"The BARDEHLE PAGENBERG IP Report" provides brief information about the firm´s news and activities, latest European and German IP case law as well as the latest developments in IP law.
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Firm News
Jochen Pagenberg voted for the second time Germany’s leading lawyer for patent and trademark legal expertise in “The International Who’s Who of Business Lawyers 2008”
Patent Law
1. German Federal Supreme Court on validly claiming the priority for claim with a limiting feature which was not disclosed in the priority documents (Decision of January 30, 2008 Case X ZR 107/04 – “Betonstraßenfertiger”/”Machine for producing concrete roads”)
2. European Patent Office: Amendments in opposition proceedings and objections to lack of clarity (Technical Board of Appeal 3.2.03, decision of February 21, 2008 – Case T 1459/05, not foreseen for publication)
3. Düsseldorf Appeal Court: In a pharmaceutical case, the Court granted a preliminary injunction against the offer and sale of drugs containing the active ingredient “Olanzapine” (Decision of May 29, 2008 – Case 2 W 47/07 – “Olanzapine”)
Trademark Law
4. European Court of Justice on comparative advertising and trade-mark infringement (Decision of June 12, 2008 – Case C-533/06 – O2 Holdings Ltd v Hutchison 3G UK Ltd – “O2”)
5. European Court of Justice on likelihood of confusion, complex trademarks, inherent and increased distinctiveness (Decision of July 17, 2008 – Case C-488/06 P – L & D SA v OHIM – Julius Sämann Ltd – “Aire Limpio”)
6. EFTA Court abandons rule of international exhaustion in trademark cases (Decision of July 8, 2008 Joint Cases E-9/07 and E-10/07 – L’Oréal Norge AS & L’Oréal SA v Per Aarskog AS [Case E-9/07], Nille AS [Case E-9/07] and Smart Club AS [Case E-10/07] – “REDKEN”)
7. German Federal Supreme Court: Genuine use of a service mark requires that the consumers or end users will recognise that the mark does not only identify the company, but also specific services (Decision of October 18, 2007 – Case I ZR 162/04 – “AKZENTA”)
8. German Federal Supreme Court on “smell-alikes” (Decision of December 6, 2007 – Case I ZR 184/05 – “Duftvergleich mit Markenparfum”/”comparative lists of perfumes” – and decision of June 6, 2008 – Case I ZR 169/05 – “Imitationswerbung”/“Imitative Advertising”)
9. German Federal Patent Court: The designation “Bio Bär” (“Bio Bear”) for gummy bears serves to designate the kind of goods, i.e., biologically manufactured gummy bears and is devoid of any distinctive character (Decision of April 2, 2008 – Case 28 W [pat] 187/07 – “Bio Bär”/“Bio Bear”)
10. German Federal Supreme Court applies agent’s marks rules on business relationship which goes beyond mere exchange agreements, and clarifies other limits for applying agent’s marks rules (Decision of April 10, 2008 – Case I ZR 164/05 – “audison”)
11. German Federal Supreme Court: Injunctive relief may be claimed against online-auctioneers if vendors offer forgeries on the internet platform (Decision of April 30, 2008 – Case I ZR 73/05 – “Internetversteigerung III”/”online-auctioneering III”)
Design Law
12. Alicante Commercial Court: Joint action against Community trademark and Community design infringement (Decision of Dec. 4, 2007 – Case 152/2007 – L’ORÉAL SA v YESENSY ESPAÑA SL)
Firm News
BARDEHLE PAGENBERG opens office in Barcelona
Patent Law
1. European Patent Office (Technical Board of Appeal 3.4.01): Amendments in opposition proceedings and new grounds for opposition (Decision of October 30, 2007, Case T 913/05)
2. European Patent Office (Technical Board of Appeal 3.3.02): Patentability of dosage regime remains contested among the Technical Boards of Appeal – Enlarged Board of Appeal asked to give authoritative interpretation of the law (Decision of April 22, 2008, Case T 1319/04)
