2020

The World Intellectual Property Organization (WIPO) celebrates World Intellectual Property Day (World IP Day) every April 26 with the aim to “learn about the role that Intellectual Property (IP) rights play in encouraging innovation and creativity”. This year 2020, the WIPO Convention turns 50 on the same day. Two reasons for celebrating and for dedicating this day a very important topic: “Innovate for a Green Future”. 

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The goal is to highlight that tasks of development and innovation are also carving a pathway to a green future and accepting responsibility for the future: “The earth is our home. We need to care for it”. And we need to do it now. Another goal of the campaign is to pay respect to inventors who are already working on a greener future and use IP rights to support and to market their work.

With the World IP Day, WIPO wishes to offer an opportunity for interested people in the IP world to join with others around the globe to elaborate and to celebrate how IP rights may help supporting a green future by technological innovation: “a balanced IP system recognizes and rewards inventors and creators for their work and ensures that society benefits from their creativity and ingenuity”. 

But how will this be celebrated? A lot of events will be organized around the world which can be attended, like webinars, conferences, national award ceremonies, workshops and exhibitions (check out the World IP Day events map under https://www.wipo.int/ip-outreach/en/ipday/2019/map.html). And everyone (interested people, like law offices, universities, organizations, companies) can organize an event on his or her own. WIPO has published a list of event ideas for inspiration and allows to use their free publicity materials and social media kit to promote events. Finally, own events can be added to the World IP Day events map. It is WIPO’s expressive wish that World IP Day is celebrated globally and anyone can take part in the campaign (and likewise be part of the campaign).

This year, WIPO and the whole IP world have double cause for celebrating: the 50th anniversary of the enforcement of the WIPO Convention and, coincidently, of WIPO, falls on the same date as World IP Day, namely 26 April 2020. The origins of WIPO go back to 1883 and 1886 when the Paris Convention (for the Protection of Industrial Property) and the Berne Convention (for the Protection of Literary and Artistic Works) each established an “International Bureau”. The two bureaus were united in 1893. By virtue of the WIPO Convention – which entered in force on 26 April 1970 – WIPO replaced these two bureaus.

For more information as to the World IP Day or the WIPO, please refer to WIPO’s website under https://www.wipo.int/ip-outreach/en/ipday/
 

Mit dem Austritt Großbritanniens aus der Europäischen Union mit Ablauf des 31. Januar 2020 stellt sich die Frage, welche Auswirkungen dies für den Schutz Ihres geistigen Eigentums hat, insbesondere für Ihre Unionmarken und eingetragene / nicht eingetragene Gemeinschaftsgeschmacksmuster. Hier ist eine kurze Zusammenfassung über den Status quo (Stand: 10. Februar 2020) und darüber, was Ende 2020 geschehen wird...

Mit einer Verzögerung von fast einem Jahr hat Großbritannien die EU am 31. Januar 2020 endgültig verlassen. Das zwischen Großbritannien und der EU geschlossene Austrittsabkommen sieht jedoch vor, dass EU-Recht für einen Übergangszeitraum vom 1. Februar 2020 bis zum 31. Dezember 2020 (Übergangsfrist) unverändert auch in Großbritannien anwendbar bleibt. Das bedeutet, dass das System des geistigen Eigentums bis zum 31. Dezember 2020 ohne Änderungen weiterläuft.

Aber auch nach Ablauf der Übergangsfrist gewährleistet das Austrittsabkommen den weiteren Schutz Ihrer in der Europäischen Union bestehenden Rechte des geistigen Eigentums in Großbritannien.

• REGISTRIERTE MARKEN / DESIGNS:  Am Ende der Übergangszeit wird das Britische Amt für geistiges Eigentum (UKIPO) alle eingetragenen EU-Marken und Gemeinschaftsgeschmacksmuster automatisch in vergleichbare britische Rechte umwandeln, die dann am 1. Januar 2021 in Kraft treten:

     -  IDENTISCHE Marke,

     -  IDENTISCHES Waren- und Dienstleistungsverzeichnis,

     -  IDENTISCHER Anmeldetag,

     -  IDENTISCHER Prioritätstag,

     -  IDENTISCHES Verlängerungsdatum,

     -  KEINE Gebühr,

     -  KEINE neue Prüfung der Marke,

     -  KEINE neue Eintragungsurkunde.

