On the occasion of the World AntiCounterfeiting Day, the European Union Intellectual Property Office (EUIPO) has published a Synthesis Report on IP Infringement this month. This Report contains valuable information on criminal activities against the IP community relating to the last five years and aims to inform the public about the important economic consequences of product infringement in the EU area.
Source: EUIPO
I. Value of IP Rights (IPR)
The grave importance that counterfeiting has on the EU economy cannot be fully comprehended, without evaluating the growth of IPR-intensive industries first. According to the aforementioned Report, IP proves to be a lucrative business contributing to 42% of the total EU Gross Domestic Product (GDP), which roughly translates to a staggering € 6 trillion in 2016 only. In the same year, IP business employed 28% of the total EU employees, while offering them a 46% wage premium over employees of other business areas. Interesting enough, IPR- intensive industries have contributed to a decline in unemployment rates in countries like the Czech Republic and Hungary, which only joined the EU in 2004. What is also characteristic of the significance of IP in the economic field, is that the trademark intensive accounts for 35% of the total IPR-intensive Industries, since it is used for the identification of the products and services offered by companies. Besides, the contribution of the trademark in differentiating a business from their competitor is undeniably essential for a healthy free market economy.
II. The reasons behind IPR infringement and the role of the internet
IPR counterfeiting can be a prolific business for those engaging in these criminal activities, since the high amount of income that comes from related undertakings combined with lenient sentences offers a solid motive. The low production costs and the lower risk of detention are faces of the same coin. And here how it is done: Transporting a massive amount of products by the sea and then changing the transportation method through shipment via rail makes it hard for the authorities to keep a tab on the whole procedure. Bribery, document falsification, product re-labelling and factory over-runs are all considered effective measures in reinforcing those criminal ventures. A perfect example is counterfeiting pharmaceuticals, the sales of which can lead to $500.000 profit.
The role technological development plays is also decisive for the expansion of those activities. In the era of digitalization, the internet is a medium in which not only infringed products can be freely promoted and purchased, but also where pirated digital content (films, television shows, music) can be downloaded with mostly zero to minimum consequences. The internet’s impossible-to-control nature makes it a great playground for criminal gangs, which enjoy impunity for the most part. While investigating the benefits of illicit internet activity, among the 1.400 web pages that came under EUIPO’s scrutiny, 13% of them were Bit Torrent Portals (sharing pirate copies of films, TV shows, music and computer games), while 64% of them were not illegal per se, but were linking consumers to other illegal web sites.
III. Who is buying counterfeiting goods?
In other words, who is supporting all this criminal activity? Do people really need to buy products that are the result of illegal production methods? In surveys conducted by EUIPO, 10% of the people asked (all citizens of the EU), had purchased counterfeit goods and the same amount had illegally downloaded/streamed online content, notwithstanding the fact, that almost all of them are firm supporters of IPR protection. Naturally, most of them belong to the 15-24 age range, citing the affordable prices of the counterfeit products bought as a reason behind the purchase, while also maintaining the notion that most products they buy illegally are not available in the mainstream market. When it comes to illegal downloading and/or streaming, the typical respondent is -as the Report describes him- a young, educated, employed male, with good internet access, and who most probably resides in a large town.
IV. The financial (and other) consequences of counterfeiting
To put it simply: Everything is counterfeited. From laptops and computer software to shampoo and toothpaste, there is no limit to product piracy. High-risk sectors include foodstuffs, pharmaceuticals, perfumery & cosmetics, articles of leather and handbags, clothing & textile fabrics, footwear and jewellery among others.
That reflects to € 85 billion of total imports of counterfeit and pirated products into the EU alone in 2013, which make 5% of the total EU imports. China holds the sceptre of product piracy, since it illegally produces goods that belong to almost all of the aforementioned categories, with Hong Kong being the channel of their export to other parts of the world. India, Turkey and Thailand come next, with Turkey specializing in leather goods and cosmetics, while Thailand focuses on mobile phones and accessories, the latter of which surprisingly find a market in Germany. Direct lost sales due to counterfeiting amount to almost €60 billion per year and that also leads to a considerable annual loss of jobs (435.000). Moreover, a large company spends roughly €159 thousand battling infringement every year. Those financial losses are minor in comparison to the health and safety issues arising with the use of counterfeit goods as chemicals, cosmetics and pharmaceuticals, which can also be life threatening to the consumer.
