Zielgruppe: Ein Workshop für Unternehmer, Geschäftsführer, Start-Ups sowie Leiter und Mitarbeiter von Rechts-, Marken- und IP-Abteilungen.
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Flyer, Anmeldung und Zahlung auf XING unter:
https://www.xing.com/events/markenrecht-oktoberfest-2099509
WOKRSHOP: 11.00 - 15.00 Uhr
Thema 1: Marken & Designs – effektiver Schutz für Ihre Produkte
Thema 2: Rechtserhaltende Markenbenutzung in Deutschland, der EU und den USA
Thema 3: Exkurs: Das Imperium Oktoberfest
OKTOBERFESTBESCUH: 16.00 - 22.00 h
Übernachtung: Im Hotel Eden Wolff haben wir jeweils 10 Einzelzimmer von Sonntag auf Montag, 29./30. September sowie von Montag auf Dienstag 30. September/1. Oktober 2019 zum Selbstzahlerpreis von 255 EUR/Nacht reserviert. Bei Interesse schicken Sie uns bitte eine Email an workshop@lexdellmeier.com
PROGRAMM- und WORKSHOP-FLYER: Weitere Informationen können Sie dem unten angehängten Workshop-Flyer entnehmen.
Programm:
Thema 1: Der rechtliche Schutz von Marken
Die Wahl des richtigen Schutzrechtes
Was kann wie geschützt werden?
Welche Unterschiede bestehen?
Wo gibt es Überschneidungen?
Die individuelle Anmeldestrategie
Staying local, going global oder beides?
Vorteile einer individuellen Strategie im Vorfeld
Stark im Konfliktfall
Welchen Schutzumfang haben Marken & Designs?
Wie kann ich meine Rechte im Streitfall durchsetzen?
Thema 2: Rechtserhaltende Markenbenutzung in Deutschland, der EU und den USA
Warum sind Marken im Markt zu benutzen?
Wann sind entsprechende Nachweise zu erbringen?
Wie sind Marken rechtserhaltend zu benutzen?
Benutzung des eingetragenen Markenzeichens
Wie ist die ernsthafte Benutzung nachzuweisen?
Zeit, Ort, Umfang
Sonderfall USA
Thema 3: Exkurs: Das Imperium Oktoberfest
Historie, Fakten & Zahlen
Marken- und Designschutz
Abschlussdiskussion
Ab 16.00 - ca. 22.00 Uhr - Oktoberfestbesuch (reservierte Tische)
On 15 April 2019, the Directive on Copyright in the Digital Single Market, a.k.a. the EU Copyright Directive, was approved by the Council of the European Union.
As the European Commission emphasizes (please see https://ec.europa.eu/digital-single-market/en/modernisation-eu-copyright-rules), the new Directive should support “creating a Digital Single Market” and “bringing down barriers to unlock online opportunities”. The aim is to provide EU copyright rules that fit to the digital age.
The main goals are:
• better access to online content and across borders,
• improved copyright rules for education, research, cultural heritage and inclusion of disabled people and
• a fairer online environment for creators, the press and a well-functioning marketplace for copyrights.
The EU member states now have two (2) years to implement the reform into national law.
1. Draft Article 13 of the Directive under cross-examination
The approval of the Directive results from previous heated debates, in particular about Draft Article 13 (which will be Article 17) of the Directive which deals with the “use of protected content by online content-sharing service providers”. Critics fear that this rule – which is exclusively directed to for-profit platforms like YouTube or Facebook – will force commercial platform operators to implement “upload filters” on their websites resulting in a censorship and a violation of the freedom of speech.
More than 5,000,000 signatures were gathered and resulted in a petition against Article 13, the largest in EU history. By demonstrating on the streets, particularly in Germany, 200,000 protesters ensured that their concerns became impossible to ignore – and nevertheless, the reform passed.
2. Content of Draft Article 13 in a nutshell
Draft Article 13 clarifies initially that certain platforms that rely on user-uploaded content are not just hosts, but that they are “performing an act of communication to the public or an act of making available to the public” – in other words: that they are using the content uploaded by the users by themselves in a way which may be subject to copyright law.