3. Düsseldorf Appeal Court: Implicit non-disclosure obligation by general terms and conditions of a contractual offer according to the legal principle of good faith (Decision of January 25, 2008, Case I-2 U 137/99 – Drahtinjektionseinrichtung/Wire Injection Device)
4. Düsseldorf District Court: Claim for recall and removal of infringing products from distribution channels (Decision of February 12, 2008, Case 4a O 427/06 – WC-Körbchen/WC-baskets)
Trademark Law
5. European Court of Justice on likelihood of confusion (preliminary ruling): The famous Adidas THREE STRIPES prevail over a public interest argument (Decision of April 10, 2008, Case C-102/07 – Adidas v Marca Mode)
6. European Court of Justice: Review of Court of First Instance judgments (Decision of May 8, 2008, Case C-304/06 P – Eurohypo v OHIM; decision of April 17, 2008, Case C-108/07 P – Ferrero v OHIM; decision of February 15, 2008, Case C-243/07 P – Brinkmann v OHIM; decision of February 13, 2008, Case C-212/07 P – Indorata-Servicos e Gestao v OHIM – HAIRTRANSFER)
7. German Federal Supreme Court: Principle of fair hearing guarantees that the parties have the opportunity to comment on the facts and points of law and that the Court considers these comments (Decision of February 21, 2008, Case I ZB 70/07 – Melissengeist/Melissa Spirit)
8. German Federal Supreme Court confirms cancellation of 3D trademark registration for front lid of a car (Decision of May 24, 2007, Case I ZB 37/04 – Fronthaube/Front Lid)
9. German Federal Supreme Court rules on the liability for violation of name rights on eBay’s platform (Decision of April, 10 2008, Case I ZR 227/05 I – Namensklau im Internet/Name Nicking on the Internet)
10. Frankfurt Appeal Court again denies infringement of rights conferred by the Lindt Easter Bunny(Decision of November 8, 2007, Case 6 U 10/03 – Goldhase II/Golden Bunny II)
Copyright Law
11. European Court of Justice on the concept of distribution to the public under the Copyright Directive (Decision of April 17, 2008, Case C-456/06 – Peek & Cloppenburg v Cassina )
Patent Law
1. German Federal Supreme Court allows intermediate generalisation in amendments of a patent application (Case X ZR 226/02 – Sammelhefter II/Stappler II)
2. European Patent Office (Technical Board of Appeal 3.5.01) considers software for simulation of circuit behaviour to be patentable subject matter (Case T 1227/05 – Computer-implemented method for the simulation of circuit behaviour)
3. Düsseldorf Appeal Court broadens responsibility of forwarding agents for the handling of goods, increasing requirements to verify compliance with German patent law (Case I-2 U 51/06 – Störerhaftung des Spediteurs/Liability of an international forwarding agent)
4. London Agreement enters into force on May 1, 2008
Trademark Law
5. European Court of Justice gives ruling in “Parmesan” (Case C-132/05 – European Commission v. Germany)
6. German Federal Supreme Court decides on the relation of Community trademark rights to company name claims (Case I ZR 33/05 – THE HOME STORE)
7. German Federal Supreme Court on acquiescence in parallel import matters (Case I ZR 147/04 – Aspirin II)
8. German Federal Supreme Court holds that the transit of goods, bearing an identical sign, through the territory of a Member State in which the mark enjoys protection does not per se infringe the holder’s rights on the trademark (Cases I ZR 246/02 – DIESEL II and I ZR 66/04 – Durchfuhr von Originalwaren /Transit of Genuine Goods)
Design Law
9. Office for Harmonization in the Internal Market: Invalidity Division declares Community design protecting the design of the “Crocs” clog invalid (Case ICD 0000003010 – Holey Soles Holdings Ltd. v Crocs, Inc.)
