To strengthen fair competition, the German Design Law was amended on 26 November 2020. Similar to EU law, it now contains a repair clause in new § 40a of the German Design Act stating that spare parts shall in certain circumstances be excluded from design protection. The implications remain to be seen – and this will still take a couple of years as the restriction is only applicable to designs applied for on or after 2 December 2020.
(Source: Shutterstock; 1418006408)
BACKGROUND
Germany is a country known worldwide for its automotive industry and great brands like Mercedes, BMW, Audi, Porsche, Volkswagen and more. The car manufacturers form a big part of the German economy and try to protect their innovations in any way possible. Thus, there are many design registrations for all parts of cars pending which bar third party manufacturers from providing auto spare parts in the aftermarket for repair purposes. The effect is that consumers have to pay about 30 – 55 % more for design protected spare parts than they would have to pay in a free market. The spare parts aftermarket in Germany is more or less monopolized and it is nearly impossible for third party manufacturers to enter it.
NEW LAW
Despite the strong lobbying of the automotive industry, the German Design Law now includes a new § 40a of the German Design Act. It excludes design protection for component parts of complex products which are used solely with the aim of enabling the repair of the complex product and restoring its original appearance, provided that consumers are informed about the origin of the spare part, so that they can freely choose between competitors.
By referring to the necessity that the spare part must only be used to restore the original appearance of the complex product, the scope of the new provision is mainly to form-dependent, that is must-match parts which equal the original parts of the car in their exact shape and dimensions. In the automotive industry, the most affected spare parts will be car doors, hoods, fenders, mudguards, exterior mirrors, windows, headlights and taillights – basically all visible, body-integrated replacement parts that must be manufactured in a certain way to fit the original appearance of the car.
While typical examples for an application of the new repair clause are such relating to the automotive industry, it will, of course, also have effect in all kinds of other sectors with strong design protection like household appliances, consumer electronics or sanitary equipment.
CRITIQUE
Even though the German government implemented the new repair clause, it also gave in to the strong lobbying of the automotive industry. The new repair clause only applies to those designs which have been filed on or after 2 December 2020. Designs for spare parts already registered before 2 December 2020 can still claim design protection for the rest of their “life”. Thus, the intended full liberalization of the aftermarket for spare parts of cars will only become reality in 25 years, when the last design filed in 2020 for those spare parts expires.
This is, of course, criticized by the aftermarket industry that claims that there should be no design protection for spare parts – visible or not – because there is no design alternative for repairs. Other criticism comes from consumer protection groups which argue that a wider liberalization would only be to the advantage of consumers as prices for spare parts and repairs will go down. It will have to be seen if the clause will be amended again in the next years.
STRATEGIC CONSIDERATIONS
Do not stop filing designs for spare parts! The new § 40a of the Design Act only relates to spare parts used to repair and restore the original appearance of complex products. You will, however, still need registered designs to protect your products in the primary market and to keep copycats from imitating your goods.
In view of the new repair clause, we recommend that you review you design and overall intellectual property filing strategy to see if any amendments are needed. Should you like to discuss this issue and potential implications of the new repair clause for your designs, you are welcome to contact us at LexDellmeier
- by phone: +49 89 55879870 or
- by email: info@lexdellmeier.com
and we will be glad to advise further.
The European Union Intellectual Property Organization (EUIPO) regularly publishes statistics on the European Union Trademark (EUTM), providing general information on the number of applications, registrations, oppositions and renewals in a given period of time. These statistics are broken down by country, type of mark, classes of goods and services. This article is limited to the figures relating to applications.
2020 was a slightly different year in general due to Covid-19, but there was not a reduction, but rather an increase in trademark applications.
I. Number of Applications
By November 2020, an impressive total of 158.564 EUTM applications had been filed. Unfortunately, at the time of publication of the statistics, data from December 2020 was not yet available. However, it can be expected that the total number of applications from 2019 of 160.531 was significantly exceeded in 2020. Especially in the second half of the year of 2020, there were more applications each month compared to the previous year 2019.
Finally, it should be noted that since the statistics began in 1996, an impressive total of more than 2 million EUTM applications have been filed.