Therefore, according to Draft Article 13 they are – first and foremost – required to negotiate license agreements with rightholders. If the provider obtains such authorization, for instance by concluding a licensing agreement, the regulation provides that that authorization shall also cover acts carried out by non-commercial users. This is huge for ordinary (non-profit) users as their use of any copyrighted material is covered by deals which have been negotiated between the online content provider and the rightholder.
Only if no authorization is granted, online content-sharing service providers shall according to Draft Article 13 be liable for unauthorized acts of communication to the public, including making available to the public, of copyright-protected works and other subject matter, unless they can demonstrate that they have
“(a) made best efforts to obtain an authorization and
(b) made, in accordance with high industry standards (…) best efforts to ensure the unavailability of specific works (…) for which the rightholders have provided the service providers with the relevant and necessary information; and in any event
(c) acted expeditiously, upon receiving a sufficiently substantiated notice from the right holders, to disable access to, or to remove from, their websites the notified works (…) and made best efforts to prevent their future uploads in accordance with point (b).”
Popular belief is that such “best efforts to ensure the unavailability of specific (unlicensed) work” can in fact only be upload filters. However, this section of Draft Article 13 holds platforms accountable only in the absence of a deal with the rightholders and, in addition, provides some exceptions: if the platform providers have proven they have made a real effort to get a license and stopped users from accessing unauthorized content. In practice, it shall mean that if a rightholder refuses to conclude a license agreement with the platform provider, then the two parties have to work together to make sure that those works are not made available on the site. While platform providers need to be able to identify specific copyright protected content for which rightholders provide relevant information, there is no obligation for platform providers to put upload filters in place. In fact, it is even questionable whether randomly used filters would help stopping unlicensed content from being posted.
In addition, according to Draft Article 13, the obligations of online content sharing service providers will be proportional to their size, means and business models as well as to the type of content which is uploaded by the users. Start-ups will under certain conditions benefit from a smart and special exemption during their first three years. They will only have to make best efforts to obtain licenses from rightholders and to remove unlicensed work notified by rightholders. There is no stay-down obligation for start-ups falling under this Article.
As a consequence of the heated debates and protests against Article 13, the wording of the regulation now provides that Member States shall ensure that users in each Member State are still able to rely on quotation, criticism, review or the use for the purpose of caricature, parody or pastiche as existing exceptions when uploading content generated by users. This section should safeguard freedom of speech and protect from automated blocking.
It is also fixed that the application of Article 13 shall not lead to any general monitoring obligation – service providers do not need to implement global monitoring of any and all content which is uploaded by users. However, platforms have to ensure that they are transparent about their rules and practices regarding cooperating and licensing and that they are able to provide rightholders, at their request, with respective information.
3. Comment to Draft Article 13
The Directive in general and Draft Article 13 strengthens the rights of the creators as the rightholders. This is to be highly welcomed. Therefore, the Directive has widely been supported by newspapers, publishers, and media groups.
Due to Draft Article 13 and its alleged violation of the freedom of speech and due to its alleged heavy consequences for platform providers, the Directive has been opposed by major tech companies and Internet users, as well as human rights advocates.
However, the Directive in its final version provides a fair and balanced exceptional-law-principle, which does in the end in fact not force platforms to use upload filters (an expression which is not even used by the wording of the Directive). The Directive highlights repeatedly that a “Big Brother”-style monitoring is not the aim of the work. In addition, the special situation and specific interests of small enterprises and, in particular, start-ups are considered.
After weighing the interests of all parties and also taking into consideration the concerns of the rightholders whose rights will be strengthened, Article 13 in its current form is to be welcomed.
For more information, please contact us via info@lexdellmeier.com.
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Alexandra Dellmeier is a German Attorney at Law and Certified IP Attorney. She founded the law firm LexDellmeier Intellectual Property Law Firm 10 years ago in Munich, Germany. It is time to say:
“Thank You” on behalf of great clients and colleagues in Germany and around the world!
“Happy Anniversary” to all its fantastic team members!
To celebrate this milestone, here are highlights from our interview with Ms. Dellmeier featuring 10 things you may or may not have known about LexDellmeier.
1. Why did you call the firm “LexDellmeier”?
As a trademark attorney, I wanted to establish a “brand” – different than other firms who usually use the founders last names, string them together and end up having extremely long firm names. “Dellmeier” reflects my last name. The “meier”-part makes it rather clear that we are German or have German roots, and are perceived around the world as hard-working, diligent and reliable. And “Lex” has two meanings. In Latin “Lex” means “the law”. And, “Lex” is also a short version of “Alexandra”, my first name. So, that is the how the brand “LexDellmeier” was born.
