ipreport - bardehle pagenberg · infringement analysis (decision of march 31, 2009 – case x zr...

IP Report

Firm News: Page

Current Rankings and Comments in International Lawyer Guides ....................................................................... 2

Patent Law

1. German Parliament passes “Act to Simplify and Modernize the Patent Law” ............................................... 2

2. German Federal Supreme Court on the patentability of computer-related inventions (Decision ofJanuary 20, 2009 – Case X ZB 22/07 – Control device for examining modalities) .............................................. 3

3. German Federal Supreme Court on the interpretation of an unclear feature of a patent claim ininfringement analysis (Decision of March 31, 2009 – Case X ZR 95/05 – Road construction device) ............... 4

4. German Federal Supreme Court on anti-trust defence in litigation involving standard-essentialpatents (Decision of May 6, 2009 – Case KZR 39/06 – Orange-Book-Standard) ............................................... 6

5. European Patent Office: Administrative Council adopts amendments to the Implementing Regulationsimposing restrictions for filing divisional applications (Decision of March 25, 2009 – Case CA/D 2/09) ............ 7

6. Dusseldorf Appeal Court on the consequences of publishing a press release in the US regardingongoing patent infringement proceedings in Germany (Decision of October 10, 2008 –Case 20 U 189/08 – Press release) ........................................................................................................................ 8

Trademark Law

7. European Court of Justice: Equality of treatment – Consistency of Office decisions – Taking intoaccount prior practice (Decision of February 12, 2009 – Cases C-39/08 and C-43/08 – Bild digital GmbH& Co. KG and ZVS Zeitungsvertrieb Stuttgart GmbH v DPMA – Volks.Handy and SCHWABENPOST) ......... 10

8. European Court of Justice: Taking unfair advantage of a mark with a reputation – Relevant public –Use for goods or services (Decision of March 12, 2009 – Case C-320/07 P – Antartica Srl v OHIM andThe Nasdaq Stock Market, Inc. – NASDAQ/nasdaq) .......................................................................................... 11

9. European Court of Justice: Sale of luxury goods via unauthorised channels constitutes breach ofquality-related conditions in a license agreement prohibiting such sale – No exhaustion of rights (Decisionof April 23, 2009 – Case C-59/08 – Copad SA v Christian Dior couture SA – Christian Dior) .......................... 12

10.European Court of Justice: Likelihood of confusion – Similarity of goods – Distortion of facts (Decisionof May 7, 2009 – Case C-398/07 P – Waterford Wedgwood plc v OHIM and Assembled Investments[Proprietary] Ltd – WATERFORD/WATERFORD STELLENBOSCH) ................................................................... 14

11.German Federal Supreme Court: Frankfurt Stock exchange loses against Commerzbank whenasserting claims related to “DAX” (Decision of April 30, 2009 – Case I ZR 42/07 – DAX) ................................ 15

12.Hamburg Appeal Court determines conditions and extent of eBay’s obligation to monitor and preventfuture IP rights infringements (Decision of July 24, 2008 – Case 3 U 216/06 – Trip Trap) ................................. 16

13.Hamburg Appeal Court on under which circumstances use of the primary colour blue constitutes“use as a trademark” (Decision of November 19, 2008 – Case 5 U 148/07 – NIVEA-Blue) ............................. 17

Design Law

14.Office of Harmonisation in the Internal Market: Invalidity Division on whether priority of aregistered Community design is validly claimed (Decision of March 19, 2009 – Case ICD 5163 –Jijun Yu v MFB Diffusion SARL) ........................................................................................................................... 19

»The Bardehle Pagenberg IP Report«2009/ II – www.bardehle.com

Firm News:

BARDEHLE PAGENBERG is pleased toinform on a selection of firm rankingsand quote some favourable commentsrecently published in international gui-des for law firms and lawyers.

Best LawyersSeven partners of our firm were listed inthis eminent lawyer directory from the US,now published for the first time inGermany, which lists individual lawyersselected exclusively on the basis of anation-wide peer review. Only two otherfirms in Germany boasted similar num-bers of individual recommendations in thepractice area of Intellectual Property inthe Best Lawyers list which was simulta-neously published in the weekly econo-mics magazine Handelsblatt

Chambers Europe 2009 – Europe’sLeading Lawyers for BusinessIn this publication, BARDEHLE PAGEN-BERG was named in Band 1 of the firmsranked in Intellectual Property/PatentLitigation, (among other favourable ran-kings). We take the liberty to reproducethe following excerpts of the related edi-torial comments here:

“Offering a wide range of highly qualifiedlawyers who deliver outstanding-qualitywork across a range of technical IP fields,this boutique is universally respected forits patent work. Market observers notethat the firm is frequently seen in promi-nent patent litigation cases and workswith an impressive client list (…).

The firm is expanding its focus on thisfield (trademarks), handling complex liti-gation and trade mark filing matters,which are often global in scope and forhousehold name clients (…)”

1. The Lower House (Bundestag) of theGerman Parliament passed the „Act toSimplify and Modernize the PatentLaw“ on May 28, 2009 (see also IP-Report 2008/V).

Contrary to the government draft, theBundestag decided to maintain the so-called “maxim of concentration”, whichprecludes a later action against the samedefendant on the basis of a differentpatent and thus requires a patentee tobase infringement actions on all of hispotentially infringed patents.

The important legislative goals of the pro-cedural reform of German Patent Lawhave been achieved: Measures will beintroduced in patent nullity proceduresthat are to accelerate the course of proce-dure in first instance before the FederalPatent Court and, in second instance,before the Federal Supreme Court.

The task of the Federal Supreme Courtwill be concentrated, in a revision-likemanner, on reviewing the decisions of thefirst instance for legal errors. There will beno second entirely new instance, thusending a legal tradition that started withthe coming into force of the first GermanPatent Act in 1877.

Another important point is a change inemployee invention law. It will be freed offormalities which had created difficultiesbetween the employer and the employee.Of particular importance is the introducti-on of the legal fiction of a claim to anemployee invention, i.e. that it is automa-tically transferred to the employer fourmonths after the reporting of the inventi-on, subject to procedural details whichwill have to be observed. The possibilityof a limited claim to the invention hasbeen cancelled.

The Act includes further importantchanges in the various IP laws on whichwe will report in due time. As far as theTrademark Law is concerned, an impor-tant amendment relates to oppositionproceedings: while up to know only regi-stered marks and only likelihood of confu-sion could be relied on, in future all earlierrights and also detriment to reputation(dilution) may be invoked.

Reported byDr. Dieter Stauder

Munich.Düsseldorf.Paris.Alicante.Barcelona

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2. German Federal Supreme Court onthe patentability of computer-relatedinventions (Decision of January 20,2009 – Case X ZB 22/07 – Steuerungs-einrichtung für Untersuchungsmodal-itäten/Control device for examiningmodalities)

Patentability is not to be decided by theresult of weighing technical and non-technical elements. It is decisivewhether the teaching – considered as awhole – serves to solve a concretetechnical problem that goes beyonddata processing.

The decision clarifies the criteria to beapplied in examining computer-relatedinventions and corrects the restrictivepractice of the Federal Patent Court oncomputer-related inventions.

The patent application at issue relates toa “Method for processing medical data”,wherein information on symptoms anddiagnosis is entered into a program whichselects and issues information for exami-nation modalities from a data base.Corresponding protocols on examinationand measurements are read out from thedata base and transferred to a deviceused in the examination to display theprotocols and/or to control the examina-tion modality (e.g. the resolution ofimages in a computer tomograph). TheFederal Supreme Court quotes in thisrespect long-standing German andEuropean case law, namely BGH “Anti-skid system” of 1980, BGH “Diving com-puter” of 1992 and EPO Board of AppealsT 28/86 X-ray apparatus of 1987.