• ANHÄNGIGE MARKEN- / DESIGNANMELDUNGEN:  Alle am 31. Dezember 2020 noch nicht eingetragenen Marken- und Designanmeldungen werden nicht automatisch umgewandelt. Es besteht für Sie jedoch die Möglichkeit, innerhalb weiterer neun Monate bis zum 30. September 2021 eine inhaltsgleiche neue Anmeldung in Großbritannien einzureichen, die den gleichen   Anmelde- und Prioritätstag erhält wie die zugrundeliegende EU-Anmeldung; hier fällt allerdings eine weitere Anmeldegebühr an.

• INTERNATIONALE REGISTRIERUNGEN:  Es ist noch nicht ganz klar, was mit internationalen Marken- und Designregistrierungen, in denen die EU benannt ist, am 1. Januar 2021 geschehen wird. Es ist jedoch sehr wahrscheinlich, dass sie genauso wie jede andere EU-Marke oder jedes andere Gemeinschaftsgeschmacksmuster einschließlich der Anmeldungen behandelt werden.

• BENUTZUNGSNACHWEISE:  Für die neuen britischen Marken wird keine neue 5-jährige Benutzungsschonfrist in Gang gesetzt. Wenn aber für die neue britische Marke die ernsthafte Benutzung nachgewiesen werden muss und der relevante Zeitraum Zeit vor dem 1. Januar 2021 einschließt, wird jede Benutzung in der EU bis einschließlich 31. Dezember 2020 berücksichtigt werden.

• VERLÄNGERUNG:  Wenn eine EU-Marke oder ein Gemeinschaftsgeschmacksmuster am oder vor dem 31. Dezember 2020 verlängert werden muss, bewirkt die Zahlung der Verlängerungsgebühr an das EUIPO automatisch auch die Verlängerung des am 1. Januar 2021 entstehenden, korrespondierenden britischen Rechts. Es ist keine separate Verlängerung in Großbritannien erforderlich. Fällt das Fälligkeitsdatum für die Verlängerung jedoch auf einen Zeitpunkt nach dem 31. Dezember 2020, hat die vorzeitige Zahlung der Verlängerungsgebühr beim EUIPO keine Auswirkungen auf das neue britische Recht. Wenn Sie also Ihre EU-Marke oder Ihr Gemeinschaftsgeschmacksmuster zwischen dem 1. Juli 2020 und dem 31. Dezember 2020 verlängern, das tatsächliche Ablaufdatum aber nach dem 31. Dezember 2020 liegt, wird die vorzeitige Zahlung nur die EU-Marke oder das Gemeinschaftsgeschmacksmuster verlängern, aber keine Auswirkungen auf das korrespondierende, neue britische Recht haben! Das neu britische Recht muss gesondert verlängert werden, um im Vereinigten Königreich für weitere 10 Jahre Schutz zu genießen.

• NICHT-EINGETRAGENE GEMEINSCHAFTSGESCHMACKSMUSTER:  Jedes nicht-eingetragene Gemeinschaftsgeschmacksmuster, das am oder vor dem 31. Dezember 2020 automatisch durch erstmalige Offenbarung in der Europäischen Union entstanden ist (ohne beim EUIPO eingetragen zu sein), wird für insgesamt 3 Jahre ab seinem Bestehen geschützt - in der EU und auch in Großbritannien, dort durch ein entsprechendes, nicht eingetragenes britisches Design.

Für detaillierte Informationen zu den Folgen des Brexits für Ihre individuellen Marken und Designs kontaktieren Sie uns einfach unter info@lexdellmeier.com und wir beraten Sie gerne.

