Trademark Law

No excuses! Banking institutions cannot refuse to provide information based on banking secrecy

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The German Federal Supreme Court clarified in its decision of 21 October 2015 that a bank cannot refuse to provide information on the owner of an account used for trademark infringing activities based on the banking secrecy (Judgment in Case I ZR 51/12 – Davidoff Hot Water II).
Prior to this decision, German Courts rejected in quite a few cases claims for information against banks on address and names of holders of accounts evidently used for trademark infringing activities. The rejection was always based on the banking secrecy and the corresponding right of the bank to withhold information.
This also happened to Coty Germany, licensee for the production and distribution of perfumes bearing the trademark „Davidoff”. Coty Germany had become aware of counterfeit perfumes being offered via eBay and made a test purchase. After the test purchase it was not possible to identify the seller, but Coty Germany was in hold of the account details of the seller. It approached the bank which kept the account and requested information on name and address of the account owner. As the bank refused to provide the requested information, Coty Germany took the matter to Court. Coty Germany was successful in first instance, but the Higher District Court rejected the claim. The Court held that the bank could refuse to provide the information, as the third party information request in the German Trademark Act was limited by professional rights to refuse to give evidence, such as the one resulting from banking secrecy. The Court also considered this limitation to be in line with the Directive 2004/48/EC (“Enforcement Directive”).
Coty Germany appealed to the Federal Supreme Court. The Federal Supreme Court referred the case to the European Court of Justice (“ECJ”) for a preliminary ruling and asked whether the Article 8(3)(e) of the Enforcement Directive must be interpreted as precluding a national provision which, in a case such as that in the main proceedings, allows a banking institution to refuse, by invoking banking secrecy, to provide information concerning the name and address of an account holder.
Article 8 (3)(e) of the Enforcement Directive provides that the request for information shall apply without prejudice to other statutory provisions which govern the protection of confidentiality of information sources or the processing of personal data.
In its preliminary ruling of 16 July 2015 in Case C‑580/13 the ECJ must be interpreted as precluding a national provision, such as that at issue in the main proceedings, which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide, pursuant to Article 8(1)(c) of that directive, information concerning the name and address of an account holder.
After these clear words from the ECJ, the Federal Court now decided that Coty Germany had a right to request name and address of the account owner from the bank. In particular, the bank could also not refer the trademark owner to the possibility of initiating criminal proceedings.

This decision improves the situation for trademark owners in Germany that are left only with account details of trademark infringers significantly.

Proof of use before OHIM

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The General Court of the European Union (GC) affirmed in its decision of 4 June 2015 in Case T-254/13 that the Board of Appeal had lawfully exercised the discretion granted by Art. 76 (2) CTMR to take account of lately filed evidence of use, although the further documents submitted only before the Board of Appeal had no small extent. In the center of the proceedings before the GC were, besides the question whether the Board of Appeal lawfully exercised the discretion granted by Art. 76 (2) of the Trade Mark Regulation (CTMR) when considering proof of use presented for the first time before it, questions about the limits of the similarity of goods.

 The proceedings before OHIM

The applicant had applied for declaration of invalidity of the Community trade mark „Stayer“ (word/device), which was registered at the Office for Harmonization in the Internal Market (OHIM) in 2005 for different tools, materials and construction machines in Classes 7 and 8, as well as for services in Class 39. The applicant had based the application on a likelihood of confusion with its earlier International Registration for the word mark „Stayer“ for goods in Classes 3, 8 and 16 with protection in Germany. The Cancellation Division at OHIM had rejected the request for cancellation, since the Office considered – following the permissible request for proof of use by the defendant – that the applicant failed to prove use of its earlier word mark “Stayer” in Germany. With its appeal, the applicant submitted further documents supporting the use of the word mark “Stayer” in Germany. Following this, the Board of Appeal annulled the decision of the Cancellation Division and partially upheld the request for cancellation, namely with respect to goods in Classes 7 and 8.