Domain Name Law
10. ICANN approves the Czech Arbitration Court as a new UDRP provider
Patent Law
1. German Federal Patent Court revokes Merz Memantine patent (Case 3 Ni 59/05 [EU] – Memantine)
2. German Federal Patent Court revokes one of Pfizer’s Atorvastatin patents (Case 3 Ni 36/05 [EU] – Atorvastatin)
3. Düsseldorf District Court: On the requirement of the “right to sue” of a patent owner in German patent litigation (Case 4a O 235/06 – Medizinisches Modell/Medical Model)
4. European Patent Office: Reintroduction in opposition proceedings of a feature deleted in grant proceedings (Case T 975/03 – Hypericum Perforatum L.)
5. European Patent Office: Late submission of a new ground for opposition – on the principles of examination ex officio and the right to be heard (Case T 798/05 – Eisenaluminidbeschichtung/metal coating)
Trademark Law
6. European Court of Justice – by way of preliminary ruling under Article 234 EC – on the conflict between trade names and trademarks, trademark protection for shapes and the territorial scope of an earlier well-known mark in a Member State
7. European Court of Justice – upon appeal under Article 63 CTMR – on the absence of distinctive character in case of washing tablets and the shape of a bottle as well as on the similarity of marks
8. German Federal Supreme Court decides that the trademark “Kinder”, protected for “chocolate”, does not establish exclusive rights on the designation “Kinder” for these or similar goods (Cases I ZR 257/00 – Kinder I, I ZR 6/05 – Kinder II and I ZR 94/04 – Kinderzeit)
9. German Federal Supreme Court holds that the claim for damages and information resulting from a trademark infringement are temporally not limited by the first act of infringement proven by the claimant (Case I ZR 93/04 – Windsor Estate)
Unfair Competition Law
10. German Federal Supreme Court: On the protection of a recliner chair – aesthetic and technical features – under unfair competition law (Case I ZR 104/04 – Gartenliege/Reclining chair)
11. Frankfurt Appeal Court: An offer of a copy of Cartier’s famous “hanging panther” is in breach of German unfair competition law, even if the original jewelry is no longer on the market (Case 11 U 45/06 – Hängender Panther/Hanging Panther)
Design Law
12. Legal Affairs Committee of European Parliament backs European Commission proposal to end design protection for spare car parts and other machinery components (“must-match”)
Copyright Law
13. German Federal Supreme Court: The author’s right of distribution is infringed if reproduced copies of a copyrighted artistic work are offered in Germany, even if the sale takes place in Italy where the work is not protected (Case I ZR 114/04 – Wagenfeld-Leuchte/Wagenfeld Lamp)
Patent Law
1. German Federal Supreme Court: On the interpretation of the scope of protection of a patent by the infringement court if the patent was limited in parallel nullity proceedings (Case X ZR 72/05 – Ziehmaschinenzugeinheit/Traction unit for a drawing machine)
2. Düsseldorf Appeal Court: On the requirement of “urgency” and the scope of “presumption of validity” in preliminary injunction procedures for patent infringement (Case 2 U 98/06 – Schaltmechanismus/Switch mechanism)
3. European Patent Office: Legal Board of Appeal decides on loss of application as a result of not appointing an authorized representative for entering the regional phase of a PCT application (Case J 01/04 of December 20, 2006)
4. Costs for translations of European patents for validation in the designated States: New government in France starts process for ratifying the London Agreement
Trademark Law
5. German Federal Supreme Court sets standards for confirming infringement of the 3D trademark representing Ferrero’s famous “Rocher” praline (Case I ZR 22/04 – Pralinenform/Praline shape)
6. Hamburg Appeal Court: A domain name comprising a company name and the indication “blog.de”, which is used by a third person without the company’s authorization, infringes the right to a name of said company as set forth in Section 12 Civil Code (Case 3 W 110/07 – blog.de)
Unfair Competition Law