The type of applications is also particularly noteworthy, as over 80 percent were submitted via the e-filing function in 2020. The fast track option has also become increasingly popular since it was made available on the EUIPO website in November 2014. In 2020, very few applications were submitted by mail and not a single application was submitted by fax. This shows that legal tech is becoming increasingly popular among users.
II. Country Overview
In 2020, Germany filed a total of 22.5587 applications, which is more than one-fifth of all applications filed by countries of the European Union. Looking at the breakdown by country within the European Union, it is striking that Germany filed by far the most applications.
In second and third place are Italy and Spain, each of which submitted around 9.000 to 12.000 applications.
But even when countries outside the European Union are included in the comparison, Germany remains at the top among all countries. Only China can knock Germany off first place in 2020 with 24.817 applications.
III. Type of Marks and Classes
In 2020, the applications filed included almost exclusively figurative (43%) and word marks, with word marks ranking first (56%), as in the previous years.
The distribution among the number of classes remains without much change in 2020 compared to previous years. 40% of all applications are limited to apply the mark in one class only. There is also no deviation worth mentioning in the distribution within the classes. Top classes continue to be Class 9 (e.g. software, electronics etc.), which concerns goods, and Classes 35 (e.g. business, consulting etc.) and 42 (e.g. software development etc.), which concern services.
IV. Conclusion
In summary, although Corona slows down life in many areas, this did not affect the trademark applications in 2020. This is a good sign, because a high willingness to apply for an EUTM is an indicator of business confidence and the importance of intellectual property.
For more information please be referred to:
Lena Ertle is the latest addition to the LexDellmeier team. She is completing her legal clerkship at the Higher Regional Court of Munich and will support the team at LexDellmeier during 2021 as a legal trainee. Even though Covid-19 is still continuing to challenge everyone, we believe it is really important to help, support and train young professionals. In the past almost 12 years at LexDellmeier we have trained in total 25 Erasmus, ELSA and other law students from Germany, EU member states and other countries around the world. LexDellmeier usually engages two (2) interns and trainees per year. Let Lena Ertle introduce herself, her tasks as a legal trainee at LexDellmeier, her goals and her interest in intellectual property.
Hello, nice to meet you! I would like to introduce myself. My Name is Lena Ertle and I have joined the LexDellmeier team for this upcoming year 2021 as a legal trainee.
Last year I successfully completed my studies at the University of Konstanz by passing the First State Legal Exam. After that I started the legal clerkship and currently I am clerking at the District Administration of Augsburg. At the end of this year I will take the bar exam (Second State Legal Exam) and hopefully be a lawyer myself after that.
After many years of theoretical studies at the university I really look forward to doing some practical work and apply the theoretical knowledge that I have acquired in the “real world”.
I am delighted to have the chance to work at LexDellmeier for several reasons.
On the one hand, I appreciate being able to work in a small team with several specialized IP attorneys and trademark and design professionals whom I can ask for advice, discuss current IP issues and cases.
On the other hand, I can combine two of my interests. My preference for the English language, which is part of the daily business in this law firm, and my great legal interest in the field of intellectual property.
There is a wide range of responsibilities that I will be taking care of.
In general, I will be supporting the office organisation and administration. I hope to gain as much office experience and impressions as possible, even though at the moment many employees are working in their home office due to the difficult Covid-19 situation.
In addition, legal opinions and research will be part of my job. I am particularly looking forward to this as it will give me a closer insight into trademarks, designs, copyrights and licensing issues. Furthermore, you will soon read more articles from me here, as the creation of blog articles on current case law will also be part of my field of activity.
I will also work on some special projects during my time at LexDellmeier. As already announced, there will soon be the chatbot “BenBot” for trademarks on this website. Here it will be my task to develop the chatbot further and to continue the work of the last legal trainee, Oliwia Puto.
Another overall major project of mine will be the implementation of an online design application tool. A similar one already exists on the firm’s website at www.lexdellmeier.com.,
I very much look forward to all of these projects, insights and challenges. Especially in times of rapid change, when everything is getting faster and everyone wants to obtain specific information right away and 24/7, it is important to integrate the digitalization of legal advice into the work cycle. Legal tech has the potential to make life easier for everyone involved.