V. Battling infringement
Terrorism, migrant smuggling and drug trafficking have all stolen the spotlight from battling IPR criminality. Nevertheless, EUIPO offers a few solutions towards that direction. With its Enforcement Database, it allows owners to keep in contact and provide information in regards of the goods they are selling, so that their counterfeits could be identified more easily from the authorities. Cross-border investigations in co-operation with Europol are to be intensified, since EUIPO is funding the organisation’s Intellectual Property Crime Coordination Centre, which provides training to law enforcement on IP criminality and also monitors the modus operandi of the individuals engaging in this kind of criminal activity. Europol, in turn, co-operates with Interpol on battling counterfeiting on an international level. Last, but definitely not least, the implementation of higher penalties will at least weaken the incentive for those criminal groups and discourage them from undertaking those financially harmful actions.
For more information and infographics please see:
On 15 March 2018, the General Court of the European Union (GC) annulled the prior decision of the Fourth Board of Appeal of the EUIPO (Case R 165/2016-4), deeming that there indeed was a likelihood of confusion between the figurative marks “Winged bull“ and “Griffin“. The parties involved were the internationally known hospitality company Marriott Worldwide Corp. , which held the rights for the figurative mark representing a griffin and Johann Graf, a famous Austrian billionaire and owner of the international gambling company Novomatic, who had obtained a EUTM registration for the use of the figurative mark of a winged bull. The interesting part in this case is the difficulty in objectively assessing whether the trademarks were visually and conceptually similar, since the organs of the EUIPO deemed the signs very different from each other while paying attention to details, whereas the GC sifted the focus on the overall meaning of the signs in the sense that they were both representing imaginary beings.
vs 
Marriott Johann Graf
EU Trademark No. 8458259 EU Trademark No. 010511723
(Figurative mark) (Figurative mark)
I. Background of the case
On 18 April 2012, Mr. Graf applied for and obtained a EUTM registration (No 010511723) for services listed under Class 43 (Nice Agreement) and primarily connected with providing food and drink as well as with catering and providing food and drink for cafes, hotels and restaurants. Nevertheless, on 14 June 2014 Marriott Worldwide Corp., filed an application requesting the declaration of invalidity of the contested registration based on the similarity with two previous identical to each other figurative marks registered under the No 8458259 in the EU and No 2536999 in the UK which also related to the services described under Class 43 of the Nice Agreement. The invalidity request was also based on earlier copyright acquired through registration at the US Copyright Office, for which Marriott had additionally obtained a user license and claimed protection under the UK legislation (the alleged copyright). More specifically, the applicant claimed infringement of Article 53(1)(a) of Community Trade Mark Regulation (CTMR-now the European Union trade mark regulation) in conjunction with Article 8(1)(b) and 8(5) CTMR, citing relative grounds of invalidity. Furthermore, the application requesting the declaration of invalidity was also based on absolute grounds of invalidity, namely on bad faith, as stated in Article 52(1)(b) CTMR.
The Cancellation Division rejected the application in its entirety and after a notice of appeal from the part of Marriott against the decision of the Cancellation Division, the case was further dismissed from the Fourth Board of Appeal of the EUIPO. The reasons for that were that the signs were visually and conceptually different, whereas, as figurative marks it was not possible to compare them aurally and that the appellant had failed to establish the existence of the alleged copyright. Furthermore, Mr. Graf’s EU trademark was not found to have been filed in bad faith. Marriott then, filed another appeal before the GC maintaining infringement of Article 76(1) CTMR, since there was –according to them- a visual and conceptual similarity and infringement of Article 53(1)(a) CTMR, read in conjunction with Article 8(1)(b), claiming that the consumer perceives the marks as a whole, without analysing the details.