7. German Federal Supreme Court on the protection of handbag design by unfair competition law (Case I ZR 198/04, I ZR 199/04 and I ZR 200/04 – Handtaschen/Handbags)
8. German Federal Supreme Court decides that consumers are entitled to a claim for information from the telephone company when receiving unsolicited SMS advertising (Case I ZR 191/04 – SMS- Werbung/SMS advertising)
Design Law
9. Accession of the European Community to the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs
Copyright Law
10. Germany: Legislators accept Government’s proposed further amendments to the Copyright Act for the Information Society
Patent Law
1. German Federal Supreme Court on standards for indirect patent infringement (Case X ZR 38/06 – Pipettensystem/Pipette system)
2. German Federal Patent Court revokes compound claims due to a lack of novelty – not inventive step – conflicting with EPO case law (Case 3 Ni 21/04 [EU] – Olanzapine
3. European Patent Office: Enlarged Board of Appeal restores legal certainty for divisional applications – established practice confirmed (Case G 1/05 and G 1/06)
4. European Patent Office: Questions referred to the Enlarged Board of Appeal
(Case G2/07 – Non-microbiological process for the production of plants)
Trademark Law
5. European Court of Justice: Determination of the beginning of the “grace period” for the use of a mark in case of an international registration under the Madrid Agreement – reasons for non-use (Case C-246/05 – Häupl v Lidl Stiftung & Co. KG)
6. European Court of Justice: Criteria for determining likelihood of confusion – comparison of the conflicting signs must always include all of their elements (Case C-334/05 P – OHIM v Shaker di L. Laudato C. Sas – Limiñana y Botella SL)
7. Decisions from the Court of First Instance – March 2007 to June 2007
8. Court of First Instance dismisses Budûjovick˘ Budvar’s actions in proceedings against Anheuser-Busch concerning the registration of Community word marks ‘Budweiser’ and ‘bud’ (joint cases T-53/04 to 56/04, T-58/04, T-59/04, joint cases T-60/04 to T-64/04, and joint cases T-57/04 and T-71/04)
9. German Federal Supreme Court on the refusal of the right to be heard within trademark cancellation proceedings (Case I ZB 33/06 – WEST)
10. Nuremberg District Court denies trademark infringement when using an identical trade mark registered for “automobiles and toys” in conjunction with “toy replicas of automobiles” (Case 4 HK O 4480/04 – Adam Opel AG v Autec AG II)
Unfair Competition Law
11. German Federal Supreme Court on compensation of attorney fees and requirements of “minutes judgement” (Case I ZR 276/03 – Abmahnaktion/Warning letter campaign)
Copyright Law
12. German Federal Supreme Court: Referral to the ECJ for a ruling under Article 234 EC regarding Directive 2006/116/EC of December 12, 2006 on the term of protection of copyright (Case I ZR 80/04 – Tonträger aus Drittstaaten/Phonograms from third countries)
Press Law
13. German Federal Supreme Court decides that the publication of a photograph depicting Oliver Kahn with his girlfriend on a private occasion infringes the personality rights of the former “world’s best goalkeeper” (Case VI ZR 164/06 – Oliver Kahn)
Patent Law
1. German Federal Supreme Court: Indirect patent infringement also arises when goods essential to a protected invention are supplied to other countries from Germany, if the goods contribute to the manufacture of an invention intended for Germany (Case X ZR 53/04 – Funkuhr II/Radio Clock II)
2. German Federal Supreme Court further defines the relation
between the embodiments described in the description and the meaning of the claims of a patent (Case X ZR 131/02 – Schussfädentransport/woof yarn transport)
3. European Patent Office: Scope of the exclusion of surgical treatment from patent protection referred to the Enlarged Board of Appeal in case G 1/07 (Case T 992/03)
Trademark Law
4. European Court of Justice on parallel importation of medical products: ECJ decides the second Boehringer case pending since 2004 (Case C-348/04, Boehringer Ingelheim KG et al. v Swingward Ltd. et al.)