 The decision of the GC

The action before the GC was partially successful. Although the GC confirmed the assessment of the Board of Appeal that the applicant had adequately demonstrated the use of her earlier word mark “Stayer” for “trowels”, the Court reversed the decision in part because of lack of similarity between the goods at issue which also led to a lack of likelihood of confusion. In the proceedings in particular the sufficient proof of use of the earlier mark was disputed among the parties. Reason for this was that the applicant had initially before the Cancellation Division only submitted 5 invoices from within the relevant time period, some undated pictures, a catalog, printouts from a website and a declaration from the year 2004. After the applicant failed with its cancellation action before the Cancellation Division, it submitted further proof of use together with its statement of grounds in support of the appeal, namely in particular 6 additional invoices, of which 5 were from the relevant time period. The Board of Appeal was of the opinion that the invoices and pictures submitted before the Cancellation Division, supported use of the earlier mark, at least to a small extent. The Board of Appeal, however, held the remaining documents in support of use submitted before the Cancellation Division to be irrelevant. It held that the originally submitted invoices would together with 5 of 6 invoices submitted before it constitute sufficient proof of use of the older mark for „trowels“. The defendant regarded the taking into account of the proof of used filed before the Board of Appeal a breach of Art. 76 (2) CTMR, particularly as the number and extent of the invoices exceeded the invoices submitted before the Cancellation Division and therefore could not be regarded as mere supplement of the earlier proof of use. The GC rejected the appeal in this regard. The Court initially confirmed that Art. 76 (2) CTMR grants OHIM a wide discretion, when considering not timely submitted facts and evidence. In addition, it pointed out that a cancellation request could be rejected in accordance with Rule 40 (6) of the Implementing Regulation of the CTMR, if within the time-limit set by OHIM either no or only clearly irrelevant documents were submitted. If, however, relevant documents were filed within the prescribed time-limit, the proceedings would continue. As the initially filed documents were relevant, the proceedings continued and additional evidence could be considered, provided that it only complemented the evidence submitted earlier. The General Court confirmed that 5 invoices submitted only before the Board of Appeal could lawfully be taken into account, as they only complemented the earlier evidence, though they evidenced sales of more products sold than the invoices submitted earlier. Firstly, because the number of subsequently filed invoices was as high as the number of invoices already submitted within the initial time period. Secondly, because it was logical that the invoices produced before the Board of Appeal comprised evidence on more sales, as the Cancellation Division had rejected the earlier proof of use as insufficient. Furthermore, the Court confirmed that there was no duty for the applicant to explain why it had not submitted these documents earlier. With respect to the similarity of goods, the Court confirmed the high degree of similarity between “trowels” and “equipment and tools” in class 7. However, unlike the Board of Appeal the Court held the remaining goods in Classes 7 and 8 for dissimilar and annulled the decision insofar. It clarified that also the aspect of complementarity does not mean that all goods that can be used side by side on a construction site, are similar also in the trademark sense.

 Conclusion

The decision shows that the provision of Art. 76 (2) CTMR enables the parties to submit further proof of use before the Board of Appeal in a non-negligible extent. Nevertheless, it remains recommendable to submit comprehensive proof of use within the original time limit set by the Office.

No trademark protection for „TOUCHING HEARTS, CHANGING LIVES”

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Whether trademark protection may be obtained for a slogan, remains difficult to be predicted. In this case, the refusal of the Community trademark application for “TOUCHING HEARTS, CHANGING LIVES” was confirmed by the Fourth Board of Appeal at the Office for Harmonization in the Internal Market (“OHIM”).

The applicant had filed the Community trademark application “TOUCHING HEARTS, CHANGING LIVES” (“CTM application”) for goods and services in Classes 9, 16, 35, 41 and 44.

The examiner at OHIM rejected the CTM application arguing that it was devoid of any distinctive character, Art. 7 (1) (b) CTMR. According to the examiner the CTM application would be perceived as a mere laudatory message with nothing else in it to enable the public to memorize the sign easily and instantly as a distinctive trademark for the goods and services applied for. The applicant could also not convince the examiner that the anaphora through the repeated use of verbs in the active form (namely TOUCHING and CHANGING) makes the slogan memorable, and thus distinctive.

The applicant appealed the decision. In its statement of grounds in support of the appeal it examined in detail the structure and meaning of the CTM application and concluded

  • that it had no apparent meaning with respect to the goods and services applied for;
  • and that the rhythm and structure of the CTM application would add to its distinctiveness and memorability.

The Fourth Board of Appeal rejected the appeal and confirmed the refusal of this CTM application.

In its reasoning it acknowledges that only the ability of the CTM application to be used as advertising slogan does not prevent it from being registered as a trademark and that no specific criteria shall be applied to this category of trademarks. Even assuming a high level of attentiveness of the relevant public, the Board of Appeal denied, however, that the CTM application contained anything exceeding its plain advertising function. It argued that the CTM application would be understood in relation to the goods and services applied for that these can help the consumers to feel better and change their lives. In addition, the public would not expect promotional slogans to be precise or to fully describe the characteristics of the goods and services at issue. To add further emphasis the Board referred in this context a number of decisions by the General Court in which the registration for slogans were refused despite of their vague and indefinite character. The Board of Appeal concluded that the CTM application did contain any imaginative, surprising or unexpected elements which would confer distinctive character on it.

Due to the Board of Appeal’s perception of the CTM application, also the increased memorability caused by rhythm and structure of it, did not help the applicant.

As a result it remains difficult to predict when a trademark application for a not descriptive but in a vague and indefinite way allusive slogan will have the special “something” to be eligible for Registration.

No trademark protection for the slogan “Pioneering for You”

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In its decision of 12 December 2014 on Case T-601/13, the General Court of the European Union (“GC”) confirmed the refusal of the Community trademark application for “Pioneering for You”.