II. Decision of the GC
On 15 March 2018 the GC published its Decision (T-151/17) in favour of Marriott Worldwide Corp., annulling the decision of the Fourth Board of Appeal of the EUIPO. Marriott’s argument that the signs are similar to a high degree both visually and conceptually, due to the fact that they both depict black-on-white silhouettes of mythical creatures shown in profile was accepted by the GC who found the error in the assessment of the Board, contrary to Mr. Graf’s argument regarding the differences of the two creatures represented.
Mr. Graf based his own argument on the relevant public’s ability to distinguish the mythical creatures depicted, but, the GC assessed that there was no solid evidence adduced to prove the fact that there is sufficient knowledge of that from the part of the consumer. Moreover, the goods or services in question come from the same undertaking or financially similar undertakings, so, in this case, the likelihood of confusion persists. The GC also assessed that the Board erred on the basis of reasoning, since the phrase that it used in describing the dissimilarity of the two trademarks (‘for the same reasons as to why the conflicting marks in question are dissimilar’) is not unambiguous and rejected the decision of the Board on the grounds of Article 53(2)(c) CTMR, the infringement of which was also presented by Marriott as an additional ground of appeal.
It remains to be seen if Mr. Graf appeals this decision and takes it to the last instance, the European Court of Justice (ECJ).
SECURING CLIENT-LAWYER COMMUNICATION IN THE NEW DATA PROTECTION ERA
Blog post by Ioanna Zacharopoulou, Trainee at LexDellmeier IP Law Firm
In light of the new General Data Protection Regulation (95/46/EU), which will be enforceable from 25 May 2018, the Council of Bars and Law Societies in Europe (CCBE) and the Munich Bar Association both published rough guidelines regarding the steps every law office should take in order to comply with the new rules set by the EU. Aim of the Regulation is to further unify and simplify the legal status quo in the EU, this time by setting the lawyer-client relationship in the center of attention.
Source: Pixabay
Protecting and ensuring the confidentiality between the lawyer and the client is the key in finding eligible solutions - both on technical and legal level – on the matter of data protection. What is critical is finding a balance between professional secrecy and governmental surveillance especially when the latter of which could lead to unwanted third-party interference. The bearers of such responsibility are first and foremost the law firms, who have to take measures to safeguard their professionalism, whilst providing a safer communication environment.
I. First Steps
First and foremost a minimum level of IT knowledge from the part of the lawyer is required. In that way, they will be able to have a clear overview of the procedure of protecting their firms and - most importantly – avoid personal responsibility for possible lack of IT security. Recruiting an IT specialist who would be able to directly apply security services is practically deemed mandatory. Furthermore, according to Article 17 of the new Regulation every state itself must provide the addressee (in this case the lawyer) with all means necessary to safeguard the circulation of data. A vocational training of the personnel is recommended to ensure the compliance to security standards and the clarification of important strategy points. Applying already tested and recognised security systems is always helpful in increasing the credibility of the firm, as well as the level of trust from the part of the client. It is also vital for the latter to be notified of the firm’s modus operandi with respect to his right of choosing a law firm that meets his criteria. Lastly, the identification of key assets, such as important client information and documents, which need to be secured, is deemed necessary as the starting point of the data protection procedure.
II. Suggested Measures
Below follows a list where the most important measures are displayed in a suggested chronological order:
- Data protection: A thoughtful and organised data protection policy begins with the education of the lawyer on the matter. All lawyers must possess at least minimum knowledge of what data protection really means, what the new Regulation is about and most importantly, what penalty follows the complete and irretrievable loss of data.
- Safe communication: At this point, the use of an encrypted password in all communications is of vital importance. A further measure could be the storing of client data in clouds.
- Data-handling with the help of service contractors: Trustworthy service contractors who can process and safeguard important client information are perhaps the most important step a professional could take to protect his clients. Nevertheless, a written declaration of consent to the processing of their data from the part of the client is also advisable as a means of complete protection of the lawyer and his associates from unwanted legal disputes.
- Data-handling through employees: All the staff working at a legal firm should be thoroughly informed and strictly follow certain rules based on lawyer-client confidentiality. Disclosure of client information to third parties must be avoided at all costs.