With the exit of the UK from the European Union at the end of 31 January 2020, you might ask yourself what the consequences for the protection of your intellectual property, particularly European Union trademarks and registered / unregistered Community designs are. Here is a short summary on the status quo (on 10 February 2020) and of what will happen at the end of 2020…

With a delay of almost a year, the UK departed the EU on 31 January 2020. However, the Withdrawal Agreement reached between the UK and EU foresees that, for a transition period from 1 February 2020 to 31 December 2020, EU law will continue to operate in the UK as it did until exit day. That means that the Intellectual Property system will also continue as it is until 31 December 2020.

But even after the end of the transition period, the Withdrawal Agreement ensures continued protection of existing EU Intellectual Property rights in the UK:

• REGISTERED TRADEMARKS / DESIGNS:  At the end of the transition period, the UK Intellectual Property Office (UKIPO) will automatically convert all registered EU trademarks and Community designs to corresponding UK rights which will then come into effect on 1 January 2021:

  • IDENTICAL mark,

  • IDENTICAL specification of goods/services,

  • IDENTICAL application date,

  • IDENTICAL priority date,

  • IDENTICAL renewal date,

  • NO charge,

  • NO new registration procedure,

  • NO new registration certificate.

• PENDING TRADEMARK / DESIGN APPLICATIONS:  All trademark and design applications not registered on 31 December 2020 will not be converted automatically. However, you will have another nine months until 30 September 2021 to apply for the same protection in the UK (with the same priority date) by paying the normal application fee.

   

• INTERNATIONAL REGISTRATIONS:  It is not yet completely clear what will happen to international trademark and design registrations designating the EU on 31 December 2020. However, it is very likely that they will be treated just like any other EU trademark or Community design including applications.

• GENUINE USE OF A TRADEMARK:  For the new UK trademarks, there will be NO new 5-year grace period of non-use, but where the 5-year period includes time before 1 January 2021, use in the EU will be taken into account. The same will apply to any 5-year period for which genuine use of the new UK trademark will have to be proven.

• RENEWAL:  Where an EU trademark or design is to be renewed on or before 31 December 2020, payment at the EUIPO will also extend to the new UK right. No separate renewal will be necessary. Where, however, the renewal date falls after 31 December 2020, early payment of the renewal fee at the EUIPO will have no effect in respect of the new UK right. Thus, if you renew your EU trademark or design between 1 July 2020 and 31 December 2020, but the actual expiry date is after 31 December 2020, the early payment will only renew the EU trademark or design but will have no effect on the new comparable UK trademark or design! The newly created UK right will need to be renewed separately to enjoy protection in the UK for another 10 years.

• UNREGISTERED COMMUNITY DESIGNS:  Any unregistered Community design that has come into existence automatically by first disclosure in the European Union (without being registered at the EUIPO) on or before 31 December 2020, will be protected for a total of 3 years from its coming into existence – in the EU and also in the UK by a corresponding unregistered UK design right.

Contact us at info@lexdellmeier.com for more detailed information about the consequences of Brexit for your individual EU trademark and designs rights and we will be glad to advise.

When was the last time that you bought something not just off the shelf, but with giving it a little more thought before buying? Did you look for test results for the product category that you were interested in and if so, did the results influence which product exactly you ended up buying? And what does all of that have to do with trademarks? Here is the answer…
 

                       DE 30 2016 033 191                                                                        DE 30 2008 025 577

(Examples of blank test labels registered with the German Patent and Trademark Office)

Background

No matter if you are looking to buy a new electronic device, a new pillow, baby clothing or just plain water, there are (independent) tests and rankings for nearly everything and under all kinds of aspects. Over the years it has become quite common that before buying something, consumers search print and online media to see which products are “good” and which ones they should better not focus on. It is, therefore, of interest for manufacturers and merchants to use positive test result in the advertising of products.

Test institutions and media companies “allow” use of the test results for the tested products under certain circumstances and by use of their own trademarks – usually some kind of blank label that shows the name of the testing institution (the “test label”). The name of the tested product, the test result and information on where the test result has been published (in most cases the issue number of a print or online magazine) are then added by the manufacturer according to the license agreement with the testing institution for its trademark. Unfortunately, the test labels are often also used without a license and/or in relation to goods and services that have not been tested or that have been tested in a different size or color.

