Germany: Strict Rules for Search Engine Advertising by Online Marketplaces

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 […]

Germany: Modernized Trademark Law

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. […]

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

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 […]

ECJ: Use of product names such as “Tofu butter” or “Plant cheese” violates EU Law

In its decision of 14 June 2017, the ECJ stated that the terms milk as well as the names of other protected milk products cannot be used as part of product names for entirely vegan / vegetarian products (decision on case C-422/16). This also applies if the product names contain clarifying or descriptive further elements […]

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

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 […]

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

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 […]

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

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 […]

German Federal Patent Court takes proactive approach in trademark cancellation proceedings

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

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 […]

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

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 […]