- Processing directory: Article 30 of the General Data Protection Regulation (GDPR) requires the writing of a directory for every involved supplier connected with data processing and data protection in general, which can function as written evidence for the legitimacy of the procedure.
Plus 1
In Germany, the Federal Data Protection Act regulates the data protection policy and offers an additional safety net for legal practitioners.
- Data protection officer: § 4f of the Federal Data Protection Act (BDSG) orders the employment of a data protection officer for firms that consist of a more than 9 people staff. Reliability and technical proficiency are crucial requirements.
III. Conclusion
Even with all these measures taken, absolute protection of information cannot be achieved, as there are still many technical obstacles. However, the importance of the new GDPR cannot be questioned, since it not only raises awareness on the matter, but also enforces minimum protection standards for law firms and businesses in general. The most essential thing remains the updating of clients on the measures taken to protect their data and the procedures that are followed. Trust between the lawyer and the client is a major factor in safeguarding professional confidentiality and the lack of it can lead to criminal prosecution of the lawyer according to Art. 203 (1) 3 of the German penal code. Protection of privacy is after all a fundamental human right, a principal of the Rule of Law, solidified in Art. 8 of the Charter of Fundamental Rights of the European Union.
More information can be found here:
https://rak-muenchen.de/rechtsanwaelte/mitgliederservice/datenschutz-in-anwaltskanzleien.html
On 4 May, all fans of the commercially most successful movie series are celebrating the international Star Wars Day. In the fan community, this tradition has been established over 10 years ago. The 4th of May was not chosen randomly, but, because of the very similar pronunciation to the Star Wars most popular Jedi saying: “May the force be with you”.
Source: EU 3D shape trademark No. 005896601
From an intellectual property point of view it is worth mentioning that the author, director and producer of the Star Wars films, George Lucas, is also very successfully protecting one of his main sources of income. Only by selling merchandising Star Wars branded products, he has already earned approx. 30 Billion US Dollars. Therefore, it is no wonder that the Lucasfilm companies (now belonging to Disney) are owners of many intellectual property rights worldwide. For example, just at the German Trademark and Patent Office, the company has filed over 292 trademarks.
Lucas is not only protecting his main characters like Darth Vader, Yoda or Obi-Wan Kenobi, but, he is also active in the field of protecting new computer graphics.
For a better insight, here is just a shortlist of his well-known protected trademarks:
- “Star Wars” - protected as an EU word trademark No. 000175380
- “Figure of Master Yoda” – protected under an US Patent No. US265754S
- “Yoda” – protected as an EU word trademark No. 000559591
- “Lord Darth Vader” – protected under the German Law as a German word trademark No. 990370
- “Lord Darth Vader” – protected as an EU 3D shape trademark No. 005896601
- “Obi-Wan Kenobi” – protected as an EU word trademark No. 000559948
- “I´ve got a bad feeling about this” – protected as an EU word trademark No. 071480435
On 28 March 2018, the Directorate-General for Communications Networks, Content and Technology for the European Commission (DG CONNECT) published a Notice to Stakeholders stating that after the UK leaves the European Union on 30 March 2019, all domain name owners based in the UK will no longer be entitled to “.eu” top-level domains.
Source: Shutterstock
DG CONNECT declared in its current notice with the title: “Withdrawal of the United Kingdom and EU rules on .eu domain names” that as of the Brexit day, UK owners will no longer be able to register or renew “.eu” domains. Furthermore, since no additional arrangement on this topic was reached between EU and UK, EURid, the official registry operator for “.eu” for the European Union, will be entitled to revoke such domain names on its own initiative. As a result, EURid will have to delete over 300.000 “.eu” domains that are nowadays owned by registrants based in the UK.
This issued rule will apply on following owners:
- Undertakings and organisations that are established in the United Kingdom but not in the EU
- Natural persons who reside in the United Kingdom
For a better insight on this topic, read the whole Notice here. Furthermore, to learn about the present regulation on who is entitled to register an “.eu” domain, read Article 4 (2) (b) of Regulation (EC) No 733/2002 here.
The World Intellectual Property Organization (WIPO) and the European Union Intellectual Property Organization (EUIPO) have recently published their statistics regarding information on applications and cases filed during the year 2017. What is impressive is the amount of registrations at both Organizations, which in 2017 reached an unprecedented number.