For instance, if a bed mattress has been tested “very good” in size 90x200 cm, can the testing institution’s trademark showing the label “very good” for size 90x200 cm be used on a bed mattress in size 140x200 cm as well or is that trademark infringement? Or if a baby bodysuit in color light blue has been tested, can the test result be used on the same good in color pink or yellow? The question has been subject of several warning letters and court cases over the years and now the German Federal Court of Justice (BGH) had to decide. It did so with three (3) decisions of 12 December 2019 (case no. I ZR 173/16 – “ÖKOTEST I” and case nos. I ZR 174/16 and I ZR 117/17 – “ÖKOTEST II”). The press release (in German only) can be found at the following link:

https://www.bundesgerichtshof.de/SharedDocs/Pressemitteilungen/DE/2019/2019158.html?nn=11918200

The Decisions

The BGH decided in favor of the testing institution (the plaintiff) and found it trademark infringement that the testing label had been used on products or in advertisements for products that had been tested in other sizes and/or colors.

Interestingly, the Court did not confirm likelihood of confusion between the registered trademark of the testing institution and the test label as used by the defendants. In fact, it held that the services covered by the registered trademark, namely, consumer advice and information, and the commercial services provided by the defendants (merchants in these cases) were dissimilar. A merchant who provides information about the characteristics of a product, such as its evaluation in a test carried out by a third party, does not provide the service of consumer advice and information in addition to the commercial offering. This finding seems non-compulsory and could well be argued to the contrary.

However, in its overall assessment, the Court concluded that the reputation of the test label and the high degree of similarity between the signs in comparison offset the dissimilarity of the goods and services concerned. The decisions confirmed that the test institution’s trademark is a well-known mark and that use of the mark without a license or in advertisements for goods other than the exact ones tested and without due cause, constitutes trademark infringement. If a third party attempts to gain advantage – at no cost – through the use of a sign similar to a mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit the economic efforts of the trademark owner to create and maintain the reputation of the trademark, the advantage resulting from such use must be considered an unfair advantage taken of the distinctive character or the repute of the mark.

After all, the Court – like the appellate courts before - gave greater weight to the test institution’s interest in controlling the advertising with its sign than to the defendants’ interest in informing their customers about the test institution’s assessment that the offered products were good or very good.

Conclusion

It remains to be seen if the use of test labels will change in the aftermath of these decision to make them more reliable for consumers again. For the moment, and no matter if you are a law firm, a testing institution, a manufacturer or a merchant – we are interested to hear how situations like these are dealt with in your country and welcome your comments. You may contact us at info@lexdellmeier.com or by phone at +49 – (0)89 – 55 87 98 70. We look forward to hearing from you!

As of 1 January 2020 you should be aware that various (international) classifactions have been updated again and have come into force. Classifications serve to index the content of intellectual property rights and documents. The aim is to standardize and to allow for content-driven retrieval, independent of the language of the respective document or the catchwords used. Classifications are important for systemizing IP searches in the corresponding databases, enabling to retrieve detailed and correct information.

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Here is a quick overview of the relevant IP rights and the classifications:

- TRADEMARKS

On 1 January, the 2020 version of the 11th edition of the Nice Classification entered into force, updating the 11th edition of the Nice Classification (NCL 11-2019) from 1 January 2019.

- DESIGNS

The official product list Design 2020 came into force on 1 January 2020, the 12th edition of the Locarno Classification already on 1 January 2019, replacing all previous editions of the classification and product lists.

- PATENTS and UTILITY MODELS - IPC version 2020.01

As of January 1, 2020, the IPC has more than 1,100 new entries. It now has a total of 75,548 main groups and subgroups. This is about 6,000 more than 10 years ago. Our "IPC Revisions" subpage provides an overview of the most important changes.

For more information please be referred to the link at: German Patent and Trademark Office 

Oktoberfest Table in Munich, Germany, for 8 people – Sunday, 27 September 2020, 4.30 pm – 11.00 pm

Charity Auction: starts: 5 December – ends 15 December 2019 (9.06 pm German time)

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Why should you participate and bid:

• You will have a very unique and great holiday present for family, friends, colleagues, your firm or company.
• You will support with your bid and the auction the Make-A-Wish Foundation.
• You know exactly what you are bidding for – date and time are already fixed.
• You will make at least one child in this world very, very happy.

