Trademark Law

Germany: Strict Rules for Search Engine Advertising by Online Marketplaces

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The German Federal Supreme Court recently ruled that the use of only one trademark in search engine advertisements by Amazon was trademark infringing when the underlying link led to a list of offers that included not only products offered under that brand but also those of third parties (Decision of the Federal Supreme Court of 25 July 2019 in Case I ZR 29/18).

The claimant was the exclusive licensee of the German and EU trademark registrations for “ORTLIEB“ (in the following “Ortlieb“), known for its waterproof bicycle panniers. Ortlieb itself does not sell its products on Amazon.

Amazon used the trademark “ORTLIEB“ in advertisements on Google like the one shown below, which appeared when the terms “Ortlieb bicycle bag“ (“Ortlieb Fahrradtasche”) was entered in the Google search engine:

“Ortlieb bicycle bag – www.amazon.de/ortlieb+bicycle bag  

3.5                                    assessment for amazon.de

Huge selection in sport articles

Free delivery possible”

The underlying link led to a list of results on Amazon which did not only contain offers of ORTLIEB-products, but also offers of competing products.

Ortlieb successfully brought an action before the Regional Court Munich requesting Amazon to cease and desist using “ORTLIEB” as only mark in online advertisements where the underlying link led to a list of products which were not all put on the marketplace under the trademark ORTLIEB with Ortlieb’s consent.

Following appeals by Amazon, this decision was confirmed by the Higher Regional Court in Munich and now by the Federal Supreme Court.

The Courts held that the use of the trademark “ORTLIEB” in the ads at issue was misleading. When clicking on the links contained in the ads, the public expected that it would be led to a list of results relating only to ORTLIEB products. This expectation was supported by the URL shown in the ad, which also contained the term “ORTLIEB”, and by the product indication (such as in the example here: www.amazon.de/ortlieb+fahrradtasche). The public therefore expected to be led to a list with exclusively these ORTLIEB products.

The situation was considered different from that of a customer entering a department store as a result of an advertisement for products of a specific brand. Due to the ad, the public does not expect to be led to the starting page of Amazon, but to a page where the very products to which the ad refers are available.

The case at issue was not considered comparable with earlier decisions on search engine advertising and addressing the use of a brand in conjunction with the advertisement as such, such as the CJEU decision in BergSpechte (Decision of 25 March 2010 in case C‑278/08). The question here concerned solely the use of the mark for generating a link to product offers for (also) competitors’ products.

In this context, the ORTLIEB mark was held not to be exhausted either, because use of the mark to lead to third-parties’ offers was held to impair the origin function. Amazon argued unsuccessfully that it was not the trademark’s function to protect its owner against competition. The Court clarified that it was not part of proper competition to link advertisements for certain branded products which are designed like the ones at issue here with lists containing products of competitors.

Interestingly, the outcome of this case differs from another case decided very recently between the same parties relating to the display of results following an enquiry for ORTLIEB products in the search field on Amazon’s Internet platform. Following a remittal from the Federal Supreme Court, the Higher Regional Court Munich found under those circumstances that it was not misleading when also third-party products where shown in the list of results after the trademark “ORTLIEB” had been entered in the search field of Amazon’s Internet platform (Decision of 6 June 2019 in Case 29 U 3500/15).

It’s a fine line and one may be inclined to wonder whether consumers indeed believe and expect what they are thought to believe and expect, but online retailers will have to try and live with this new case law – at least for Germany.

This article was first published on Kluwer Trademark Blog.