Source: Shutterstock
I. International Registrations filed at WIPO
An impressive 56.200 trademark applications were filed in 2017 via the Madrid System, the system administered by WIPO, which allows and simplifies the procedure of registration of trademarks on an international level. This is a 5% increase from 2016, while the countries that could be described as application “champions” are the US, Germany, China, France and the UK. A number of 7.884 applications have been filed by the US alone, whereas, the most important increase came from China, where applications grew by a double-digit 36,3%. On the other hand, Italy Austria and the Netherlands were the three countries where a small drop in filings was noticed. Back to the “champions”, the companies with the most filings were L’Oréal, Novartis and Abercrombie & Fitch Europe, to name a few.
II. UDRP-Proceedings
2017 was also a record year for the Uniform Domain-Name Dispute-Resolution Policy (UDRP) with 3.074 cases filed. 17% of them were country code top-level domain (ccTLD) disputes.
Furthermore, in 2017, the WIPO Center received 52 mediation and arbitration cases and 84 good offices requests, a rather insignificant upturn from 2016 when all these cases and requests reached the number of 114, with Europe being the top applicant.
III. EUIPO EUTM applications
In 2017, the EUIPO saw the highest number of trade mark applications in its history, namely around 147.418 applications, which was also an increase of 8% from the previous year. More than half of those (53%) were for word marks with applications for figurative marks following in a close second (46%). The newly introduced collective and certification mark applications gathered 119 and 58 filings, respectively. Collective marks, on the one hand, are defined as signs which distinguish the geographical origin or means of production of the product represented, whereas, on the other hand certification marks are used to define the quality standard of a particular product. Once again, Germany, the US and China hold the record for the most applications.
From all those trademarks the vast majority was also registered in the end (128.375 of them were registered in 2017) with a slight increase from 2016 (almost 126.000 trade marks were registered then). This fact could be attributed to the small decline in oppositions in comparison to 2016 (only 18.646 oppositions were pursued in 2017 if one takes the large number of applications into account) in connection to the slight downturn of trademark cancellations (832 in 2016 against 755 in 2017).
The upcoming growth of filings is actually showcased in the number of applications filed in January 2018 (12.106), a notable rise of 22% from the same period in 2017, which might lead to another record year in the field of Intellectual Property.
For more information please be referred to:
http://www.wipo.int/ipstats/en/
http://www.wipo.int/pressroom/en/articles/2018/article_0001.html
http://www.wipo.int/pressroom/en/articles/2018/article_0002.html
This year’s World Intellectual Property Day is dedicated to female innovators, honouring a significant number of women that are pushing the boundaries in the fields of science, technology, and design and promoting their innovating ideas, courage and curiosity, which help shape the world into a better place.
Source: WIPO
I. Brilliant Examples
Through the years, brilliant women have contributed in changing the way people see things, women who have not been afraid to go against the conservative minds of their era and open the way to other women to unfold their talents , advance human understanding and re-imagine culture and arts. Who has not heard of the unforgettable Marie Sklodowska-Curie, whose name is equivalent to ‘innovation’? Her theory on radioactivity, her discovery of two elements and her the breakthroughs that her work led to, earned her two Nobel Prizes, making her the first woman to earn the prize and the only woman to win it twice. Or the Germans Caroline Herschel, the first woman to receive full recognition in the world of astronomy and the contemporary Christiane Nüsslein-Volhard ? The latter, a biologist specialized in the field of genetics, became the director of the Max-Planck Institute for Developmental Biology in Tübingen and held this position for 29 years. Most notably, however, in 1995 she shared the Nobel Prize with two other scientists for their extensive work in the genetic control of embryonic development. Maybe Carolyn Davidson, the famous graphic designer of the Nike Swoosh logo?