Possible bidding methods:

1. ebay: You may use the following link on ebay https://www.ebay.de/itm/114002694748 to bid in case you own an ebay account.
2. Email: In case you do not have an ebay account, you can also send us your bid to our firm’s email address to: info@lexdellmeier.com

Note: Same deadline for bids via ebay or email, namely Sunday, 15 December 2019, 9.06 pm German time (time stamp counts), applies.

Prize:

You are bidding for a wonderful, reserved table for eight (8) persons at one of the famous Oktoberfest tents. The table includes coupons for 16 beers, 8 chicken and a plate of fantastic Bavarian appetizers for 8 persons. You will also receive VIP wristbands for priority entry into the tent.

Date and Time:

Sunday, 27 September 2020, 4.30 pm – 11.00 pm

Organizer of the Charity Auction and Donor of the Oktoberfest Table: LexDellmeier – Intellectual Property Law Firm, Nymphenburger Str. 23, 80335 Munich, Germany – www.lexdellmeier.com – contact person: Alexandra Dellmeier, Owner and Attorney at Law;

Donation will go to:

Make-A-Wish Foundation – see https://wish.org/about-us

LexDellmeier during the holiday season wishes to support children who are diagnosed with a critical illness. For this reason we have chosen to donate the money raised by the auction to Make-A-Wish Foundation.

Publication:

The auction ends on 15 December 2019, 9.06 pm (German time). We will then publish the bidder (by name or if he wishes anonymously) on our LexDellmeier blog at: https://www.lexdellmeier.com/de/blog

Spread the news and the link to our charity holiday auction:

If you like our idea – please forward this to friends, family, colleagues and/or bosses.

Hope you participate and support our good intention! Happy holidays and best wishes from the trademark and design team at LexDellmeier.

As many trademark owners in Germany and other western countries have experienced in the past, the demand for their high-quality products is very high with the middle class in China. Unfortunately, it is quite difficult for Chinese customers to distinguish between genuine products that have been imported by the European manufacturer on the one hand and imitations by counterfeiters on the other hand. Particularly with food products and its health implications, it is extremely important to make sure that products are genuine. To protect consumers and to strengthen their trade relationship, the EU and China concluded an agreement on the reciprocal protection of Geographical Indications (GIs) on 6 November 2019. The corresponding press release of the European Commission can be found at  

https://ec.europa.eu/commission/presscorner/detail/en/IP_19_6200

What are Geographical Indications?

Geographical Indications are product designations which have such a close link to a specific geographical place that consumers assume that goods with the product designation always originate from that specific geographical place. For instance, consumers assume that “Champagne”, the French sparkling wine, originates from the Champagne wine region in the northeast of France. If the product is instead made in another region or country like Ningxia in China, consumers are being misled which is not just a potential health threat, but also a threat to the quality expectations and the reputation of “Champagne”-products and their exclusivity. 

Therefore, the name of certain foodstuffs and agricultural products like fruit and vegetables, fish, meat and meat products, cheese, bread, pastry and beer can be protected as Geographical Indications in the EU. To gain protection, the name that is used to designate a product must directly relate to the origin of the product – being a specific place, a specific region or a specific country. The essential requirement for protection is that there is a link between the properties of the product and its production in the region of origin.

In Germany, the application for registration of a Geographical Indication must be filed at the German Patent and Trademark Office which will examine the application and then forward it to the European Commission for registration. For more detailed information on the protection of Geographical Indications, you are welcome to contact us at LexDellmeier by email or phone and we will be glad to advise further (see contact details below).

EU and China landmark agreement

In the EU, there are over 3,300 names registered as Geographical Indications / Designations of Origin and for 100 of them protection will soon extend to China.