2. Ms. Dellmeier, what was your first contact with IP?
Coincidence. Curiosity. Luck. On my first day as a legal intern at a Munich IP firm in 1997, I discovered a gigantic shelf of Adidas t-shirts, shorts and jogging suits in the office. I was excited and immediately ran to one of the partners and proclaimed: “I would like to join the firm’s soccer team!” The managing partner looked bewildered and told me that the firm did not have a soccer team. I persisted: “But, I saw the full closet of sports clothing …” - I still remember his loud and hilarious laugh. After a moment, he finally explained that the sportswear was counterfeited and confiscated by German Customs from a shipment coming from Turkey into Hamburg harbor.
So, trademark infringement, counterfeits and border seizures were my first entree to IP. I will never forget that first day, which sparked my interest in Intellectual Property.
3. How has your career developed in the field of IP?
Prior to starting LexDellmeier, I was an equity partner at another renowned German IP firm with 100 people. During those years, I had the opportunity to work on incredibly interesting and prestigious trademark, design, patent and utility model litigation cases. That is where I made the link between non-technical and technical protection and I became a “true” IP attorney. Before that, I worked as VP/in-house counsel at a German broadcasting and television studio which gave me an insight into what it is like to be inside a company and contract out for legal services. This experience gave me a better understanding of what my clients need from my firm as an outside attorney and I designed our services accordingly.
One of my best talents that has supported my career from the beginning and maes it possible for me to work internationally with ease, are my language skills. In this resepct I was quite fortune. My father was a chemist and exchange scientist in the United States and I had the opportunity to go to school in the US for six years. Growing up in a bi-lingual home, speaking German and English, has been a real advantage for me professionally.
4. Why did you start LexDellmeier?
I love my work and I really enjoy advising clients all over the world, especially the international aspect of IP. My aim was, is and always will be to be part of a firm that has a passion for IP, its clients and its employees. I did not find this combination in any other firm in Germany. So, with 12 years of IP experience under my belt, I decided to start my own firm and do things differently and better back in 2009. First, we listen to clients. Second, I trust my colleagues and team members. Third, I am happy when clients and employees are happy.
5. Do you still have clients from 10 years ago?
Yes. I am proud and honored to say that we still advise and represent almost all of the clients we started with 10 years ago. We had a small number of clients back in 2009. Over the past 10 years, LexDellmeier has grown its client base. Traditionally, we had more clients from overseas. Today, approximately 40% of our clients come from Germany – 60% from other countries including USA, Canada, China, Switzerland, France etc.
6. What markets and clients do you represent?
We represent clients from different industries, such as the cosmetic and fashion industry, automotive, high-tech, medical, pharmaceutical, aerospace, food & beverage sector, etc. We enjoy working with single applicants, start-ups, SME’s and large companies and have a great mix of clients and industries which makes our daily work challenging, interesting and rewarding.
7. What three things are needed to be a successful IP boutique law firm?
Expert knowledge in the IP field, understanding clients and their business needs – and PASSION! The ability to listen to clients’ needs, strong communication and language skills as well as “thinking outside the box” are talents I believe are important, too.
Of course, you need to have a fantastic team. LexDellmeier started as a one (wo)man show on 1 May, 2009. Three days later I had my first employee, Elisabeth Sandmair, a certified IP paralegal with an LLB law degree who still works with me. And now, LexDellmeier has eight highly qualified, communicative and fun team members.
8. How important is education in the field of IP?
Extremely important. As Kofi Annan once said: “Knowledge is power. Information is liberating. Education is the premise of progress, in every society, in every family (… and in every firm).
We have internal firm meetings every two weeks where one person gives a lunch talk about changes and updates in law, new technologies etc. In addition, each firm member is encouraged to attend at least one CLE class in the field of IP. I myself started the INTA paralegal roundtable in Germany in 2013 in order to specifically support paralegals to have access to valuable education. Since 2017 I have been an adjunct professor at the Hochschule der Bayerischen Wirtschaft (HDBW) in Munich, Germany for IP Law. And, each year we have two to three law students working as interns in our firm. They receive valuable technical training and are also involved in the daily business of the firm.