The Federal Patent Court rejected theapplication under § 1 Sect 1 GermanPatent Act for lacking technical characterif considered as a whole, and assessedaccording to what is in the fore: theteaching of the invention could not berealized without the aspects of selectingand deciding which correspond to themental activities of the physician, and theremaining technical elements (transmis-sion of digital protocols) were not deemedsufficient as a basis for a patentableinvention.

The Federal Supreme Court reversed thisdecision and stated that the technicalcharacter as a prerequisite for thepatentability of a computer program or a

computer-based method is establishedjust because the processing, storing andtransmitting of data by means of a techni-cal device is involved. In a claim with amixture of technical and non-technicalfeatures, the technical character must notbe negated as a result of weighing. TheFederal Supreme Court recalled that theformer “core theory”, on which theFederal Patent Court had based its deci-sion, was expressly abandoned in the1992 Supreme Court decision “DivingComputer”. Whether combinations oftechnical and non-technical features(which are excluded as such) arepatentable is to be decided solely on thepresence of inventive activity.

In addition to the requirement of a techni-cal character, a patent application with acomputer program or a computer-imple-mented method must contain featureswhich solve a concrete technical problemwith technical means to overcome theexclusion of a “computer program assuch” in § 1 Sect. 3 No.3 Patent Act. (TheFederal Supreme Court refers in this con-text to its former decisions BGH “Searchfor faulty strings” of 2001 and BGH“Electronic Payments” of 2004.) Non-technical features are only considered tothe extent that they contribute to the solu-tion of the technical problem with techni-cal means. A teaching of this kind is onlypatentable if the solution of the concretetechnical problem is novel and based oninventive activity.

The case was remanded back to theFederal Patent Court which will now haveto analyze whether the teaching of theapplication is novel and based on inven-tive activity; the Federal Supreme Courtfurther suggested to examine whether theapplication discloses a technical teachingthat goes beyond the non-technicalaspects of collecting, storing, evaluatingand using data in transforming these dataand whether this teaching has patentablemerits.

The decision of the Federal SupremeCourt gives a concise and clear summaryof the German law in the field of comput-er-implemented inventions. The recitationof technical elements in the claims suf-fices to establish the technical character(“technicality”) of the invention; for com-puter-implemented inventions, however, itis necessary to demonstrate, in addition,


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that the claim comprises controlling fea-tures that solve a concrete technicalproblem with technical means (i.e. theprogram interacting with the computer orother technical components). The com-puter-implemented invention is onlypatentable if this solution is found to benovel and based on inventive activity inthe examination on the merits of theinvention. This approach is in line with thecase law of the Boards of Appeal in theEuropean Patent Office (as stated e.g. inT 258/03 “Auction method/HITACHI” andT 641/00 “Two identities/COMVIK”).

The decision removes some ambiguitiesin the former case law of the FederalSupreme Court which – although requir-ing that the technical character beassessed for the claim as a whole – putthe emphasis on the “coining features”,i.e. those that determine its character.This apparently led the Federal PatentCourt to its restrictive practice in the fieldof computer-implemented inventions.That practice had already been criticizedin the decision “Electronic Payments” of2004.

The future discussion on granting patentsfor computer-implemented inventions willnow focus on the issue of how to con-strue the term “concrete technical prob-lem” in the presence of non-technical fea-tures and the contribution of the latter toinventive activity.

Reported by Fritz Teufel

3. German Federal Supreme Court onthe interpretation of an unclear featureof a patent claim in infringement analy-sis (Decision of March 31, 2009 – CaseX ZR 95/05 – Straßenbaumaschine/Road construction device)

A patent infringement complaint maynot be rejected on the grounds that afeature of the asserted patent claimsseems to be unclear in its technicalmeaning. A lack of clarity may onlygive reason to limit the feature to thenarrowest reasonable meaning.

In the decided case, the plaintiff assertedagainst the defendant claims for theinfringement of a European patent relat-ing to a road construction device. Thedefendant contested the alleged infringe-ment by arguing that one of the featuresof the asserted patent claim which relatesto the location of the operator’s stand ofthe road construction device would notbe realized. According to said feature, theoperator’s stand must be located “in thearea of the rear supporting rollers”.

The District Court essentially followed theplaintiff’s requests and assumed a literalinfringement of the asserted patent claimafter having ordered and considered awritten court expert’s opinion. The defen-dant filed an appeal against this decision.

The Court of Appeals ordered the firstinstance court expert to provide a sup-plementary court expert opinion for theappeal instance and heard the courtexpert also in an oral hearing. On thisbasis, the Court of Appeals rejected theplaintiff’s infringement complaint and lift-ed the first instance decision. The Courtof Appeals reasoned this decision as fol-lows: Despite ordering a written courtexpert’s opinion and hearing the courtexpert in an oral hearing, it was not pos-sible to establish what the feature stipu-lating that the operator’s stand must belocated “in the area of the rear supportingrollers” actually means. The court expertwould not have been able to define thisfeature. Therefore, it could not be estab-lished whether the operator’s stand of theattacked embodiment being locatedslightly in front of the rear supportingrollers would be “in the area of the rearsupporting rollers” or not.


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With the reported decision, the FederalSupreme Court considered this reasoningto be based on fundamental legal defectsand thus lifted the appeal decision byreferring the case back to the Court ofAppeals for the following reasons: Therejection of the complaint for remainingdoubts with respect to the meaning of thedisputed claim feature by the Court ofAppeals indicated that – according to theCourt of Appeals’ opinion – said meaningwould be a question of facts and not aquestion of law. Such understanding neg-lected, however, that the granted patentclaim and its subject matter have a nor-mative character and must therefore bedetermined as a question of law.Consequently, the question of how a fea-ture of a patent claim has to be under-stood cannot remain unanswered by theinfringement court.

The infringement court is responsible andobliged to answer any question of law,even if the applicable law is unclear or ifits interpretation is difficult. The infringe-ment court must thus determine themeaning of the patent claim and of itsfeatures in such way that the resultappears to be technically meaningful fromthe point of view of a person skilled in theart, in view of the patent specification andunder consideration of the descriptionand the drawings. This rule was based onthe experience of life that persons skilledin the art typically intend to read a patentwith a meaningful content. Therefore, any(remaining) lack of clarity of the claim fea-ture may only give reason to limit themeaning of said feature down to the nar-rowest reasonable meaning, if otherwiseno sufficient legal certainty for third par-ties may be safeguarded.

The approach of the Court of Appealswould in essence lead to the refusal ofpatent protection in cases of “unclear”features. This was not in conformity withthe binding and existing legal situationthat the grant of a patent attributes rightsto the patentee which the infringementjudge must reflect as long as the corre-sponding patent claim is not revoked ordeclared to be invalid. As a side note, theFederal Supreme Court further presentsin the reported decision its understandingof the meaning of the disputed claim fea-ture by expressly citing and explainingpassages from the specification of the

asserted patent, thereby suggesting tothe Court of Appeals a possibly meaning-ful and with respect to the principle oflegal certainty sufficient interpretation.

In summary, the Federal Supreme Courtemphasizes – like in a series of similarpreceding decisions – the supportive (butnot authoritative) role of the court expertand the responsibility of the infringementcourt as to the interpretation of a patentclaim and of its individual features. The“new” – but in view of this case law ratherself-evident – aspect of the present deci-sion is the confirmation that lack of clarityof a patent claim is not a valid argumentfor alleged infringers to use as a defense.However, more specifically and moreimportantly, the Federal Supreme Courtfound, in addition, that a lack of claritymay give reason to substantially limit therespective feature to the narrowest rea-sonable meaning.

This means in practice that applicants arewell advised to draft patents, and in par-ticular patent claims for Germany, asclearly as reasonably possible. At least inGermany, the opposite concept of a non-committal determination of the protectedteaching entails significant risks, namelythat the scope of protection is substan-tially limited by the infringement court andthus unsuitable to allow for any intended“fishing expedition” for litigation purpos-es. Further, unclear patent claims mayfacilitate an easy and potentially success-ful design-around.