The new agreement between China and the EU guarantees protection of 100 European Geographical Indications in China and 100 Chinese Geographical Indications in the EU against imitations and usurpation. China is the second largest destination for EU agri-food exports and thus a very important and high-growth potential market for European food and drinks. At the same time, China has a well-established Geographical Indications system of its own, with specialties that European consumers will soon be able to further discover thanks to the new treaty. The agreement must still go through certain legal processes but is expected to enter into force before the end of 2020.

The EU list of Geographical Indications to be protected in China includes products such as “Bayerisches Bier” and “Münchener Bier” for beers, “Rioja”, “Sherry”, “Bordeaux”, “Chianti” and “Champagne” for wines, “Feta”, “Gorgonzola” and “Roquefort” for cheese, “Irish whiskey”, “Grappa” and ”Polska Wódka” for spirit, “Prosciutto di Parma” for meat products and “’Scottish farmed salmon” for fish. Among the Chinese products, the list includes “Baoshan Xiao Li Ka Fei” for coffee, “Shanxi Lao Chen Cu” for vinegar, “Fuzhou Mo Li Hua Cha” for jasmine tea, “Pizhou Da Suan” for garlic, “Songxi Lü Cha” for green tea and “Wuchang Da Mi” for rice. The complete lists can be found with further information at the link mentioned above regarding the press release of the European Commission dated 6 November 2019.

Importance of Geographical Indications in trademark matters

Protected Geographical Indications must be taken into consideration as absolute grounds for refusal in trademark application proceedings and can be the basis of invalidity proceedings or oppositions in trademark conflicts.

Thus, should you like to know if it is possible for you to use a certain product denomination containing the name of a geographical place or if you would like to inquire about the possibilities to protect a product denomination as Geographical Indication, we will be glad to hear from you and to advise further. You can contact us by email (info@lexdellmeier.com) or phone (+49 89 5587987 0).

If you have ever had to take your case from the EUIPO to the General Court or even to the Court of Justice of the European Union (CJEU), it might have taken you a while to get a decision. Thus, among other reasons, the European Union decided to slightly amend the judicial structure of the Court of Justice to make the system more efficient.

1. Background

Some time ago, the Court of Justice and the General Court reviewed the effectiveness of their work -- also in intellectual property (IP) cases. They found that many appeals filed with the CJEU were dismissed on the ground of evident inadmissibility or because they were evidently unfounded. That came as no surprise as many appeals were brought in cases which had already been considered twice. Before reaching the Court of Justice, they had already been reviewed and decided by an independent board of appeal and then by the General Court. Thus, changes in the judicial structure of the court system were deemed necessary.

2. New appeal requirements

Regarding intellectual property cases, one of the measures taken to make the Courts more efficient took effect on 1 May 2019. To avoid the unnecessary work involved with cases that are obviously inadmissible or unfounded, an allowance stage was newly introduced. As of 1 May 2019, any appeal in IP cases must be accompanied by a request asking that the appeal be allowed to proceed. The request must not exceed seven (7) pages and clearly state the reasons why the appeal should be decided by the Court of Justice. The appeal will only be allowed if it is significant with respect to the unity, consistency or development of EU law. Without such request, the appeal will be automatically declared inadmissible.

The request will be decided upon based on a proposal from the Judge-Rapporteur and after hearing the Advocate General. The ruling will then be published on the Court’s website with reasons on whether or not the appeal is allowed to proceed.

The introduction of an allowance stage for IP cases will most likely reduce the number of IP cases that the Court of Justice has to deal with. But to not be rejected for formal reasons when filing an appeal with the CJEU, be sure to not just file your grounds of appeal, but to also include a separate letter of no more than seven (7) pages to get your appeal allowed first!

3. Specialized IP chambers and increase in number of judges at the General Court

Another important change to make the European Courts more efficient is the increase in the number of judges at the General Court up to a total of 53 judges by 26 September 2019. The increase is accompanied by changes to the system for allocating cases to the Chambers. Out of the ten Chambers of the General Court, six Chambers will specialize in intellectual property matters -- with IP cases having made up about 40 per cent of the court’s cases in 2018. The cases will be allocated on a rotational system, but as regards IP cases, only the Fifth through Tenth Chamber will be involved. In very special circumstances, the rotational system may be circumvented by the President of the General Court in order to take account of a connection between cases. That can apply for instance in cases with the same or legally similar subject matters or with a view to ensuring an even spread of the workload. Let’s wait and see whether the increase in judges will speed up the time that the General Court needs to decide IP cases!