II. Gender Inequality and Women in the Workplace
Despite those impressive examples females are still underrepresented in the areas of Research and Development (R&D). According to the study Women in Science carried out by UNESCO, the worldwide average of women researches by region reaches the number of 29%, whereas, in North America and Western Europe this number extends to 32%. Surprisingly in Germany, a country with major contributions to technological advancement, the percentage of women researchers is even smaller than in the aforementioned ones reaching only the 28% of the total workforce. Central Asia holds the sceptre for the highest percentage of women researchers in the world with an impressive 48%. What is even more disheartening is the fact that female initiative is not financially supported. From the $85 billion total venture capital funding (VC funding) in 2017, all-female teams roughly received $2 billion. That translates into a scarce 2.2% of the total capital. In a strong antithesis their male counterpants received a staggering $67 billion, namely 79% of the total funding. The positive element here is that the situation is slightly better than in 2016, when female founders raised just $1.4 billion-or 1.9% of total VC funding.
III. It all starts within the Family
As the survey shows, even this improvement is not enough to extinguish the shocking gender gap that exists in the business world. The reason for this can be traced a long way back to a woman’s upbringing and her own family, who would discourage her from pursuing a career in innovation. A research conducted by The Institution of Engineering and Technology’s (IET) in the UK shows that 93% would not support their female offspring in pursuing an engineering career, which is showcased in the fact that only around 13% of STEM (Science, Technology, Engineering, Mathematics) professionals are women.
IV. International Initiatives and the Role of Women
This leads back to the question of what is practically done to reverse these facts. Young girls around the globe should not feel disheartened when they are bombarded by male scientific archetypes in TV, in movies, in pop culture in general. They should go forth and employ their intellect and talent. Organizations like STEMNET are trying to get women to promote themselves in the men dominated professional areas by appointing female ambassadors to inform young girls about the working opportunities and encourage them to act on their dreams. This year the World Intellectual Property Organization (WIPO) is celebrating and honouring women on the annual World Intellectual Property Day, aiming to inform them about the way in which intellectual property law can protect their work and vision. Furthermore, to enhance funding possibilities, the European Commission is awarding female initiative through the Women Innovators 2018 contest. Taking all this commotion into consideration, it is safe to say that important measures have been taken to fight gender inequality and it is only a matter of time to see the prosperous results of a re-imagined society, in which everyone is encouraged and celebrated.
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Am Donnerstag, 28. Juni 2018, findet in München das Seminar "Marken-Recht und Marken-Wert" statt.
Tagungsort:
Box-Kitchen (Nähe Hauptbahnhof)
Seminarraum 3. Stock
Rundfunkplatz 4
80335 München
Themen:
Thema 1: Der rechtliche Schutz von Marken
Thema 2: Die Marke als Asset
Thema 3: Die Werterhaltung, Wertsteigerung und Verteidigung von Marken
Seminarflyer und Anmeldung: [[{"type":"media","fid":"4864","view_mode":"default","instance_fields":"override","attributes":{"class":"file"},"link_text":"marken-recht_und_marken-wert_seminar_flyer.pdf"}]]
On 20 February 2018, the General Court of the European Union (GC) upheld the previous decision of Board of Apeal of EUIPO (BoA) when it found the trademark “BEPOST” and the trademarks “POST” and “ePOST” to be sufficiently visually and aurally different to rule out a likelihood of confusion.
"POST"
EU trademark No. 5850193 German trademark No. 30012966
(word/device mark) (word mark)
vs.
“BEPOST”
EU trademark application No. 008897829
(word mark)
I. Background of the case:
On 19 February 2010, bpost NV, a Belgium company specialized in delivery services, applied for the trademark No. 008897829 “BEPOST” (word mark) as an EU trademark (EUTM) for products in Classes 16, 35, 38 and 39 (mainly transport and delivery services for postal items). The application was then published in the Community Trade Marks Bulletin, but on 5 July 2010, the German company, Deutsche Post AG, filed a notice of opposition on the grounds of prior rights. The opponent claimed infringement of Article 8 (1) b) Regulation No. 2007/2009 (now Article 8 (1) b) Regulation No. 2017/1001) with regard to its following earlier rights:
- German trademark No. 30012966 “POST” (word mark), registered on 3 November 2003
- EU trademark No. 5850193 “ePOST” (word/device mark), registered on 1 April 2008
- EU trademark No. 1798701 “Deutsche Post” (word mark), registered on 29 July 2002
- EU trademark No. 8408056 “EPOST” (word/device mark), registered on 21 January 2010
- non-registered mark or sign in the course of trade for “Deutsche Post AG” and “Post” for the transport and delivery services.