Reported by Dr. Tilman Müller-Stoy


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4. German Federal Supreme Court onanti-trust defense in litigation involvingstandard-essential patents, (Decisionof May 6, 2009 – Case KZR 39/06 –Orange Book Standard)

The German Federal Supreme Courtruled that a defendant in a patentinfringement suit may successfullyraise an anti-trust defense against theissue of an injunction where the assert-ed patent is standard-essential and thedefendant has tried to obtain a licenseto the patent under reasonable condi-tions.

A defendant may under European andGerman anti-trust law have a right to alicense to a patent which the defendantcannot avoid infringing if he wants to usea standardized technology. In the casebefore the Federal Supreme Court, theasserted patents covered the OrangeBook standard for writeable CDs devel-oped by plaintiffs Philips and by Sony.The Court said that the plaintiff’s denial togrant a license may be an abuse of mar-ket power conferred on him by the stan-dard-essential patent, and unduly dis-crim-inate against or obstruct the defen-dant.

In this decision, the Federal SupremeCourt confirmed for the first time the exis-tence of the so-called anti-trust defenseagainst the issue of an injunction in apatent infringement case. The courtemphasized that the prerequisites for thedefense include that the defendant hasmade a license offer under reasonableconditions and that the plaintiff’s rejectionof the offer was unlawful under anti-trustlaw. While these elements had alreadybeen mentioned by lower instance courtslike the Karlsruhe and Düsseldorf courtsof appeal, the Federal Supreme Courtadded, as a further prerequisite, that thedefendant regularly pay or at least depositfor the plaintiff the royalties due under hisreasonable license offer. In this case,defendants Master & More, SK Kassetten,Global Digital Disks had not deposited the3% royalties which in their opinion wereowed, and therefore the court dismissedthe appeal without having to decidewhether Philips had abused its marketpower.

In a dictum, the court noted that thedefendant often does not know the

amount up to which a royalty rate may stillbe considered as reasonable. The courtsaid that the defendant, therefore, maymake an offer to take a license withoutspecifying the license fees and leave it tothe plaintiff to determine, at his discretion,a reasonable amount. At the same time,the defendant must deposit for the plain-tiff an amount that is certain to cover anyfees the plaintiff can reasonably demand.Once the plaintiff has quoted an amount,the defendant may ask the court in a laterproceeding to reassess the amount deter-mined by the plaintiff.

Despite the introduction of the additionalrequirement for the defendant to depositreasonable license fees, the decision ofthe Federal Supreme Court is likely tostrengthen the defendant’s position.Under the available case law of the lowerinstance courts, the defendant couldavoid the issue of an injunction only if hehad made a license offer that was so highthat, by asking for more, the plaintiffwould have violated anti-trust law. To beon the safe side, the defendant’s offer hadto go to the limit or beyond of what canbe regarded as reasonable.

Under the new rules set by the FederalSupreme Court, it seems that the defen-dant may apply the following procedureto avoid the issue of an injunction in thecase of a standard-essential patent:(1) Defendant makes an offer to take alicense under reasonable conditions,without specifying the fees; (2) defendantdeposits an amount that at least coversany fees the plaintiff can reasonablydemand; (3) plaintiff determines the fees;(4) defendant may ask the court to assesswhether the amount set by the plaintiff isreasonable.

Reported by Dr. Christof Karl, LL.M.


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5. European Patent Office: Admin-istrative Council adopts amendmentsto the Implementing Regulationsimposing restrictions for filing division-al applications. New time limits willenter into force on April 1, 2010.Transitional provisions imply retro-spective effect (Decision of the Admin-istrative Council of March 25, 2009,CA/D 2/09, OJ EPO 2009, 296).

In IP Report 2008/V, a proposal from theEPO was reported according to which thefiling of divisional applications should berestricted to narrow time limits. In themeantime, the proposal was discussed inthe Administrative Council’s Patent LawCommittee and in the AdministrativeCouncil itself. Representatives of theinterested circles raised strong objectionsagainst the proposal, arguing that for anapplicant it is essential to know what hecan expect to be granted in a pendingapplication before he can take a sounddecision which subject-matter remains tobe prosecuted in a divisional application.All objections remained in vain. On March25, the Administrative Council adoptedthe amendments as proposed by theOffice. Even a proposal from interestedcircles to give the Examining Division thediscretion to allow an amendment outsidethe strict time limits was rejected.

The new regime under Rule 36 EPC asamended will be the following. The dis-tinction between an obligatory divisioncaused by an objection to non-unity anda voluntary division made on the appli-cant’s own volition, a distinction deletedfrom Rule 25 EPC 1973 as early as 1988because it had created difficulties, is re-introduced into the EPC. In case of a non-unity objection, the applicant has to file adivisional application within 24 months,the time limit running from the communi-cation raising the objection. A voluntarydivisional application may also be filedwithin 24 months, the time limit runningfrom the first communication of theExamining Division. In case of a sequenceof divisional applications, it is the firstcommunication in the first parent applica-tion triggering the time limit for all succes-sive divisional applications.

Remarks:

In future, a cautious applicant will have totake into account that the outcome of

grant proceedings may be less than he hadexpected and may be less than he thinksis justified. If grant proceedings have notcome to an end before the lapse of twoyears after the first communication, hehas to file a divisional application in orderto keep his options open. Only in case ofan objection to non-unity may a divisionalapplication be filed later. This will entail anincrease in divisional applications filed asprecautionary measure, in particular if thebacklog in examination and, consequently,pendency times continue to increase.

At least two points are unclear under Rule36 EPC as amended:

1. Will the situation be treated as an oblig-atory division if the divisional applicationis caused by an objection of theExamining Division under Rule 137(4)EPC to a shifting to unsearched matternot forming a single general inventiveconcept with the originally claimed inven-tion? This situation is at least not express-ly covered by the wording of amendedRule 36 (1) a) EPC.

2. What is a first communication? Anycommunication from the ExaminingDivision falls under the wording of theamended Rule. Does even a communica-tion not dealing with the substance of thecase trigger the time limit of 24 months?

Whereas these situations may be dealtwith in the Guidelines, it would have beenpreferable that the Rule itself makes clearwhat the applicant may expect.

The watching of the new time limits mayinvolve some difficulties for the applicantor his representative. An applicant dealingwith a communication raising an objec-tion to non-unity is immediately aware ofthe need to react and to come to a deci-sion whether or not to proceed with partof the subject-matter of the application inthe framework of a divisional application.The situation is quite different in a casewhere no such objection has been raised.The substance of the communicationdoes not give any reason to think of thepossibility or the need to file a divisionalapplication. Neither does the form of thecommunication warn the applicant that itmight trigger a time limit for filing a divi-sional application. At present, all commu-nications under Article 94 (3), Rule 71 (1)EPC have the same format. A communi-


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cation of the Examining Division does nottell its reader that it is a first communica-tion in an earliest application within themeaning of Rule 36 (1) a) EPC. The proce-dural situation can only be assessedwhen looking into the file or into severalfiles, as the case may be. What can theapplicant do in order not to miss the timelimit for filing a divisional application insuch a situation?

Time limits which have to be observedduring the processing of an applicationhave to be entered in an appropriate sys-tem for monitoring time limits. In an officedealing with numerous applications, areliable system for monitoring time limitsrequires that the time limit to be observedis entered into the system immediatelyafter a communication is received in theoffice. Any delay in this respect impliesthe danger that mistakes happen and anentering into the system during or afterthe dealing with the communication isoverlooked. The EPO has been madeaware of the fact that applicants have noproper basis for creating routine process-es for watching time limits under Rule 36(1) a) EPC. It is to be hoped that the lay-out of the EPO’s communications will bemodified in a manner which shows, atleast, that a communication is a first com-munication or indicates that it triggers thetime limit for filing a divisional application.Only such information enables the appli-cant to monitor the time limit in a reliablemanner.