Should you be looking for legal assistance in proceedings at the General Court or the Court of Justice of the European Union, you are welcome to let us know and we will be glad to discuss your case with you. You can contact us by email to info@lexdellmeier.com or by calling +49 89 5587987 0.

Over the last few years, an increasing amount of law firms have announced that they will start using artificial intelligence (AI). However, for many it may still be unclear what the concept of AI includes and what kind of possibilities it has to offer especially in the legal field. This article aims to give an overview on how law firms can take advantage of AI and chatbots to support their daily work. At the end of the article, the possible impact that AI will have on the legal profession is shortly discussed.

Definition and benefits

There is no exact definition of artificial intelligence (AI). According to TechTarget, AI can be defined as “the simulation of human intelligence processes by machines, especially computer systems”. The processes that are referred in this definition include learning, self-correction and reasoning.

Firms in the legal field can naturally adapt AI for many different purposes depending on their needs. One practical example is to use AI for invoicing. If a firm receives for example tens of thousands of invoices all over the world every year, using AI for reading the incoming invoices and accounting their contents to the right cases can save a lot of time. In principle, AI could also be trained to read authority reports and monitor deadlines from them. (Tekniikka & Talous 2017.)

A third possibility for reducing workload in a law firm could be using chatbots. Chatbots use AI to answer simple questions and simulate human conversations. Chatbots can for example take care of dealing with potential new clients. A chatbot called “Parker” had over 1000 conversations regarding basic questions on data protection and privacy on its first day at work (Financial Times 2018). Having someone to answer basic questions around the clock seems like a perfect solution for a busy lawyer. Using chatbots can benefit both large and small businesses.

Legal Technology Survey Report

In 2018, American Bar Association (ABA) published a Legal Technology Survey Report. The report provides at least a general idea of how common it is to use AI in the legal field. The survey had 900 respondents from US. According to the report, only 10% of lawyers used AI-based tech tools for their legal work. The study showed that the use of AI was greater among large firms with over 100 attorneys. Smaller firms were uncertain over what benefits AI offers, and most of solo lawyers and lawyers at boutique law firms had no interest in purchasing an AI-based software. Similar surveys have not been conducted in Europe yet. However, it is likely that the results would be similar at least to the point that larger firms are usually the first ones to adapt new AI based tools.

Future developments

AI cannot be mentioned in the legal context without discussing its possible implications for the legal profession. What will happen to lawyers if AI will soon take over some of the routine work? Future development is of course hard to predict, but it is hard to believe that AI would put lawyers out of business. Most likely AI will help lawyers to work more efficiently. Instead of using way too much time to answering routine questions and doing other “simple” tasks, lawyers can focus on counseling, analyzing and advocacy (Law Technology Today 2018). In this way, lawyers can also provide more value to their clients.

Conclusions

It can be concluded that even though teaching AI requires time and effort, the results make the processes much more efficient and eliminate a lot of time-consuming routine work. The possibilities of AI in the legal field are limitless. Currently, use of AI seems to be greater among large firms. However, especially chatbots can benefit also smaller law firms by letting lawyers focus on higher-level tasks. AI benefits both lawyers and clients. It is important not to ignore advancements in technology that could improve legal services. AI is becoming very important for the future – also in the legal field.

Each of LexDellmeier’s trainees is assigned a theme that he/she will work on during the whole trainee period. This article is written by our former trainee, Hanna Lahtela, as a part of her overall trainee project. At the end of her traineeship, she prepared also a presentation on the main findings of the project for the entire LexDellmeier team.

The German Patent and Trademark Office (GPTO) refused registration of the trademark “Oktoberfest” – just before the Münchner Oktoberfest will start.