The applicant filed a Community trademark application for the word mark “Pioneering for You” for goods in Classes 7, 9 and 11 and services in Classes 37 and 42. The examiner at OHIM rejected the trade mark application for lack of distinctive character. That decision was upheld by the Fourth Board of Appeal of OHIM, whereupon the Applicant filed an action before the GC.

However, also before the GC the applicant had no success: Evidence on the alleged well-known character of the slogan “Pioneering for You” which the applicant only submitted before the GC, but not earlier before OHIM, could not be taken into account by the GC. With respect to the disputed lack of distinctive character, the GC noted initially that according to the case-law of the ECJ the mere laudatory character of a word mark would not necessarily lead to a lack of distinctiveness. However, the sign must possess a certain originality or conciseness, require a minimum of interpretation effort or trigger a thought process in the target public. This was denied by the GC for the slogan “Pioneering for You”, even when an elevated level of attention by the relevant public was to be taken into account. The sign “Pioneering for You” was according to the GC of no particular originality or conciseness. The applicant could not rely on a sufficient originality of the sign caused by the capitalization of the letter “Y” in “You”, especially since this had no impact aurally. Further, the message of the slogan was according to the GC that clear that it did not leave any room for interpretation. Finally, the GC also rejected a thought-provoking impulse by the sign, namely that the relevant public would wonder in which way the applicant would be pioneering, as vague and unconvincing. The GC therefore confirmed that the sign was not capable of distinguishing the goods and services for which protection was claimed.

Extent of protection of CTMs prior to ECJ’s „IP Translator“-decision

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Does a CTM registered before 21 June 2012 for all class headings protect only those class headings in the literal meaning or does it protect all goods/services in the alphabetical list of this class? The General Court (GC) had to decide on 30 September 2014 in case T-51/12 on a request for revocation for the trademark “LAMBRETTA” based on non-use in relation to the goods “vehicles; apparatus for locomotion by land, air or water”. The CTM proprietor had, as far it is relevant here, only submitted proof of use in relation to spare parts for scooters before OHIM. OHIM had disregarded this evidence as it would not prove use for “vehicles; apparatus for locomotion by land, air or water” in its literal meaning.

 

According to the ECJ’s decision of 19 June 2012 on case C-307/10 („IP Translator“) all goods and services for which trademark protection is claimed have to be identified with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trademark. An applicant using all class headings of a class, should indicate whether protection is requested for all goods/services in the alphabetical list of that class or only some of those goods/services.

 

Following the IP Translator-decision, OHIM had issued Communication no. 2/12 of the President explaining that it would – for all marks registered before 21 June 2012 – take the view that the use of all class headings of a particular class reflected the applicant’s intention to cover, by his demand, all goods and services included in the alphabetical list relating to that class. This approach was justified by reference to the Communication no. 4/03 of the President of OHIM where it was also stated that the use of all the general indications listed in the class heading of a particular class would also constitute a claim to all the goods or services falling into that class.

 

Also, the case at issue where the mark was even registered before Communication no. 4/03 of the President of OHIM could not be treated differently, as Communication no. 4/03 only clarified the already existing practice and was also in line with the GC’s jurisdiction at that time.

According to the GC in favor of the CTM proprietor therefore the complete alphabetical list of goods in Class 12 had to be taken into account. As this list also contained spare parts, the Board of Appeal should have examined the evidence which the CTM proprietor had submitted in relation to spare parts for scooters. For this reason, the GC annulled the decision of the Board of Appeal.

Conclusion: Following the GC’s decision – which has not yet become final – the proprietors of CTMs registered and also filed before 21 June 2014 should be safe that their CTMs which cover the complete class headings of one class also have protection for all the goods/services which were in the alphabetical list at the time of the filing. It remains to be seen whether the decision becomes final or if OHIM takes the matter to the ECJ.

 

 

Take care when using third party trademarks as meta-tags or titles on your webpage

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The Higher District Court of Frankfurt had to deal in its decision of 31 March 2014 (Case ref.: 6 W 12/14) with the question under which circumstances the use of a third party trademark by a reseller as meta-tag or title of a webpage may constitute a trademark infringement.

Generally everyone who resells goods which were put on the marketplace in the European Union with the trademark owner’s consent is also entitled to use the trademark in advertising. Therefore, the use of a third party trademark as meta-tag or title of its webpage by a reseller would not be generally inadmissible. In the case at issue, however, the reseller offered only very few and at the same time overpriced goods originating from the trademark owner. This according to the court allowed the conclusion that main purpose of the use of the trademark was to divert the potential purchasers to its own offer. The trademark owner had therefore legitimate reasons to oppose the use of the mark in this case, Section 24 Para. 2 German Trademark Act. The trademark owner could therefore successfully prevent the use of its trademark by the reseller as meta-tag and title of its webpage under the given circumstances.