Still more difficulties exist for a transition-al period. Although Rule 36 (1) EPC asamended does not enter into force untilApril 1, 2010, time limits under the newprovision are already running. The newprovision applies to pending applications,and under the transitional provision theapplicant is given at least 6 months for fil-ing a divisional application if the time limitof 24 months has lapsed before or is run-ning on April 1, 2010. This may be illus-trated by the following example: A firstcommunication was issued in May 2008.It triggers the time limit of 24 monthslapsing in May 2010. This time limit isextended by the transitional provisionuntil October 1, 2010. The transitionalregime means for an applicant that he hasto make a systematic check through allhis pending files which have not yet beenentered into a system monitoring the timelimit under Rule 36 (1) a) EPC. In order to

reduce this effort, such a system shouldbe established as quickly as possible.

The new regime for filing divisional appli-cations and other changes in EP grantproceedings were introduced by the EPOunder the brand “raising the bar”. Theunsuspicious observer would expectunder this heading measures aiming atraising the quality of examination, forexample, by better training and applyingless pressure on examiners in terms oftargets. However, what the users of theEuropean patent system have actuallybeen facing for some years are more andmore procedural restrictions on the appli-cant, as the restriction of the number ofindependent claims introduced in 2002,the increasing use of declarations of no-search or partial search reports in con-nection with the prohibition to claim sub-ject-matter not covered by the searchreport or the restriction to one voluntaryamendment announced in the EPO’sannual report 2008 as a “highlight”.

Substantive examination should give theapplicant a fair chance to obtain the bestresult in grant proceedings in exchangefor his investment in innovation and in thecost of grant proceedings. It requires adialogue between the EPO and the appli-cant. Procedural restrictions frustratingtoo often applicants’ legitimate expecta-tions for formal reasons may deter fromfiling and damage the patent system as awhole. A small but illustrative examplethat procedural measures provoke unwel-come consequences is the raise inclaims’ fees which entailed an apparentlyunforeseen drop in the revenue of claimsfees and consequential budgetary prob-lems.

Reported by Dr. Rudolf Teschemacher


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6. Dusseldorf Appeal Court on the con-sequences of publishing a pressrelease in the US regarding ongoingpatent infringement proceedings inGermany (Decision of October 10, 2008– Case 20 U 189/08 – Presseerklär-ung/Press release)

The publishing of a press release in theEnglish or German language in the USAmay constitute an act of unfair compe-tition in Germany and thus entail a lia-bility to cease and desist.

The parties of the reported case are majorinternationally active producers of litho-graphic printing plates. The respondent,being located in the US, had filed suit inGermany against the applicant for patentinfringement. In May 2008, a few daysbefore the opening of an internationalprinting trade fair, the present defendant(being the plaintiff in the parallel patentinfringement proceedings) published apress release with the following content(excerpts):

“[The respondent’s name] files inGermany suit against [the applicant’sname] for infringement of his patentrights.” “[The respondent’s name], theleading producer and seller of digital off-set print solutions, announced today thefiling of a complaint with the County CourtD. against the printing plate producer [theapplicant’s name] due to infringement ofhis patent rights.”

The press release had been publishedcorrespondingly in German and Englishwith US addresses of origin imprinted onboth versions. Right after the publicationof the press release, a report concerningthe events and showing the content of thepress release was published in a Germaninformation service for this branch ofindustry. On request of the applicant, theDistrict Court Düsseldorf issued a prelim-inary injunction based on section 4 no. 7German Act of Unfair Competition whichthe same Court lifted upon objection bythe defendant and after reconsideration,now denying to have international juris-diction over the case. The applicantappealed the latter judgment successfullybefore the Düsseldorf Court of Appeals.

Notably, under German law, there is near-ly always a considerable risk that a pressrelease about ongoing litigation violates

the German Act on Unfair Competition.Only in very exceptional cases, a justifiedinterest for such broad-scale informationto the market is imaginable. In any event,a press release must be reasonably com-plete and by no means inaccurate withrespect to facts. Opinions must be clear-ly presented as such. In addition, differentcourts in Germany seem to have differingstandards as to the amount of detail withwhich the information/opinion is allowedto be presented.

Remarks:

With the present decision, the DüsseldorfCourt of Appeals confirmed this strictapproach. Notably, and contrary to theDistrict Court, it extended its jurisdictionon acts that occurred in the US having aneffect on the German market. Withrespect to market-related (unfair) compet-itive acts, the “forum delicti” was held tobe the place where the competitive inter-ests of the parties clash with each other.Consequently, the Düsseldorf Court ofAppeals found that a press release pub-lished in English in a foreign country willnot be treated any different than a pressrelease published in the German lan-guage in Germany. Nowadays, theEnglish language, particularly when con-cerning an internationally acting sector ofindustry, is a common platform for distrib-uting information. Thus, it was assumedthat market participants and the mediawould take notice thereof and that com-petition could be influenced thereby tothe detriment of the applicant in the pres-ent case.

In summary, the present judgment is fullyin line with the earlier German case lawand practice. In addition, it extends thisstrict approach to an international level,i.e. to press releases by foreign entities inthe English language having effect on theGerman market. Therefore, a pressrelease about German (patent) litigationusually entails considerable risk and maybe successfully attacked.

Reported by Jörg Wahl


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7. European Court of Justice: Equalityof treatment – Consistency of Officedecisions – Taking into account priorpractice – Decision (Sixth Chamber) ofFebruary 12, 2009 – (Joined Cases C-39/08 and C-43/08 – Bild digital GmbH& Co. KG & ZVS ZeitungsvertriebStuttgart GmbH v. Deutsches Patent-und Markenamt – Volks.Handy,SCHWABENPOST)

Trade mark proprietors everywhere areconfronted with the issue of inconsisten-cies in the practice of trade mark offices:some marks are accepted, while others,of the same applicant, are rejectedalthough the factual situation is the sameand the law has not changed; or marksare rejected even though the same orsimilar marks have previously beenaccepted for other applicants. When agroup of cases falling within these factpatterns reached the German Bundes-patentgericht (Federal Patent Court) onreview from the German Patent and TradeMark Office, that court referred a series ofquestions to the ECJ seeking to clarifywhether (as one would hope) consistencyand equality of treatment were inherentobligations in the examination forabsolute grounds of refusal.

The first case – C-39/08 – involved themarks “Volks.Handy”, Volks.Camcorder”,and “Volks.Credit” (“Volk” meaning “peo-ple”), which had been refused eventhough similarly composed marks of thesame applicant had been accepted earli-er. The second case – C-43/08 – involvedthe mark “SCHWABENPOST” (“Schwab-en” being a region in Germany) which hadbeen refused even though the Germanoffice had previously accepted markscomposed with “Post” for other appli-cants.

In Case C-39/08, the Court referred thefollowing questions to the ECJ:

1. Does Article 3 of Directive 89/104/EECof 21 December 1988 which seeks tosecure equality of opportunity in mattersof competition, require that identical orsimilar applications be treated in thesame way?

2. If the answer is 'yes', is the nationalcourt required to investigate specific indi-cations of unequal treatment which dis-torts competition and, in so doing, to take

account, in its analysis, of earlier deci-sions of the competent authority in similarcases?

3. If the answer is 'yes', is the nationalcourt required to take account of the pro-hibition of discrimination having the effectof distorting competition when interpret-ing and applying Article 3 of Directive89/104 if it has established discriminationof that nature?

4. If Questions 1 to 3 are answered in thenegative, in order to prevent distortion ofcompetition, must it be possible undernational legislation for the nationalauthority to be placed under an obligationto initiate, of its own motion, an action forthe annulment of trade marks which havepreviously been wrongly registered?