9. What are your short-term future goals and your long-term vision?
Our short-term future goals are to "go green" and fully paperless as of 1 January 2020. Our IP software and docketing system has already been reprogrammed so that we can work fully digital. We are currently in the process of streamlining our work and changing and adapting procedures and working 100% digitally In addition, we are experimenting internally with AI and its applicability to the legal field - especially regarding IP. We are also testing chatbots to see if they are useful for our clients. I love technology - but, sometimes I have mixed feelings about the speed of innovation in this area. We are open-minded about technology and use it to help clients and our team in our daily work. Our primary focus remains to be a boutique firm with a personal touch - we still like to talk to our clients and meet up with them in person. Going forward, we will continue with both approaches - personal and technology driven.
Albert Einstein once said: “Logic will get you from A to B. Imagination will take you everywhere”. My vision was and is to continue having a local presence and boutique office in Munich, Germany but, to also to expand virtually. We have team members with young children. They cannot travel long distances to the office every day or only want to work part-time when their children are small. LexDellmeier offers the option to work from home part-time and strives to enhance work-life balance for its employees. Our systems are highly secure, with firm-paid hardware, software and IT support. Prerequisite is, however, that the employee has a separate room or office to work from home. A coffee table in a kitchen is not a professional surrounding and we do not support that. Our guideline is that employees come to the office at least 50% of the time to talk, participate in meetings, interact, eat lunch together and stay up-to-date. This was my vision 10 years ago when I started the firm and it has become reality. Besides being flexible regarding work hours, the possibility to work from home has attracted some highly qualified women to our firm as their careers came to a stop in large law firms when they started families. Bottom line: If managed correctly with clearly stated expectations, flexible work arrangements are a win-win for all involved - clients, the firm and the employees.
10. What are LexDellmeier’s 10th anniversary plans?
May 1 is “Labor Day” – a public holiday in Germany. Therefore, the firm will be closed on that day. We have always been known for having “party” plans throughout the year that suit our boutique law firm’s culture. We will celebrate with our international clients at the upcoming INTA Meeting in Boston from May 18 – 22, 2019 (world’s largest IP conference with over 10,000 trademark experts). In Germany, we plan a trademark seminar during the Oktoberfest in Munich in September 2019, a great reason for a business trip for our clients from near and far away. Towards the end of the year from November 22 – 24, 2019, the entire firm and all its team members are going to our bi-annual very special “spa and strategy” retreat.. The date is set and the hotel is booked, but the location is still a secret and a surprise. Work sessions are planned from 9 am – 3 pm, then everyone has free time to get a massage, go hiking, swimming or just chill and get to know each other better. In preparation for the work sessions, each team member selects and presents a topic of their choice, typically a specialty area of their expertise to share their knowledge and educate the others. This is also the time, when we discuss how to improve our services and response time, plan new alliances, educate and improve ourselves – and have some fun at the same time.
Intellectual property authorities of China have recently gone through major changes. This blog post briefly introduces the merger of patent and trademark authorities into the China National Intellectual Property Administration (CNIPA).
In August 2018, the State Intellectual Property Office of China (SIPO) was renamed to China National Intellectual Property Administration (CNIPA). On 14 February 2019, the CNIPA issued a notice informing that, as of 1 April 2019, the following entities will also be merged with the CNIPA:
- China Trademark Office (CTMO)
- Trademark Review and Adjudication Board (TRAB)
- Trademark Examination Cooperation Center (TECC)
- Patent Review Board (PRB)
The names of the former entities are no longer used. The new structure is similar to the United States Patent and Trademark Office as well as the German Patent Office (Deutsches Patent- und Markenamt).
This means, in practice, that all trademark prosecution work will be carried out by CNIPA. In principle, the restructuring will not affect to the process and procedures in any way. The new agencies will handle all pending cases and all we have to do is get used to the new name. For more information, please see CNIPA’s official website in English at english.cnipa.gov.cn.
Talking about changes in China, it is also worth mentioning that the Administration for Industry and Commerce (AIC) is now called the Administration for Market Regulation (AMR). Respectively, the State Administration for Industry and Commerce (SAIC) is now the State Administration for Market Regulation (SAMR).