5. European Court of Justice re TRIVASTAN/TRAVATAN: ECJ clarifies principles of likelihood of confusion applicable in conflicts between trade marks for pharmaceuticals (Case C-412/05 P, Alcon Inc. v OHIM and Biofarma SA)
6. European Court of Justice: OHIM fails with its appeal against the CFI decision annulling a decision refusing registration of CELLTECH (Case C-273/05 P – OHIM v Celltech R&D Ltd.)
7. European Court of Justice re ARCOL/CAPOL: New facts and evidence may be introduced in appeal proceedings before OHIM’s Boards of Appeal only when the presentation is not “late” (Case C-29/05 P, OHIM v Kaul GmbH)
8. German Federal Supreme Court decides on registrability of tactile marks (Case I ZB 73/05 – Tastmarke/Tactile Mark)
9. German Federal Supreme Court: Further decision on liability of eBay’s online auction house in case of clear trademark infringement (Case I ZR 35/04 – Rolex II)
10. Berlin Appeal Court confirms that a trademark application regularly merely establishes a risk of first infringement (Case 5 W 320/06 – Markenanmeldung/Trademark Application)
Design Law
11. Office for Harmonization in the Internal Market: Board of Appeal provides further guidance on the interpretation of the requirements of protection under the Community Designs Regulation (Case R 196/2006-3 – Daka Research Inc v Ampel 24 Vertriebs-GmbH & Co KG)
Unfair Competition Law
12. German Federal Supreme Court: Further guidance on supplementary protection against unfair competition (Case I ZR 270/03 – Stufenleitern/Step ladders)
13. German Federal Supreme Court rules on the treatment of overhead costs in an accounting for damages in cases of supplementary protection against unfair competition (Case I Z 6/04 – Steckverbindergehäuse/Connector Assembly Casing)
Decisions Patent
1. German Federal Supreme Court rules on infringement by offering after expiration of protection certificate (Case X ZR 76/05 – Simvastatin)
2. Düsseldorf Appeal Court sets new standards on the extent of the obligation to rendering of account for acts of proven patent infringement (Case I-2 U 110/03 – Faltenbalg/Convoluted Gaiter)
3. European Patent Office: Technical Board of Appeal clarifies the scope of patent exemption of diagnostic methods under Article 52 (4) EPC (Case T 0143/04 – Extended subject-matter)
4. European Patent Office: Board of Appeal decides on how to examine applications with non-technical aspects under the EPC (Case T 1242/04)
Decisions Trademark
5. European Court of Justice: National authorities must give reasons for refusing a trademark application for each of the goods or services for which registration is requested (Case C-239/05 – BVBA Management)
6. European Court of Justice: The “concept” of a transparent dust bin for vacuum cleaners is not a “sign” and thus cannot be registered as a trademark (Case C-321/03 – Dyson Ltd.)
7. European Court of Justice: Use of a trademark protected for automobile and toys on toy replicas of automobiles (Case C-48/05 – Adam Opel AG v. Autec AG)
8. European Court of Justice: Injunction is mandatory in cases of trademark infringement (Case C-316/05 – Nokia v. Wärdell)
9. Decisions from the Court of First Instance – December 2006 to February 2007
10. German Federal Supreme Court: Deadline for any means of redress starts from the time of signature of acknowledgment of receipt (Case I ZB 39/05 – Empfangsbekenntnis/Acknowledgment of receipt)
Decisions Domain Name
11. German Federal Supreme Court rules on the admissibility of domain nameapplications on behalf of third parties (Case I ZR 59/04 – grundke.de)
12. Czech Arbitration Court on the transfer of domain names incorporatingthe known trademark “Quelle” (Case CAC 02798 - quelle.eu)
Decisions Design
13. Cologne Appeal Court: A product featuring characteristics which are already known can nevertheless be regarded as distinctive (Case 6 U 115/05 – Longchamp)
Decisions Unfair Competition
14. Munich Appeal Court: Different shops belonging to the same group can take legal action against numerous competitors on the basis of similar activity (Case 6 W 2908/06 – Media-Markt)
Procedural Law
15. European Enforcement Directive close to be implemented in Germany