The first question in Case C-43/08 was asfollows:

1. Does Article 3 of Directive 89/104/EECof 21 December 1988 require equal treat-ment, with regard to the registration oftrade marks, of applicants in competitionwith one another in order to safeguardequality of opportunity in matters of com-petition?

Questions 2, 3, and 4 where the same asin the earlier case.

Rather surprisingly, the ECJ consideredthe case as an exceedingly simple one,and disposed of it by Order (rather thanby Judgment), without an oral hearingand without an Opinion by the AdvocateGeneral. The Order was published only inGerman (language of the proceeding) andin French, which makes it inaccessible forthose not familiar with these languages.The Court began by repeating the oftenstated principle that decisions involvingregistrability involve the exercise of “cir-cumscribed” powers, where the authori-ties do not have any discretion.

Consequently, earlier decisions of thesame or of other authorities cannot “bind”these authorities in future cases. TheCourt also referred to its earlier decisionsdealing with the effect of earlier decisionstaken in other jurisdictions on similarmarks (they should not be taken intoaccount) and identical marks (they maybe taken into account, but are not bind-ing), and concluded that these principles


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apply also in proceedings before thesame authority. The Court rejected the“equality of treatment” argument by stat-ing that this principle must be brought inharmony with the principle that no personmay rely on legally erroneous earlieradministrative decisions.

The Court’s answer thus was as follows(our translation):

The competent authority of a MemberState having to decide on a trade markapplication is not obliged to disregard thegrounds of refusal listed in Article 3 (1)(b)and (c) [of the Trade Marks Directive of1988] and accept the application becausethe sign the registration of which isrequested is formed in an identical orcomparable manner as a sign the regis-tration of which as a trade mark theauthority has already accepted and thatrelates to identical or similar goods orservices.

The fourth question was not answeredbecause the Court considered it a merelyhypothetical question without relevancefor the pending proceedings.

Remarks:The outcome may not come as a greatsurprise, but is a great disappointment forthose who had hoped that the Courtwould undertake a somewhat more thor-ough analysis of the underlying legalissues, which go to the heart of what iscalled the “legality” of administrativeactivity.

A glimmer of hope remains, however. TheCourt added a phrase in para. 17 of itsOrder, which is likely to be cited often byapplicants (our translation):

“The national authority competent for theregistration must indeed, in the context ofthe examination of such an application,take into account the decisions taken onsimilar applications, to the extent that itdisposes of information in this regard, andplace special attention on the questionwhether a decision must be taken in thesame sense or not, but is nevertheless inno way bound by such decisions.”

For our readers who understand German,we add this paragraph with its originalwording:

“Die für die Eintragung zuständigenationale Behörde muss zwar im Rahmender Prüfung einer solchen Anmeldung,soweit sie in dieser Hinsicht überInformationen verfügt, die zu ähnlichenAnmeldungen ergangenen Entscheid-ungen berücksichtigen und besonderesAugenmerk auf die Frage richten, ob imgleichen Sinne zu entscheiden ist odernicht, doch ist sie keinesfalls an dieseEntscheidungen gebunden.”

It remains to be seen how the nationalauthorities (or OHIM, the European TradeMark Office) will react when this messageis invoked.

Reported byDr. Alexander von Mühlendahl

8. European Court of Justice: Takingunfair advantage of a mark with a re-putation – Relevant public – Use forgoods or services – Decision (FirstChamber) of March 12, 2009 – (Case C-320/07 P – Antartica Srl v. OHIM– The Nasdaq Stock Market, Inc. –NASDAQ/nasdaq)

The Nasdaq Stock Market, proprietor ofthe Community trade mark NASDAQ reg-istered for goods and services in classes9, 16, 35, 36, 38 and 42, brought anopposition against the registration of afigurative mark, reproduced hereafter,

applied for goods in classes 9, 12, 14, 25,and 28. The ground for the oppositionwas that the use of the mark applied forwould take unfair advantage of the repu-tation of the mark NASDAQ, well estab-lished for the services made available bythe opponent. The Opposition Divisionhad dismissed the opposition, but theBoard had accepted it, finding that thereputation and detriment to NASDAQ hadbeen established. The Court of FirstInstance had confirmed that decision(Judgment of May 10, 2007 in CaseT-47/06).


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In its further appeal to the ECJ, Antarticaargued that NASDAQ had failed to show“use” of its mark in the Community,because the services were made avail-able free of charge, and that requirementsfor protection pursuant to Article 8 (5)CTMR had not been shown, because theCFI had based itself on a wrong interpre-tation of the relevant public to be takeninto account. The ECJ dismissed theappeal.

As regards the issue of “use”, the ECJheld that the fact that the services werenot “sold” was not relevant:

29 It is sufficient to note in that respectthat, even if part of the services for whichthe earlier mark is registered are offeredby The Nasdaq Stock Market free ofcharge, that does not of itself mean thatthat commercial company will not seek,by such use of its trade mark, to create ormaintain an outlet for those services inthe Community, as against the services ofother undertakings.

30 As the Court of First Instance held inparagraph 45 of the judgment underappeal, the Nasdaq indices refer to thestock exchange price quotation andfinancial services provided by TheNasdaq Stock Market, covered by theearlier mark and in respect of which it wasregistered.

As regards the relevant public, the Courtheld that the relevant public, for the pur-pose of finding “taking advantage of thereputation”, is the public to which thelater mark is addressed.

The NASDAQ judgment is another exam-ple of the possibility of making use of the“unfair advantage” branch of the protec-tion of marks with a reputation.

It did not necessarily help Antartica that ithad argued, before the Board, that thereason for the adoption of its mark wasthat the mark constituted an abbreviationof “Nuovi Articoli Sportivi Di Alta Qualitá”.


9. European Court of Justice: Sale ofluxury goods via unauthorised chan-nels constitutes breach of quality-related conditions in a license agree-ment prohibiting such sale – Noexhaustion of rights – Decision (FirstChamber) of April 23, 2009 – (Case C-59/08 – Copad SA v. Christian Dior cou-ture SA – Christian Dior)

Dior had concluded (in 2000) a trade marklicence agreement with Société indus-trielle lingerie (SIL) in respect of the man-ufacture and distribution of luxurycorsetry goods bearing the Christian Diortrade mark, which is owned by Dior. Thisagreement included the following clause:“ … in order to maintain the repute andprestige of the trade mark the licenseeagrees not to sell to wholesalers, buyers’collectives, discount stores, mail ordercompanies, door-to-door sales compa-nies or companies selling within privatehouses without prior written agreementfrom the licensor, and must make all nec-essary provision to ensure that that rule iscomplied with by its distributors or retail-ers”. When SIL faced economic difficul-ties, it asked Dior for permission to mar-ket the goods outside the selective distri-bution channels; Dior refused. SIL never-theless sold goods to Cpad, a companyoperating discount stores.

The trade mark infringement suit broughtby Dior against SIL and Copad resulted ina dismissal at first instance. The ParisCour d’appel found in favour of Diorbecause the sales from SIL to Copad hadnot exhausted Dior’s trade mark rights.The sale by SIL did not, however, consti-tute trade mark infringement becausethere was no breach of quality conditionsin the license agreement. Both partiesappealed.

The Cour de cassation (the FrenchSupreme Court) referred the followingquestions to the ECJ:

1. Must Article 8(2) of [the Directive] beinterpreted as meaning that the proprietorof a trade mark can invoke the rights con-ferred by that trade mark against a licens-ee who contravenes a provision in thelicence agreement prohibiting, ongrounds of the trade mark’s prestige, saleto discount stores?


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2. Must Article 7(1) of that directive beinterpreted as meaning that a licenseewho puts goods bearing a trade mark onthe market in the [EEA] in disregard of aprovision of the licence agreement pro-hibiting, on grounds of the trade mark’sprestige, sale to discount stores, does sowithout the consent of the trade markproprietor?