On 13 November 2014, the Opposition Division rejected the opposition of Deutsche Post AG. Later, on 18 January 2016, also the BoA came to the same conclusion and dismissed the appeal. The appellant then brought the case to the next instance, the GC. In the proceedings before the GC, the appellant subsequently decided not to raise an infringement of Article 8 (1) (b) of Regulation No. 207/2009 in respect of the earlier EU trademark No. 1798701 “Deutsche Post” (word mark) and the EU trademark No. 8408056 “EPOST” (word/device mark). The appeal was so only based on the first two rights: German trademark No. 30012966 “POST” (word mark) and EU trademark No. 5850193 “ePOST” (word/device mark).
II. Decision of the GC:
On 20 February 2018, the GC published its decision (T-118/16), but, to the disadvantage of the applicant. The Court agreed with the BoA´s findings and upheld the registration for the EU trademark application No. 008897829 “BEPOST” (word mark).
In comparison to the earlier German trademark No. 30012966 “POST” (word mark), the Court found that the signs are visually and aurally different, despite the common element “post”. Further, there are differences on the conceptual level, too. In the GC´s view, the element “be” at the beginning of the sign was considered to possess a particular importance as the relevant public normally pays more attention to the beginning of a trademark. Therefore, the “be” part was seen as dominant in comparison to the word element “post”, which is descriptive and just refers to the offered services. As a result, the Court concluded that there was no likelihood of confusion between the sought EU word mark “BEPOST” by bpost NV and the German word mark “POST”.
Next, regarding the earlier EU trademark No. 5850193 “ePOST” (word/device mark), the Court again took the same arguments into account that the signs show significant visual, aural and conceptual differences, despite the common element “post”. On a conceptual level, the difference was that the element “e” in the sign “ePOST” referred to fact that the services are offered via an electronic platform. Contrary to that, the element “be” in the sign “BEPOST” should establish a link to the company.
As regards German rights in the designation “POST”, the Court set out that the designations were different to such a level that likelihood of confusion within the meaning of Section 15 of the German Trademark Act could not be acknowledged.
Finally, the Court further dealt with the question of potential unfair advantage or detriment regarding the distinctiveness or repute of the allegedly reputed German word mark No. 30012966 “POST”. The Court did not examine the reputation in detail as it noted that the consumers would not mistake the marks “BEPOST” with “POST” and therefore, it was not a case of infringement of Article 8 (5) of Regulation No 207/2009.
In this decision, the GC repeats that even one letter can make all the difference when using a descriptive element, such as “POST”. The conclusion is in compliance with previous GC decision about another “POST”-variant mark (Case T-102/14). In that case, the Court also found no likelihood of confusion between the signs “TPG POST” and “(Deutsche) POST”.
During a period of worldwide financial instability German SMEs (Small and Medium-sized Enterprises), the so-called Mittelstand, are leading the way in Europe’s largest economy and are the answer to financial recovery and prosperity.
Source: Shutterstock
I. Definition of the German Mittelstand
What exactly is an SME though? According to the German definition, the term primarily applies to firms that employ up to 500 members of staff and have up to € 50 million annual turnover, whereas, the European definition reduces the number of SME employees up to 250 while remaining faithful to the € 50 million annual turnover mark. An impressive 99% of German companies belong to the German Mittelstand, employ 15,5 million people and contribute almost 52% of Germany’s total economic output.
II. Promoting the younger generation
What is most important though is the German Mittelstand’s contribution to the decreasing rate of youth unemployment. While the number of unemployed young people in the EU reached a disheartening 18.7% in 2017, in Germany it remained at low levels, namely at 6.7% throughout the same year. Admirably enough, German SMEs employ the majority of trainees (83.2%), thus making space for the next generation of highly skilled and in-demand future employees.