Germany: Modernized Trademark Law

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On 14 January 2019, on the date of the deadline, the German Trademark Modernization Act entered into force (with the wonderfully uniquely German name of “Markenrechtsmodernisierungsgesetz” – short: “MaMoG”). The Trademark Modernization Act implements the mandatory and several optional provisions contained in the revised EU Trade Mark Directive 2015/2436 of 16 December 2015 in Germany. The most important changes for German trademark law are summarized below:

APPLICATION

  • Trademark applications no longer must be capable of being represented graphically. It is sufficient if their content is clear and precise. This means that filings (online or by adding allowed data carriers) are possible in which the trademark is contained in JPEG, MP3, MP4, OBJ, STL, X3D data formats. Maximum file size for JPEG and MP3 is 2 MB, for all other formats 20 MB
  • With the certification mark a new trademark type is available in Germany (official filing fees: € 900 in up to three Classes, € 150 for each additional class) which has been available already since 1 October 2017 at EUIPO

OPPOSITION

  • One notice of opposition may be based on more than one opposing right (before, separate notices of opposition had to be filed)
  • The official fees for filing oppositions are now € 250 for an opposition based on one earlier right, for further opposing rights an additional fee of € 50 each is applicable
  • Oppositions may be based on additional earlier rights: Geographical indications and protected designations of origin
  • A cooling-off period of initially two months with further possible extensions is granted upon joint request
  • Upon request, proof of use must be furnished for the period of five years predating the application / priority date of the opposed trademark. The requirement for further proof of use covering the five years predating the date of the decision on the opposition has been abolished.

REGISTRATION

  • The grace period regarding use will start five years after either the expiry of the opposition period (and not as before five years after the registration date) or – where oppositions have been filed – on the date on which the decision on the opposition becomes final or on which the last opposition has been withdrawn.
  • Licenses may be recorded upon request by the licensor or licensee, subject to the other party’s consent. Previously, there was no provision for the recordal of licenses in Germany.

REVOCATION / INVALIDITY PROCEEDINGS

  • From 1 May 2020 onwards, revocation proceedings based on non-use will be dealt with entirely by the German Patent and Trademark Office. Currently, revocation actions can be brought before the PTO but must be brought to the civil courts if the trademark owner opposes the revocation request. Pushing this to 2020 is legitimate; actually, for this particular change, the Directive allows the Member States until January 2023 for implementation.
  • In addition, invalidity proceedings before the German Patent and Trademark Office based on earlier rights will be available starting from 1 May 2020. The official fees are € 400 for a request based on one earlier right and additional € 100 for each additional right

RENEWAL

  • The renewal period will be calculated differently for all trademarks registered after 14 January 2019: For all new trademark registrations after 14 January 2019 the 10-year renewal period will be calculated from the filing date. For all trademarks which are already registered in Germany on 14 January 2019, the renewal period remains the same as before, i.e. 10 years starting from the end of the month the trademark was applied for. This brings the renewal period for German national marks back in line with EUTMs, which underwent the identical change (from the “end of the month” to the precise filing date) in 2016.

All in all, the changes to the German trademark law are welcome as they lead to greater harmonization with EUTM law and practice. Especially the shift of invalidity and revocation proceedings from civil courts to the PTO will ultimately lead to lower costs for trademark owners.

This article was first published on Kluwer Trademark Blog.

Germany: Preliminary injunctions – The infringer has to do more than just stop using

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In yet another decision, the German Federal Supreme Court (BGH) has ruled on whether an injunction also obliged an infringer to take active steps to stop the distribution of infringing products through resellers (decision of the BGH of 11 October 2017 on Case I ZB 96/16). The case follows a series of earlier decisions by the BGH interpreting cease and desist orders in a broad way (see for instance BGH of 29 September 2016 in Case I ZB 34/15 – Rescue-Tropfen – and of 19 November 2015 in Case I ZR 109/14 – Hot Sox).

The case concerned trademark infringing parallel importation of medical devices. According to the BGH, the preliminary injunction required the parallel importer at least to request its resellers not to distribute the infringing products for the moment. The prohibition contained in a preliminary injunction obliges the infringer not only to cease and desist from own marketing activities, but also to actively take measures which prevent the redistribution of the infringing products. However, this obligation is limited to what is possible, necessary and reasonable. The preliminary injunction does not have to expressively mention these required actions, and which actions are required may also be decided in enforcement proceedings. The limitations of preliminary injunctions – namely their preliminary character – may be reflected by not demanding a recall, but by merely requiring the infringer to urge its resellers to provisionally refrain from distributing the infringing products.

For the full details of the case, see my publication on the Kluwer Trademark Blog.