Every year on April 26 we celebrate the World Intellectual Property Day organized by the World Intellectual Property Organization (WIPO). This year’s theme is “Reach for Gold: IP and Sports”. The campaign encourages taking a closer look inside the world of sports, where intellectual property rights also play an important role.
The kick-start of the World IP Day was already in the year 2000. WIPO's member states decided to designate April 26 as the World IP Day because the WIPO Convention came into force on that day in 1970. The goal of the World IP Day is to increase general understanding of intellectual property and raise awareness of how different IP rights impact on our daily life.
“IP and Sports” is an inspiring theme that raises many interesting questions. Especially topical issues relate to the game-changing technological advances in artificial intelligence and robotics that are driving change in all sports fields. Here are some examples of how IP rights support the development of sport and its enjoyment globally:
- Trademarks and branding maximize commercial revenue from sponsorship, merchandising and licensing agreements. These revenues offset the cost of organizing sport events, such as the Olympics. Athletes can generate earnings from sponsorship deals with brands and by building their own brands.
- Sport businesses use patents and designs to foster the development of new sports technologies, materials, training and equipment.
- Broadcasting rights form the basis for the relationship between sport and television and other media, bringing sports fans closer to the action.
Get the ball rolling and find out what is happening near you from the World IP Day events map. More information about the World IP Day 2019 can be found here.
Traditional forms of trademarks will remain the most relevant, but companies should also start making more of the new possibilities to register and use more complex marks like hologram marks, motion marks or multimedia marks to strengthen their business. However, give a lot of thought into creating such marks to ensure they will be recognized as TRADEMARKS by the public.
EUTM No. 017451816 EUTM No. 017941596 EUTM No. 017965087
(Examples of multimedia marks registered with the EUIPO)
1. Registration of Multimedia Marks
With new forms of marks having become eligible for trademark registration, the possibilities of creating and using new trademarks have become numerous for companies of all sizes. Over the past months, I have been asked a lot about the registrability of marks combining different elements like still pictures, moving images and sound – and the answer is, yes, such marks can be registered as multimedia trademarks in Germany and at the European Union Intellectual Property Office. To find out about other countries of interest for you and your company do not hesitate to contact me at info@lexdellmeier.com and I will be glad to advise further.
To obtain a registration for a multimedia trademark requires giving some thought though to the mark itself and to what exactly you would like to see protected in commerce. While with traditional trademarks like words or logos it is rather clear what the public will see and keep in mind, this question gets harder to answer the longer and more complex your mark becomes.
In theory, your multimedia mark can combine all kinds of moving or non-moving images with sound. While that might be quite tempting for the creation of new marks, always keep in mind that you still want the multimedia spot to be recognized as a TRADEMARK by the public. The longer and more complex a multimedia spot is, the more unlikely it will be that the spot per se will be deemed a trademark. Thus, you might want to keep your multimedia spot rather short. Besides that, there are hardly any restrictions as to the content of the spot. From the above examples of multimedia marks that have been registered with the European Union Intellectual Property Office over the past months, the one with the sole of a shoe (EUTM No. 017941596) even shows that by combining different media, you can create a mark that describes a technical function of your product, but is still sufficiently distinct to be considered a TRADEMARK. Follow the link given above and you will see what I mean.
2. Maintaining and Enforcing Multimedia Marks
While the possibilities that multimedia marks offer to business owners are huge, there will, however, also be challenges in maintaining and enforcing such rights. A particular issue that should be taken into account is that a mark needs to be genuinely used in relation to the goods and services it is protected for. Otherwise, it might lose protection after five consecutive years of non-use. As long as a multimedia mark can be part of the product itself, this should be less of a problem. But this will not be the case for all kinds of products (see the shoe example above). Thus, use of a multimedia trademark should be thoroughly prepared and archived to ensure that the registration will earn a long life.
Multimedia marks are an exciting new form of trademarks and we will surely see a lot more of them in the near future. Should you consider adopting a multimedia mark for your business, you are welcome to contact us for further information and advice at any time at info@lexdellmeier.com.
In April 2019, the Center for Intellectual Property Understanding (CIPU) published a report regarding IP awareness and attitudes. The report summarizes and collects together 15 studies and surveys focusing on IP awareness and perception among consumers, small businesses and college students.