In a nutshell: I am really excited and full of energy to learn more about IP, tackle all challenges and support the whole team.
The following 45 minute webinar gives you an overview and update on Brexit and the implications on EU Trademark and EU Design Law starting 1 January 2021.
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While the United Kingdom left the European Union on 1 February 2020, regulations regarding intellectual property rights will only change at the end of this year. You would like to review which changes Brexit will bring with regard to trademarks and designs? We prepared slides (see download link below) and recorded our successful webinar on 9 December 2020 and published it on YouTube. In a nutshell, you will receive an overview about the most important changes.
Source: Shutterstock: 437850526
Did you, for instance, know that your registered European Union Trademark (EUTM) will be cloned by the UK Intellectual Property Office so that you will own two (2) trademarks as of 1 January 2021 – the existing EUTM and a new UK Trademark? Have you marked 31 December 2020 and 30 September 2021 on your calendars? You do not know why you should do that? Well… you are welcome to review our presentation and listen to our webinar pre-recording.
If any open questions remain, let us know and we will be pleased to advise further. You can get in contact with us by email to info@lexdellmeier.com or by phone at 0049 89 55879870.
Have a great Holiday Season!
On Wednesday, 9 December 2020, LexDellmeier will host the very last Webinar of 2020 on the current hot topic: “Brexit Update – Legal Changes in Trademark and Design Law as of 1 January 2021” (in English). During the approx. 60 minutes presentation, Andrea Breier and Alexandra Dellmeier will outline the effects of Brexit on IP Law and will provide you with all the information you need to know to be Brexit-prepared!
Even though the UK has already exited the EU on 31 January 2020, the EU rules still apply until 31 December 2020. And as the end of the year 2020 approaches, we want to keep you updated on all the legal changes in trademark and design law that will come into force as of 1 January 2021. So, if you wish to be Brexit-prepared – just tune in!
Information:
- Date: Wednesday, 9 December 2020
- Time: 17:00 - 18:00 (i.e. 5:00 p.m. - 6:00 p.m. German time / 11:00 a.m. - 12:00 noon EST)
- FREE OF CHARGE
- Registration: XING or Eventbrite or via Email on info@lexdellmeier.com
- Language of the webinar: English
Agenda of the webinar:
- Introduction
- BREXIT and the legal changes as of 1 January 2021 regarding trademarks and designs
- Overview of the changes
- Consequences
- Q & A / Discussion
Have you missed the Webinar? Here you will soon find the PowerPoint presentation to download in PDF format as well as a link to the recording on YouTube - so stay tuned!
On 3 December 2020, the independent student initiative at the Technical University of Munich (TUM), START Munich e.V., is organizing a webinar on the topic: “Legal Insight – Intellectual Property in a Nutshell” for #startups. The focus of the webinar is set on how to protect trademarks, designs, copyrights and (software) patents. The speakers of this event are #Alexandra Dellmeier (Attorney at Law and Certified IP Attorney) at #LexDellmeier and Dr. Jochen Reich (German and European Patent Attorney, Ph.D.M.Sc. in Computer Science) from the IP firm Reich-ip.
Information:
- Date: Thursday, 3 December 2020
- Time: 18:00 – 20:00
- Registration: Eventbrite
- Organizer: START Munich e.V.
- Free of charge
Speakers:
Alexandra Dellmeier, Attorney at LexDellmeier
- Attorney at Law / Certified IP Attorney
- 23 years of IP experience with a focus on trademark, designs and copyrights
- Passionate about Intellectual Property and startups
- www.lexdellmeier.com
Dr. Jochen Reich, German and European Patent Attorney at Reich-ip
- Ph.D. M.Sc. Computer Science and Patent Attorney
- 13 year of IP experience
- Expert in protection of software & software patents, E-mobility, mobile technology/telecommunications and computer hardware
- www.reich-ip.com
If trademarks are part of your daily work, you have surely come across the issue before: You have a registered trademark, but it is used differently in commerce – either because the trademark used has been modernized compared to its registered form, or because parts of the registered mark have been omitted when used or because parts have been added in comparison to the registered mark. In all these cases, the question arises whether or not use of the trademark in a form differing from the one registered can still be deemed use of the registered mark. Otherwise, your registered trademark might be at risk and action needs to be taken to ensure that no actual loss will occur. Guidance is now provided by the trademark offices of the European Union member states and the EUIPO.