3. If not, can the proprietor invoke such aprovision to oppose further commerciali-sation of the goods, on the basis of Article7(2) of [the Directive]?

The ECJ held as follows:

1. Article 8(2) of First Council Directive89/104/EEC of 21 December 1988 toapproximate the laws of the MemberStates relating to trade marks, as amend-ed by the Agreement on the EuropeanEconomic Area of 2 May 1992, is to beinterpreted as meaning that the proprietorof a trade mark can invoke the rights con-ferred by that trade mark against a licenseewho contravenes a provision in a licenceagreement prohibiting, on grounds of thetrade mark’s prestige, sales to discountstores of goods such as the ones at issuein the main proceedings, provided it hasbeen established that that contravention,by reason of the situation prevailing in thecase in the main proceedings, damagesthe allure and prestigious image whichbestows on those goods an aura of luxury.

2. Article 7(1) of Directive 89/104, asamended by the Agreement on theEuropean Economic Area, is to be inter-preted as meaning that a licensee whoputs goods bearing a trade mark on themarket in disregard of a provision in alicence agreement does so without theconsent of the proprietor of the trademark where it is established that the pro-vision in question is included in those list-ed in Article 8(2) of that Directive.

3. Where a licensee puts luxury goods onthe market in contravention of a provisionin a licence agreement but must never-theless be considered to have done sowith the consent of the proprietor of thetrade mark, the proprietor of the trademark can rely on such a provision tooppose a resale of those goods on thebasis of Article 7(2) of Directive 89/104, asamended by the Agreement on theEuropean Economic Area, only if it can be

established that, taking into account theparticular circumstances of the case,such resale damages the reputation of thetrade mark.

The ECJ judgment must come as a relieffor all brand owners utilising selective dis-tribution, particularly those in the luxurybrand category:

The sale by licensees in contravention ofthe limited distribution clause constitutestrade mark infringement provided it isestablished that such sales can damagethe reputation (“allure and prestigiousimage”) of the mark,

The unauthorised distributor – in our caseCopad, the discount store – commitstrade mark infringement and cannot relyon exhaustion where such resale dam-ages the reputation of the mark.



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10. European Court of Justice: Likeli-hood of confusion – Simialrity of goods– Distortion of facts – Decision (FifthChamber) of May 7, 2009 – (Case C-398/07 P – Waterford Wedgwood plc v.OHIOM – Assembled Investments(Proprietary) Ltd – WATERFORD/WATERFORD STELLENBOSCH)

Waterford Wedgwood, based on itsfamous WATERFORD mark, protectedand used inter alia for crystal glass ware,among which wine glasses, had opposedthe following mark, which sought protec-tion for wine:

Waterford having based the oppositionboth on likelihood of confusion, essential-ly because of the complementarity ofwine and wine glasses, and on reputation,had been unsuccessful before OHIM’sOpposition Division, but succeeded withthe likelihood of confusion argumentbefore the Board. The Court of FirstInstance had annulled that decision, find-ing an absence of similarity of the goods(Judgment of June 12, 2007 in Case T-105/05).

In its further appeal to the ECJ, Waterford(represented by our firm) had argued thatthe CFI had failed to apply the properlegal criteria for determining similaritybetween goods, and had arrived at itsconclusions about the perception of thepublic without any evidence to supportthese findings. The ECJ dismissed theappeal.

As regards the legal criteria, the ECJ didnot enter into the arguments presented byWaterford, namely that a finding of simi-larity of goods must be made by askingthe question whether the relevant public,assuming the marks were identical andthe earlier mark was very well known,would assume an origin of the goods fromthe same or economically related under-takings. The ECJ merely concluded thatthe CFI had properly applied the so-calledCanon criteria:

35 It must be noted that the Court of FirstInstance, in paragraphs 30 to 35 of thejudgment under appeal, carried out adetailed assessment of the similarity ofthe goods in question on the basis of thefactors mentioned in paragraph 23 of thejudgment in Canon. However, it cannot bealleged that the Court of First Instance didnot take into account the distinctivenessof the earlier trade mark when carryingout that assessment, since the strongreputation of that trade mark relied on byWaterford Wedgwood can only offset alow degree of similarity of goods for thepurpose of assessing the likelihood ofconfusion, and cannot make up for thetotal absence of similarity. Since the Courtof First Instance found, in paragraph 35 ofthe judgment under appeal, that thegoods in question were not similar, one ofthe conditions necessary in order toestablish a likelihood of confusion waslacking (see, to that effect, Canon, para-graph 22) and therefore, the Court of FirstInstance was right to hold that there wasno such likelihood.

Remarks:

Unfortunately, the Court has missed anopportunity to clarify the legal standardapplicable to a finding of similarity ofgoods or services.

As regards the claim of “distortion”,based on the absence of any element ofproof regarding the perception of thepublic, the Court confirmed the CFI’s con-clusions by employing the traditional dis-tinction between findings of fact andpoints of law.

It seems that the ECJ missed the centralpoint of the appeal: When the CFI annulsa Board decision which was based on afactual assessment of customer percep-tion, it would seem obvious that the CFIcannot simply substitute its own percep-tion of what customers may think or per-ceive without indicating the factual basisfor such a finding.



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11. German Federal Supreme Court:Frankfurt Stock exchange losesagainst Commerzbank when assertingclaims related to “DAX” (Decision ofApril 30, 2009 – Case I ZR 42/07 – DAX)

The claimant, Commerzbank, is aGerman bank that, inter alia, trades inwarrants. The defendant, Deutsche BörseAG, operates the Frankfurt Stock Ex-change and provides – under private law– services in respect of commercialexploitation of indexes and rates.Furthermore, the defendant is the ownerof the German word marks “DAX” and“DivDAX”, both registered, inter alia, for“quotation of stock exchange prices;determination, including computation, ofa share index” in class 36.

In 2001 the defendant and the claimantconcluded a licence agreement concer-ning the use the word mark “DAX” inrespect of emitting warrants. After theclaimant terminated the licence agree-ment in 2006, disputes arouse betweenthe parties about whether the claimantwas entitled to use the trademarks “DAX”and “DivDAX”. Whereas the claimant inthe litigation proceedings requested toassess that it was entitled to freely usethe defendant’s trademarks, the defen-dant filed a counterclaim, basically askingfor injunctive relief concerning use of thetrademarks “DAX” and “DivDAX” andasking for payment of licence fees in theamount of over one million Euros for useof the trademark “DAX”. The FrankfurtDistrict Court rejected the complaint andadmitted the defendant’s counterclaim.The claimant’s appeal to the FrankfurtAppeal Court was successful concerninguse of the trademark “DAX”, but not con-cerning use of the trademark “DivDAX”.

The Federal Supreme Court confirmedthe Appeal Court’s decision in re-spect ofthe trademark ”DAX” and ruled that theclaimant was entitled to use “DAX” inrespect of the aforementioned services.

The Court held that using “DAX” as a refe-rence was not an act of taking unfair ad-vantage of the trademark DAX’s reputati-on and, therefore, does not violateSection 4 No. 9 lit b Act against UnfairCompetition. The Court based its decisi-on on the fact that the reputation of theDAX trademark is attributed to considera-tions in respect of the most important

companies as listed on the German stockexchange, their performance and theconditions of the specific warrants as wellas the emitting bank’s soundness – butnot on the services provided by thedefendant in this respect, i.e. using amathematical term.

In respect of the defendant’s alleged vio-lation of its trademark rights in the desi-gnation “DAX”, the Court held that theway the claimant used the trademark wasdescriptive and therefore authorized bySection 23 No. 2 German Trademark Act.According to Section 23 No. 2 GermanTrademark Act, third parties may use atrademark to explain the nature of theirservices, unless such use is not immoral.The Supreme Court held that use of thetrademark was not immoral, because the“DAX” represents the most importantstocks on the German financial marketand that the specific way the claimantused the trademark (“[…] referring to theDAX”) was adequate.