III. The secret of success
The reasons that the model of the SME flourishes in Germany lie mainly within its family-oriented core. 95% of all German companies are family-owned and 85% of them are also managed by their owner. This allows the creation of a stronger employer-employee bond, as the personal relationships that emerge lead to the undertaking of more responsibilities, whereas, at the same time the flatter hierarchies within the business contribute to flexibility in the work place, which in turn could advance into higher productivity.
IV. Investment policy and sources of income
The concept of the German Mittelstand is indeed highly humancentric, a notion that widely reflects in the fact that it also undertakes medium-term as well as long-term investments, and serves the financial support of the region in which it is based. These financial assets mainly come in the form of loans that are granted to the SMEs. According to the facts published from the European Commission, the number of rejected loan applications from German SMEs reached the percentage of 7.1 of total applications in 2015, a slight but significant improvement from the EU average (9.6% in the aforementioned year).
The state financial assistance is also considered as an important factor for the growth of the German SME, mainly in regards of accessing available funding opportunities. One example is the founding of the ‘ERP/EIF Co-investment Growth Facility’ with the purpose to improve conditions for venture capital. The volume of the fund is EUR 500 million, funded by the Federal Ministry of Economic Affairs and Energy on behalf of the European Recovery Programme and by the European Investment Fund. The expansion of the INVEST grant, a grant specifically designed for Angel investors – a society of affluent individuals who provide capital for a business start-up - as well as the tax reduction plans for those so-called business angels reflects the Government’s expectations to fuel private initiative and increase the flow of income within a SME.
V. (Not so) Hidden Champions
The leading companies that belong to the Mittelstand are particularly successful in the fields of electrical engineering and industrial products, a fact that is showcased in the example of ifm electronic, a German SME that manufactures speed sensors, 3D cameras and systems for vibration monitoring and diagnostics among others. Ifm electronic currently holds the first place in the DDW-Mittelstandsranking, but if the name sounds unfamiliar to most people, then they might be surprised to know that well-known companies which are almost part of everyday life like Zott and Rational AG belong to the German Mittelstand. Zott, for example, is one of the largest diary companies in Europe with estimated sales of €856 million in 2016, whereas, Rational AG is a manufacturer of kitchen-associated products, namely combi steamers and ovens, which employs almost 2,000 workers and exports its products to more than 100 countries. These two SMEs are based in Bavaria, while its capital Munich holds the third place on the list of the German cities with the most SMEs. Hamburg and Berlin hold the 1st and the 2nd places respectively.
VI. New challenges ahead
Nevertheless, the concept of the German Mittelstand faces its own challenges. As the German SME is primarily a family business, issues on succession may arise, which might lead to a company’s disintegration. Another important problem is the bureaucratic burdens that affect the German SME. The Federal Ministry of Economic Affairs and Energy (BMWi) in its effort to reduce red tape, has cut the cost of compliance for companies (by some 2 billion euros in total) and promotes tax reduction through the two Cutting Bureaucracy Acts and the mandatory SME test, through which the legislation in relation to SMEs will be assessed before further action can be taken. Last but not least, finding enough skilled staff could also prove to be a challenge for the German Mittelstand. In the globalization era, Germany faces tough competition to acquire the most brilliant minds and the need for more information about living and working in Germany is necessary in order for the country to attract a new wave of talented and hard-working personnel. The utilisation of refugees is, according to the BMWi, a major factor of support of the SMEs from the state, since the latter offers around 150 refugee recruitment advisors based within the regional business chambers and organisations, which in turn provide their professional expertise by assisting the SMEs in recruiting and training refugees, an intelligent plan that also serves the purpose of their social integration.
V. The future of the Mittelstand
Despite the obstacles that the Mittelstand has to overcome, the fact that many German firms, which have long outgrown the definition of the original SME due to their important financial success, choose to nevertheless remain faithful to the concept of the SME is a solidifying sign of the positive influence this model has for the German economy. It nevertheless should be noted that the government and the EU’s main aim should remain the support of the Mittelstand against market-listed mega-companies and the avoidance of its derogation in favour of the latter. This will set the base for the other EU-Members to follow Germany’s example by investing in human resources and thus set the foundation for a healthy business model and financial development.