The main finding of the report is that there is an increasing global disconnect between intellectual property awareness and understanding. The report interestingly points out that even though the general public might know that patents, copyrights and trademarks exist and even that they are valuable, there is a low understanding of why intellectual property is important. This lack of understanding appears to encourage counterfeit purchases and content abuse. It also discourages small businesses from growing.
According to the report, one of the factors causing poor intellectual property understanding and negative attitudes is a common perception that intellectual property only benefits large corporations. At the end of the report, the CIPU suggests that for improving respect for intellectual property, educational programs should make intellectual property topics more relatable to an individual’s circumstances. The report concludes that there is still much work to do in raising awareness about the practical implications of intellectual property on commerce, culture and individual lives.
For more information, please read the whole report here.
On 14 February 2019, the Higher Regional Court Frankfurt a.M. ruled that German courts have an international competence for adverts on the Internet in particular, if those adverts are provided on a “.de”-top-level-domain and if the web presence does not contain indications that the offer is not directed to German customers.
The Court also clarified that the use of English language is no such indication considered alone. In addition, the Court also established further rules regarding the assessment of misleading advertising (§ 5 of the German Act against Unfair Competition, UWG). In particular, the judges found it misleading to use the expression “World’s Lightest” in connection to luggage, if the respective pieces of luggage are in fact not the lightest in the world, compared to those of other producers. This is also applicable if the indication “World’s Lightest” is used as an eye-catcher on a fair stand on which several different pieces of luggage are presented.
Furthermore, such trade fair advertising is misleading according to German competition law, if the exhibition is an international trade fair directed to an expert audience and the respective exhibitor does not even deliver to Germany, but the German visitor of the fair is able to obtain the respective products abroad.
For more information, please find the full decision in German here: https://www.jurion.de/urteile/olg-frankfurt_am_main/2019-02-14/6-u-3_18/.
In March 2019, the European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Cooperation and Development (OECD) published a study estimating the total value of counterfeit and pirated goods traded both globally and on EU level. The new report updates the original analysis from 2016. According to the report, the intensity of counterfeiting and piracy is clearly on the rise.
The new EUIPO/OECD report, based on data from 2016, estimates that the total value of counterfeit and pirated goods traded globally is as much as EUR 460 billion (USD 509 billion). This represents up to 3.3% of the world trade. The previous study estimated that in 2013 up to 2.5% of world trade was in counterfeit and pirated goods, equivalent to up to EUR 338 billion (USD 461 billion). This means that the share of trade in counterfeit and pirated goods in global trade grew significantly in just three years. It should be noted that the results do not include domestically produced and consumed counterfeit and pirated products or pirated digital content on the Internet.
Turning to assessment of the situation in the EU, the results show that in 2016, imports of counterfeit and pirated products into the EU amounted to EUR 121 billion (USD 134 billion), which represents up to 6.8% of all EU imports. The growth is notable also in the EU, as in 2013 the portion was 5%.
Most counterfeits and pirated goods originate from China and Hong Kong (China). Other countries and regions from where these goods mainly come from include the UAE, Turkey, Singapore, Thailand, India and Malaysia. Companies that suffer the most from counterfeiting and piracy are primarily registered in OECD countries such as the United States, France, Italy, Switzerland, Germany, Japan, Korea and the United Kingdom.
According to the study, the fake products can be found in a large number of industries, such as common consumer goods, IT goods and luxury items. The report underlines that many fake goods, especially food and beverages, pharmaceuticals and medical equipment can pose serious health and safety risks for consumers. The study also interestingly shows that the use of small shipments, counterfeits sent mostly by post or express services, keeps growing. The proliferation of small shipments raises the cost of checks and detention for customs. Therefore, it introduces significant challenges for enforcement authorities.
Christian Archambeau, the Executive Director of the EUIPO, stated that:
“Counterfeiting and piracy pose a major threat to innovation and economic growth, at both EU and global level. The rise in the share of counterfeit and pirated goods in world trade is deeply concerning, and clearly calls for coordinated action, at all levels, to be fully tackled.”
This growing trend is indeed worrying – especially for the brand owners.
The full report and the executive summary, which is published in various languages, can be found here. For more information on how to tackle counterfeiting and piracy, please contact us via email at: info@lexdellmeier.com.