Consequently, the Court rejected thedefendant’s counterclaim for injunctiverelief in respect of the designation “DAX”.Whether or not the Court upheld theFrankfurt Appeal Court’s decision concer-ning payment of the licence fee andinjunctive relief, disclosure and compen-sation in respect of the plaintiff’s use ofthe defendant’s other trademark“DivDAX” remains unclear at this point,the decision not having been publishedup to the date of publication of thisnewsletter.

Reported by Philipe Kutschke


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12. Hamburg Appeal Court determinesconditions and extent of eBay’s obliga-tion to monitor and prevent future IPrights infringements, deciding thateBay is liable to right owners as adirect infringer (Decision of July 24,2008 – Case 3 U 216/06 – Trip Trap)

The Hamburg Appeal Court decidedthat eBay is liable for offers placed byits users violating the trademark anddesign for the “Trip Trap”/ “Stokke”chairs for children. In line with a seriesof decisions of the German FederalSupreme Court, the Hamburg AppealCourt decided that rights owners canseek injunctive relief and eBay isobliged to monitor the content and pre-vent future infringements, provided thatit has been given notice of violations.

Once such notice is given, eBay has tomonitor its website. The extent of theseobligations to monitor and prevent infrin-gements depends on the “reasonableduty of care”. The Hamburg Appeal Courtsets out stricter requirements than theFederal Supreme Court, as it determinedwhat “reasonable” measures are conside-red to be and decided that eBay is liableas a direct infringer if it fails to complywith these requirements.

After a series of decisions of the FederalSupreme Court regarding the liability ofonline auctioneers (see IP reports 2007/II,2008/II, 2008/III), the Hamburg AppealCourt has specified which efforts have tobe taken by eBay to comply with its “rea-sonable monitoring obligation”.

eBay’s argument is (and always has been)that it cannot be obliged to provide ageneral monitoring system. If eBay had tomonitor each and every auction placed byusers, in particular if eBay was obliged toprovide manually operated controls befo-re the auction is placed, these measurescould no longer be considered reasona-ble and could attack the business modelof eBay as such. The Hamburg AppealCourt did not follow these arguments. Inparticular the Court refused the argumentthat the business model would be in jeo-pardy and that manually operated moni-toring would be unreasonable.

The Court’s finding is based on the consi-deration that eBay is not generally obliged

to prevent infringements, but that themonitoring obligations consist of threesteps: (i.) eBay does only have to preventinfringements after a respective notice ofthe rights owner, (ii.) eBay can use filtersystems, in the case at hand searching forthe word “Trip Trap”, to limit those offersthat have to be monitored and (iii.) theresults of an automatic filter system canthen be examined manually in order tofind out if the offer is actually infringing athird party’s right. Accordingly, the burdenof proof shifts to eBay since eBay had notspecified why it would be unreasonable toexamine only offers resulting from anautomatic, system-based search.

One of the interesting parts of the decisi-on is that, in the future, eBay can not fol-low its current policy not to provide anyinformation of its measures in place, butwill have to disclose which efforts it canand will make – and which not.

The Hamburg Appeal Court also dismiss-ed eBay’s argument that rights holdersshould monitor the website themselves,by way of the VeRO programme providedto them by eBay. On the contrary: the factthat eBay seems to dispose of an effecti-ve system to prevent infringements givesevidence that there are reasonable andtechnically possible means at hand, i.e.that can and have to be taken – by eBay.

Another aspect of the decision of theHamburg Appeal Court is of outstandingimportance: It held that eBay is liable as adirect infringer, irrespective of the questi-on if the users act unlawfully. TheHamburg Appeal Court held that eBay’sliability is not based on the German con-cept of “Störerhaftung” (see IP Reports2007/II, 2008/II, 2008/III) in the sense of acontributory liability, but as a direct orjointly acting infringer. eBay is obliged tomonitor its website and prevent IP infrin-gements. If it fails to comply with theseobligations, it is directly liable for the inf-ringments caused by its users. In thisregard, the Hamburg Court of Appealstends to follow recent developments inthe case law of the Federal SupremeCourt where that Court has (carefully)indicated that it might give up the con-cept of “Störerhaftung”, basing eBay’sliability on the violation of its obligation tomonitorand prevent infringements.


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Remarks:

eBay has appealed against this decisionto the Federal Supreme Court whosedecision is being awaited with greatinterest. This upcoming decision of theFederal Supreme Court will be anothermilestone in the number of decisionsacross Europe dealing with eBay’s liabili-ty. As shown by the decision of theHamburg Appeal Court, the German caselaw is much in favour of the rights owners,and imposing on eBay said strict andspecific monitoring obligations can beconsidered as settled case law.

The situation in other European countriesis, however, not the same.

On May 13, 2009, the Tribunal de GrandeInstance of Paris decided in favour ofeBay, holding that eBay was not liable forthe infringement of L’Oréal’s rights anddid meet its obligation to prevent infringe-ments. This decision is not yet final, asthe parties will start mediation in order tofind a settlement.

The High Court of England and Walesdecided on May 22, 2009 that eBay beunder no legal duty to prevent infringe-ments and facilitation of infringement withknowledge thereof, and that an intentionto earn profit is not enough to establisheBay’s liability as joint tortfeasor.However, the High Court expressly limitedthis finding to UK common law and poin-ted out that eBay may come under legalduty or obligation to prevent future infrin-gements of third parties as a result of theoperation of Article 11 EnforcementDirective and Article 14 E-CommerceDirective.

In this context, the High Court referencesin detail the findings of German FederalSupreme Court in the various decisionson Internet Auctions. Even if the FederalSupreme Court did not consider thateBay’s liability could be based on Article11 Enforcement Directive, the High Courtmentions that the findings of the Germancourts could fall under the Directive and,as a consequence, eBay could be liableaccording to European Law, as decidedby the German Federal Supreme Court.Furthermore, the High Court expresslystates that it prefers to follow the argu-mentation of L’Oréal, i.e., the case law ofthe German Federal Supreme Court.

However, the High Court considers thatthis argumentation is not acte clair, andtherefore, requires guidance from the ECJ.

As a consequence, the ECJ will have theopportunity to decide which obligationsmay be imposed on eBay in order to pre-vent future infringements, and whichmeasures are to be considered “reasona-ble duty of care”. The importance of thisECJ decision is outstanding as it willmake clear, for the whole EuropeanCommunity, under which circumstancesInternet auctioneers can be liable to rightsholders.

Reported by Pascal Böhner

13. Hamburg Appeal Court on underwhich circumstances use of the prima-ry colour blue constitutes “use as atrademark” (Decision of November 19,2008 – Case 5 U 148/07 – NIVEA-BLAU/NIVEA-Blue)

The Hamburg Appeal Court decided thatthe colour mark “NIVEA-Blue” is of avera-ge distinctive character for the goods“skin and body care preparations”.However, not only the characteristics ofthe market and the use of other coloursby the trademark owner had to be takeninto consideration but also the fact thatthe colour blue, being one of the primarycolours, belonged to the public domain.According to Court, the public does notperceive the use of a blue backgroundcolour similar to the “NIVEA” blue as anindication of origin if the contested skinand body care preparations are labelledby a well-known word mark plus a figura-tive element.