(examples of similar, but different marks)
Common Communication CP9
On 7 October 2020, we held a successful webinar in which we discussed genuine use of a trademark as one of the main topics. A week later, on 15 October 2020, the Intellectual Property Offices of the European Trade Mark and Design Network published their Common Communication CP9. In that, they agreed on a Common Practice with regard to the use of trademarks in a form differing from the one registered. The Common Practice aims at providing guidance in identifying general principles for assessing when the use of a trademark in a form differing from the one registered alters its distinctive character. The complete Common Communication with comprehensive explanations can be found at: https://www.tmdn.org/network/-/publication-of-cp8-common-communication
The following is a brief summary of the principles set out in detail in the Common Communication:
1. GENERAL APPROACH
STEP 1: Assess the sign as registered by taking into account its distinctive and visually dominant elements
STEP 2: Assess – by direct, side-by-side comparison of the two signs – whether those elements that contribute to the distinctive character of the sign as registered are present and/or modified in the sign as used
STEP 3: Assess the impact of the modification(s) on the distinctive character of the sign as registered; in particular:
2. ADDITIONS
- NOTE: It is not an addition but simultaneous use of several signs, when several signs are used together but remain independent from each other and perform their distinguishing function as separate signs.
- Distinctive element added to sign as registered -> Most likely alteration of distinctive character
- Addition of non-distinctive elements or elements of low distinctive character to a registered mark of average distinctiveness -> No alteration of distinctive character (regardless of whether these elements are visually dominant or not)
- Any addition to a registered sign of low distinctiveness -> Likely to alter distinctive character
3. OMISSIONS
- NOTE: All the distinctive elements of the sign as registered contribute to its distinctive character. Therefore, the omission of one of those elements in the sign as used is likely to alter the distinctive character of the sign as registered, unless the omitted element will be disregarded by the consumer due to its small size and/or position.
- Omission of a non-distinctive element in a registered sign of average distinctiveness -> Not likely to alter distinctive character
- Omission of an element of low distinctive character in a registered sign of average distinctiveness -> Not likely to alter distinctive character unless the omitted element is visually dominant or interacts with other elements
- If the sign as registered is composed exclusively of elements of low distinctive character and/or of non-distinctive elements, the combination of which renders the sign as a whole registrable, the omission of one or more of these elements will generally alter the distinctive character of the sign as registered
4. MODIFICATIONS (for instance typeface, size, color, position)
- Use of a word mark in a specific representation (typeface, stylization, size, colors, position) with the word still identifiable as such -> No alteration of distinctive character
- When the word as such is no longer identifiable -> Alteration of distinctive character
- Modifications of purely figurative marks -> Most likely alteration of distinctive character
- Composite marks where the distinctive character essentially derives from its verbal elements -> Use of verbal elements in modified form will not normally alter the distinctive character
- Composite marks where the distinctive character essentially derives from its figurative elements -> Use of figurative elements in modified form is likely alteration of distinctive character
- NOTE: The more an element contributes to the distinctive character of a composite mark, the more a modification of such element is likely to alter the distinctive character of the sign.
5. COMBINATION OF ADDITIONS, OMSSIONS AND/OR MODIFICATIONS
- Step 1: Assess whether any of the changes alone would lead to the alteration of the distinctive character of the sign as registered
- Step 2: Assess the effect of the combination of all changes
The above summary is intended to give you a first idea of how the trademark offices in the European Union will assess the use of a trademark in a form differing from the one registered. We strongly recommend reading the complete Common Communication CP9 for more detailed information, https://www.tmdn.org/network/-/publication-of-cp8-common-communication.
Should you need any further guidance in addition or just like a second opinion on whether or not the use of your trademark can still be deemed use of the mark as registered, you are welcome to contact us at any time by phone at +49 89 55879870 or by email to info@lexdellmeier.com. We will be pleased to discuss your case and advise.
Please also see our blog article of 29 May 2020 on the topic “Trademark Use – Always an Issue” (https://www.lexdellmeier.com/de/node/1589).