Munich locals and visitors from all over the world are thrilled: Oktoberfest or “Wiesn” 2019 will start on 21 September 2019 – the Munich “original” – often copied, but still unmatched. For “Münchner Kindl” (the people born in Munich) it is unthinkable that someone might not connect the terms “Oktoberfest” or “Wiesn” with beer and beer tents, brass band music and fairground rides and – of course – with Bavaria and Munich (and definitely with no other country or city). The German Patent and Trademark Office (GPTO) and the European Union Intellectual Property Office (EUIPO) say that this is also the case for the rest of the German-speaking public, and that, therefore, neither “Oktoberfest”, nor “Wiesn” are capable of being registered as trademarks (at least not for those goods and services which are of most interest for the applicant, the city of Munich).

I. Several attempts for obtaining EU- and German-wide trademark protection for “Wiesn” and/or “Oktoberfest”

In 2015, Munich had applied at the EUIPO for trademark protection of the expression “Wiesn” as a word mark (EUTM no. 014912802). The EUIPO objected the mark, arguing that the broad public will understand “Wiesn” as synonym for “Oktoberfest”. “Oktoberfest” is a very famous festival, as the broad public knows. The expression “Wiesn” allegedly implies to the addressed audience that goods and services for which the expression is used, are “somehow” related to the Oktoberfest. However, after some struggles, the mark “Wiesn” was successfully registered in 2018 for some goods and services in classes 3, 9, 38, 39, 40 and 42 – for example for cosmetics, electronic parts, telecommunication services, design of websites and software. To speak honestly: those are not the goods and services which cover the main fields of the “real” Wiesn, but indeed goods and services which will not be related to the famous beer festival. Nevertheless, the registration of “Wiesn” as a word mark for at least some goods and services is a partial success for the applicant.

While the proceedings regarding the potential mark “Wiesn” were still pending before the EUIPO, the applicant filed a word mark application “Oktoberfest” with the EUIPO (EUTMA no. 015535008), designating 27 (of 45 possible) classes of the Nice Classification, inter alia, beer and non-alcoholic beverages in class 32, alcoholic beverages in class 33, advertising services in class 35, organization of public festivals in class 35 and catering for guests in class 43. Also, this application was objected by the EUIPO Examining Division – apparently for all goods and services. For unknown reasons, the EUIPO’s online register file does not show any documents to the public. However, according to the status of the register, an appeal is pending before the EUIPO Board of Appeal; hence, the applicant obviously is further attempting to get the application registered.

In 2018, the applicant additionally tried it locally and filed an application for “Oktoberfest” at the GPTO (German trademark application no. 30 2018 008 442.3), designating only services in classes 35, 41 and 45. The GPTO also objected this trademark; the applicant withdrew the application in the beginning of September 2019, probably in order to avoid a negative official decision.

II. Comment and Forecast

As to the further developments of the proceedings, it seems like Munich’s strategy is focusing on the EU applications rather than further trying to convince the German instances of the registrability of the term “Oktoberfest” as a trademark. At least the applicant has some trademark protection for the term “Wiesn”. If the EUIPO Board of Appeal confirms that the term “Oktoberfest” is not registrable, the applicant will likely bring the matter to the Higher European instances (General Court and European Court of Justice).

As is so often the case, there are many and diverging interests regarding this matter. The annual Oktoberfest is of course an immense source of income for Munich. In addition, there are a lot of “Oktoberfest” imitations all over the world which surely do not always meet Munich’s expectations regarding how such a festive is to be celebrated and what kind of products are to be offered. In addition, those imitations do not have any connection to Bavaria and Munich. For these reasons, it is of great importance to Munich to protect the expression “Oktoberfest” and to have control over its use by third parties. Obtaining trademark rights for “Oktoberfest” for goods and services related to a public festival would put Munich in the position to prohibiting third parties to use “Oktoberfest” for their interpretations of this event and potentially also to bind and control third parties who make money with the offer of “Oktoberfest” merchandising products. This is a huge market with almost unlimited growth potential.

The question is: Should the city of Munich receive a “monopoly” for “Oktoberfest”? What would happen to all the other “little” Oktoberfests around the world? Finding a fair solution for all parties involved will be a difficult task for the offices and courts.