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The claimant, distributor of skin and bodycare preparations under the trademark“NIVEA”, sued the defendant for distribu-ting identical goods under “DOVE”, usingthe colour blue – similar to the “NIVEA”blue – as background colour for their pak-kaging, as shown below:

During the proceedings before theHamburg Appeal Court, the claimantasserted claims allegedly conferred bythe German trademark registration no.305 71 072 – a blue colour mark –, asshown below:

The Hamburg Appeal Court decided the“NIVEA” blue to be distinctive only to anaverage degree, denying under all possi-ble aspects any increased distinctive cha-racter. In this respect, the Court referredto ECJ case law, stating that consumersare not in the habit of making assumpt-ions about the origin of goods based ontheir colour, or the colour of their packa-ging, in the absence of any graphic orword element, because, as a rule, acolour per se is not used as a means ofidentification. In this context, theHamburg Appeal Court took account ofrelevant factors in assessing the distincti-ve character of a trademark which maybe, inter alia, the market share held by atrademark, the degree of its geographicalspread and the time the trademark’s hasbeen in use, the amount invested by theundertaking in promoting the trademarkand the proportion of the relevant groupof persons who identify the correspon-ding goods as originating from a particu-lar undertaking.

The parties submitted a large number ofcompetitive products, showing the varietyof particular shades of blue used by othermanufacturers and even showing theclaimant using different colours for their“NIVEA” products. Subsequently, theCourt held that the blue is very muchtending to be descriptive for skin andbody care preparations and, finally, thatblue is one of the primary colours, belon-ging to the public domain.

Apart from the above, the Court deniedthe average consumer to make anyassumptions about the origin of the con-tested products on the basis of the bluebackground colour of their packaging.According to the Court, the word mark“DOVE” and the figurative element of apigeon placed on the contested packa-ging eliminates any potentially distinctiveunderstanding of the blue backgroundcolour. Consequently, the court deniedany likelihood of confusion due to theargument that the colour blue on the con-tested packaging was not used as atrademark. The court emphasized that“DOVE” was a famous word mark for skinand body care preparations, and thepigeon as a figurative mark was of, atleast, average distinctive character, thesetwo trademarks being visibly placed on ablue background.

Reported by Verena Wintergerst, LL.M.Munich.Düsseldorf.Paris.Alicante.Barcelona

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14. OHIM/Invalitity Division: on wheth-er the priority claim of a registeredCommunity design is valid when theearlier design is represented in colourand the later design in black & white(Decision of March 19, 2009 – Case ICD5163 – Jijun Yu v MFB Diffusion SARL)

On March 19, 2009, the InvalidityDivision of the Office forHarmonization in the Internal Market(OHIM) decided that an earlierCommunity design showing black &white representations of the designcan serve as a valid basis for con-testing a later coloured Communitydesign pursuant to Article 25 (1) lit dCDR even if the anteriority of the ear-lier Community design results from theclaiming of the priority of a Chinesedesign application showing colourrepresentations.

In this schoolbook-like case, the appli-cant based its application for a declarati-on of invalidity of the contestedCommunity design on the grounds that itwas in conflict with another Communitydesign which was registered and publis-hed after the date of registration of thecontested RCD but claimed the priority ofan earlier Chinese design application.Thus, the applicant had to demonstratethat, firstly, the asserted Communitydesign validly claimed priority and,secondly, that it was in conflict with thecontested Community design.

The asserted Community design showedrepresentations of the design in black &white, whereas both the underlyingChinese design application and the con-tested Community design were shown incolour:

Priority claim

Asserted Community design

Contested Community design

Pursuant to Article 25 (1) lit d CDR, theCommunity design serving as a basis forcontesting the other Community designneeded to validly claim the date of priori-ty of the earlier Chinese design applicati-on in order to out-date the contestedCommunity design. Therefore, the Invalid-ity Division had to examine whether theCommunity design claiming priority of theearlier Chinese design application andsaid Chinese design application wererelated to the “same design”, accordingto Article 41 (1) CDR (the OHIM does nolonger examine ex officio whether thepriority of a design has been validlyclaimed).

Whether two designs are “the same”, hasto be judged against the test of noveltystipulated under Article 5 CDR. This doesnot follow from the wording of Article 41(1) CDR but is nonetheless accepted inthe literature and – now – by the InvalidityDivision. Two designs are “the same” ifthey are identical in the sense of Article 5(1) CDR. However, designs shall be dee-med to be identical in that sense (and,therefore, to be “the same”) if their featu-res differ only in immaterial details, pursu-ant to Article 5 (2) CDR.


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When applying said novelty test to thepresent case, the Invalidity Division foundthat the Community design in questionrightfully claimed the priority of theChinese design application, because itdid not contain any additional featurewhich was not already included in the ear-lier Chinese design application. The factthat the Chinese design application inclu-ded colour representations and the priori-ty-claiming Community design only black& white representations was not detri-mental to the validity of the priority claimaccording to the Invalidity Division, sincethe priority-claiming Community designcontained fewer features than the earlierChinese design application.

Having confirmed the validity of the prio-rity claim, the Invalidity Division had todecide whether the contested Communi-ty design was “in conflict” in the sense ofArticle 25 (1) lit d CDR with the assertedCommunity design (as registered, notaccording to the representations of theunderlying Chinese priority design appli-cation). The Invalidity Division held thatsuch a conflict arises where the contestedCommunity design falls within the scopeof protection of the asserted Communitydesign, according to the so-called infrin-gement test as stipulated under Article 10CDR.

In the present case, the Invalidity Divisiontherefore had to decide whether the col-oured design of the contested Com-munity design fell in the scope of protec-tion of the asserted black & whiteCommunity design. Applying the conceptthat a black & white representation defi-nes a scope of protection which includesall colour representations, the contestedCommunity design was found to be inconflict with the asserted Communitydesign and, therefore, was declared invalid.

Reported by Dr. Henning Hartwig

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The “BARDEHLE PAGENBERG IP Report” providesinformation and comments on legal issues and de-velopments of interest in the field of industrial pro-perty. Nothing in this newsletter constitutes legaladvice. Intellectual property laws and systems aremultifaceted and intricate, and regarding any pro-blem or matter, we urge you to obtain professionaladvice before taking any action with respect to anyinformation contained in this newsletter. BARDEHLEPAGENBERG assumes no responsibility for infor-mation contained in this newsletter or on the websi-te www.bardehle.com and disclaims all liability withrespect to such information.

The following is information requested by § 6 of theGerman Law on Teleservices: The European PatentAttorneys of BARDEHLE PAGENBERG aremembers of the European Patent Institute (epi,http://www.patentepi.com/) and as such sub-ject to its Code of Professional Conduct,(http://www.patentepi.com/english/100/120/) andthe Regulation on Discipline issued by the Admini-strative Council of the European Patent Organisa-tion (http://www.patentepi.com/english/100/120/)

Unless otherwise specified, the term "PatentAttorney" on the website www.bardehle.com refersto German Patent Attorneys. BARDEHLE PAGEN-BERG Patent Attorneys are registered at theGerman Patent and Trademark Office and membersof the German Patent Attorneys Association(http://www.patentanwalt.de/). German PatentAttorneys are subject to the professional rules laiddown in the Patentanwaltsordnung (PatanwO)[German Patent Attorney Code], which can be re-viewed in German at http://jurcom5.juris.de, and inthe Berufsordnung der Patentanwälte BOPA [Codeof Conduct for Patent Attorneys] which can bedownloaded as pdf file in German here.

BARDEHLE PAGENBERG German attorneysat law are members of the Bar Association in thedistrict of the Higher Regional Court in Munich(http://www.rechtsanwaltskammer-muenchen.de/),Germany, unless specified otherwise. They are sub-ject to the Bundesrechtsanwaltsordnung (BRAO)[German Attorney at Law Code], the Berufsordnungder Rechtsanwälte (BORA) [Code of Conduct forGerman attorneys at law] and the Rechtsanwalts-vergütungsgesetz (RVG) [Code of Lawyers' Fees].These German rules and laws can be reviewed (inGerman) at http://www.brak.de/ under "Angabengemäß § 6 TDG".

Moreover, the Code of Conduct for Lawyers in theEuropean Community issued by the CCBE (Councilof the Bars and Law Societies of the European Com-munity) http://www.ccbe.org/UK/publications.htm isapplicable to all lawyers of BARDEHLE PAGENBERG.


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