 

German Federal Patent Court cancels shape mark for sweets due to its mere technical function

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Following a request for cancellation, the Federal Patent Court decided to cancel a shape mark for sweets arguing that it exclusively consisted of a shape necessary to obtain a technical result (Decision of the Federal Patent Court of 27 December 2016 on Case 25 W (pat) 59/14).
Please see my recent post on the Kluwer Trademark Blog for more information.

German Federal Patent Court: Unitary character of the EU trademark: Yes, but… – OXFORD CLUB

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A recent decision of the Federal Patent Court in Germany (Decision of 1 March 2016 on Case 29 W (pat) 33/13) shows that the unitary character of an EU trademark (EUTM) does not necessarily mean that it enjoys the same level of protection in all EU member states. In opposition proceedings in Germany, the Federal Patent Court held that an earlier EUTM registered on the basis of acquired distinctiveness could well enjoy only a low degree of distinctiveness in Germany where the two marks were colliding. For more details see my blogpost on the Kluwer Trademark Blog here.

Parallel import of medical devices – Court gives trademark owner the right to demand a specimen

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The Higher District Court of Düsseldorf had to decide whether the parallel importer of medical devices also had to provide the trademark owner at its request with a specimen of the re-labelled product. In its detailed decision of 12 April 2016 on case I-20 U 48/15 the court held that medical devices were rather more comparable with pharmaceuticals than with food/beverages and gave the trademark owner the right to request a specimen.

For more see my latest blogpost on the Kluwer Trademark Blog here.

 

German Federal Patent Court takes proactive approach in trademark cancellation proceedings

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For more on the decision by the German Federal Patent Court of22 April 2016 on Case 25 W 8/09 read my blogpost on the Kluwer Trademark Blog here.

Germany: Costs in Trademark Opposition Proceedings

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The general rule in German opposition proceedings is that each party bears its own costs. But what are the exceptions? A recent decision by the Federal Patent Court shows once more how difficult it is to obtain a decision ordering one party to bear the costs of another (decision of the Federal Patent Court of 14 January 2016 on Case 25 W (pat) 27/14).

Please read my blog post on this decision on the Kluwer Trademark Blog.

Haven’t heard of the European Union Intellectual Property Office yet?

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Then it’s time to familiarize with the amended Community trademark System!

The Regulation (EU) No. 2015/2424 amending the Community trade mark regulation will enter into force on 23 March 2016. The full text can be found here. It brings a few changes to the current Community trademark system. One of the most notable changes is OHIM’s name which is now “European Union Intellectual Property Office” and the Community trademark itself which is now the “European Union trademark”.
Need for immediate action exists for owners of Community trademarks filed before 22 June 2012 which protect the entire class headings of one or more Nice Classes. Article 28(8) of the amending Regulation allows for a transitional period of six months during which proprietors of these marks registered in respect of the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that class heading. Examples for terms not covered by the literal meaning of the class headings can be found here.
Some of the further relevant changes in the new Regulation are listed below:

  • The fee system will change. Application and renewal fees will be per class, also for the first three classes.
  • The EU trademark application no longer needs to be represented graphically, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
  • Introduction of a EU certification mark
  • Disclaimers are no longer permissible.
  • It is explicitly stated that the Office may re-open the examination of absolute grounds on its own initiative at any time before registration.
  • Third party observations should take place before the end of the opposition period or, where an opposition against the trade mark has been filed, before the final decision on the opposition is taken.
  • Specific grounds for opposition and cancellation on the basis of Protected Designations of Origin and Protected Geographical Indications will be introduced.
  • The date for determining the necessity to submit proof of use in opposition proceedings will be no longer the publication of the EU trademark application to be attacked, but its filing or priority date.
  • The opposition period for International registration designating the European Union will start one month after the date of publication.

Germany: May product search on Amazon amount to trademark infringement by Amazon?

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The Higher District Court of Cologne held in preliminary injunction proceedings that use of a distinctive trademark on amazon.de for displaying other comparable products not originating from the trademark owner may be a trademark infringement (decision of 20 November 2015 on Case 6 U 40/15).

Please see my blog post on this interesting decision on the Kluwer Trademark Blog.