ECJ landmark case: Successful invalidity proceedings against an EU design based on an earlier trademark
With its decision dated 6 March 2019, the European Court of Justice (ECJ) confirmed a decision of the European General Court (GC) concerning invalidity proceedings between Ferrero SpA (Ferrero) and BMB sp. z o.o. (BMB) regarding the following opposing IP rights.
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In particular, the ECJ upheld the GC’s finding that there is a likelihood of confusion between the earlier trademark and the younger design. With the present decision, a dispute which had been going on for almost ten years has now come to an end.
I. Background of the case
On 15 November 2007, the Polish company BMB filed the EU design application no. 000826680-0001 showing the shape of a container for little sweets. The filed layouts also show the content of this container, namely green and orange candies. In addition, the container bears a colored label on which the verbal element “MIK MAKI LEMONOWO POMARAŃCZOWE” is displayed. The design was applied in Locarno Class 09.03 – containers, comfit boxes. The design was registered on the filing date.
The popular Italian company Ferrero filed an application for a declaration of invalidity of the registered design before the European Union Intellectual Property Office (EUIPO) on 11 July 2011. In support of its application, Ferrero invoked three earlier rights, including International Registration no. 405177 of a trademark, registered on 12 March 1974, with effect in several EU countries. The EUIPO granted Ferrero’s application for a declaration of invalidity on 25 April 2012 considering particularly, due to the similarity of the opposing signs and the identity of the goods, that there was a likelihood of confusion on the part of the relevant public.
Also at the appeal stage, the invalidity of the contested design was upheld by the EUIPO Third Board of Appeal with its decision dated 25 April 2012.
BMB went further and brought an action for annulment of the Board of Appeal’s decision by application lodged at the Registry of the General Court on 24 November 2015. It raised different pleas in law in support of its action and, in particular, that the Board of Appeal had erred in finding that there was a likelihood of confusion between the earlier trademark and the younger design. However, the action was dismissed by the GC on 3 October 2017.
II. BMB’s appeal to the European Court of Justice
The owner of the contested design made a final attempt and went to the ECJ, appealing the decision of the GC. In its appeal dated 10 December 2017, BMB put forward the following grounds:
First, BMB claimed that the GC incorrectly classified the earlier International Registration as a 3D mark, whereas the mark is registered as figurative mark. That error allegedly led the GC to compare the contested design to a mark which is not the earlier International Registration but rather a 3D mark assumed to be similar to that registration.
Second, BMB argued that the GC was incorrect to refuse to take into consideration the fact that the contested design, unlike the earlier International Registration, is represented filled with sweets.
Third, BMB claimed that the GC failed to correctly assess the significance of the differences between the earlier International Registration and the contested design, despite having acknowledged those differences, namely the rounded edges and the label of the contested design, and failed to take into account all of the dominant and distinctive elements of the signs at issue.
And fourth, BMB basically criticized the GC’s finding that it was not necessary, in determining the likelihood of confusion in the case, to take national case-law (in particular, a decision of the French tribunal de grande instance de Paris of 6 November 2009, in which it was confirmed that a sign with the same characteristics as the contested design does not infringe the earlier International Registration) into account.
III. Ruling by the European Court of Justice
The ECJ rejected all four main arguments brought forward in BMB’s grounds of appeal. In particular, the ECJ considered the first two arguments to be unfounded and the third argument to be inadmissible. The fourth argument was rejected as such, in particular, since the ECJ is not bound by national case-law.
As a result, the ECJ dismissed the appeal in its entirety.
IV. Remarks
The trademark and design battle between Ferrero and BMB was fought through all EU instances. BMB lost all of them. The decision that BMB’s design registration is declared invalid has now become final, as there are no further appeals possible for BMB.
Considering and comparing the opposing signs as such, this result is actually not surprising. From a trademark and design expert’s point of view, it would have been unusual not to consider them dissimilar. This decision and the whole proceedings through all instances are however spectacular, since it is very rare that invalidity proceedings between different IP rights – trademarks vs. designs – are decided upon by the highest EU courts.
For more information, please find the full decision here: http://curia.europa.eu/juris/document/document.jsf?text&docid=195183&pageIndex=0&doclang=EN&mode=req&dir&occ=first&part=1&cid=5283.