Firm News

BARDEHLE PAGENBERG: Short name and new Corporate Design

Bardehle Pagenberg Dost Altenburg Geissler is shortening its name to BARDEHLE PAGENBERG. “It was our aim to give the firm a short and memorable name”, says Managing Partner Johannes Lang explaining this step, “and the short version of our firm’s name has been used for a long time internally, by our clients and in the media.” Besides shortening the firm name, BARDEHLE PAGENBERG has also changed its appearance by introducing a new corporate design that includes a catchy composite mark at the centre of a new design concept.

The new logo and design were introduced to the IP community at a reception which the firm gave on October 5, in Paris on occasion of the AIPPI Conference 2010.

You can view most elements of the new design on our new website at www.bardehle.com and in this newly branded issue of our IP Report.

Patent Law

1. German Federal Supreme Court on extension of claimed subject matter beyond the content as originally filed (Decision of July 8, 2010 – Case Xa ZR 124/07 – Fälschungssicheres Dokument/Non-replicable document)

Reported by Dr. Niels Malkomes

With respect to the question whether undue broadening is given, only such content belongs to the disclosure of a patent application which can be “unambiguously and directly” taken from the originally filed application; however, any extensive perception at which the person skilled in the art may arrive on the basis of common knowledge or by modification of the disclosed teaching does not belong to the disclosure of the patent application (cf. decision of the Federal Supreme Court “Olanzapin”).

The Federal Supreme Court had to decide in nullity appeal proceedings whether the claimed subject matter of European patent EP 0 455 750 B1 extended beyond the content as originally filed. This patent related to a method of producing a non-replicable document such as a bank note or check which cannot be properly duplicated by any scanning type copying device. This method basically relied on the fact that due to the scanning type of the copying device moiré patterns or omissions appear which become visible by the naked eye upon copying. Claim 1 as granted inter alia contained the features of producing a grid pattern of parallel lines and of overlaying the grid pattern on the original image to produce on the document a printed image which comprises the original image having a superimposed transmitted or obstructed print pattern conforming to the grid pattern. Further, claim 1 required a particularly defined relation between the pitch distance of the parallel grid lines and the scanning pitch distance.

In the application papers as originally filed two methods were distinguished, namely the appropriate arrangement of lines in the image itself, on the one hand, and the overlay of a grid pattern on an original image comprising arbitrarily shaped lines, on the other hand. The first method comprised the determination of the pitch distances – of the original image, not of the grid pattern – but did not comprise the overlaying step. For the second method, the specification referred to the generating of the grid pattern e.g. by scanning with a digital copy machine – without mentioning a particular relation of the pitch distances.

 

The Federal Supreme Court decided that the claimed subject matter was not “directly and unambiguously” disclosed in the original application papers, since the explicit and implicit explanations contained in the application were not sufficient to arrive at the subject matter of claim 1 as granted. The Federal Supreme Court ruled that the person skilled in the art had to draw a conclusion not disclosed in the application for a particular determination of the pitch distance and to combine – in implementation of the perception – individual method steps of different example-embodiments in a new combination. This constituted a generalization as well as a modification of the teaching disclosed in the application.

The present case is a further example of case law determining the borders of disclosure and clarifying the criterion used for such determination, namely whether a “direct and unambiguous” disclosure is given.

2. German Federal Supreme Court on requirements for disclosure of an invention in view of Art. 83 EPC (Decision of July 13, 2010 – Case Xa ZR 126/07 – Klammernahtgerät/Stapler Instrument)

Reported by Stefan Bianchin

An invention is disclosed in a sufficient manner to be carried out by a person skilled in the art when the informa- tion comprised in the patent application conveys to the skilled person so much technical information that in view of his technical knowledge and skills he is able to successfully execute the invention. In this context, it is not required that at least one factually workable embodiment is disclosed as such.

In the decided case, the German part of a European Patent relating to a surgical stapler instrument was attacked in a post-grant nullity procedure. The plaintiff successfully argued before the German Federal Patent Court that the patent-in-suit was invalid, since the patent left it fully open how the claimed self-orientation of the used staples could be achieved, in particular with respect to the described preferred embodiments. Thus, no factually workable embodiment of the invention was disclosed at all and the skilled person was not able to carry out the invention in the sense of Article 83 EPC.

The German Federal Supreme Court did not follow this argumentation and pointed out that, in view of Article 83 EPC, it was not required that at least one embodiment of the invention was disclosed in a workable manner in such detailas a novelty-destroying disclosure. Rather, it was sufficient that, on the basis  of the technical knowledge and skills, the person skilled in the art, was able to fill information gaps of the disclosure, if this does not require an inventive activity in itself. If needed, the skilled person could also perform orientating experiments.

Thus, even if the patent-in-suit does not disclose a workable embodiment, the German Federal Supreme Court comes to the conclusion that a patent may nevertheless provide sufficient technical information that the person skilled in the art is able fill any existing information gaps and to successfully work the invention.

All in all, the present decision is fully in line with the prior case law of the German Federal Supreme Court (BGHZ 112, 297 – “Polyesterfäden”) and of the Boards of Appeal of the European Patent Office which ruled that in order to meet the requirements of Article 83 EPC, a European patent application must contain sufficient information to allow a person skilled in the art, using his common general knowledge, to perceive the technical teaching inherent in the claimed invention and to put it into effect accordingly (Decision of the Boards of Appeal dated December 21, 1994 – Case G 2/93; T 14/83 – “Vinylchloridharze” = GRUR Int. 1984, 439).

Remarks

Summing up, certain information gaps of the disclosure can be filled in view of the technical knowledge and skills of the person skilled in the art, if this does not require an inventive activity itself. However, the question whether a person skilled in the art is able to work an invention even when there are certain information gaps is decided case by case, and applicants should not rely on this decision. Therefore, it is strongly advised to take the time to describe at least one workable embodiment in detail when drafting a patent application.

3. European Patent Office: Technical Board of Appeal 3.3.08 decides on automatic genotype determination in the field of bioinformatics – features pertaining to a general manner of analysing data are found to be ignored in assessing inventive step (Decision of June 23, 2010 – Case T 784/06)

Reported by Dr. Stefan V. Steinbrener

Computer-implemented mathematical methods are increasingly applicable in various fields of technology. This is also the case for molecular biology where statistics and computer science make substantial contributions to genomics and genetics under the heading of bioinformatics. As patentability issues in this field have so far rarely come to court and, according to the business distribution scheme of the EPO boards of appeal, are dealt with by boards normally not confronted with computer hardware and software aspects, any decision taken in respect of such matters should attract the attention of interested circles.

In case T 784/06, the interlocutory decision of the Opposition Division maintaining the patent on the basis of an auxiliary request was appealed by both the patent proprietor and the opponent. The claims according to the main request of the patentee related to a method (and a corresponding device) of determining the genotype at a locus within genetic material obtained from a biological sample. In the first method step A, a physical sample material was reacted to produce a first reaction value indicative of the presence of a given allele at a locus. The data represented by the reaction value (for instance at an intensity reading) reflected the allele present at the locus, i.e. which physical sequence of nucleotides was contained in a particular sample. In subsequent steps B to E, the data represented by the reaction value were processed to determine the genotype at the locus in the sample. This involved mathematical steps of establishing a distribution set of probability distributions (step C) and applying the reaction value to each pertinent probability distribution (step D).

The patent proprietor submitted that the core of the invention was in steps C and D and that all the steps of claim 1, including steps B to E, contributed to the technical character of the subject matter claimed. In the opponent's opinion, steps B to E were purely mathematical methods and as such non-technical so that they had to be disregarded in the assessment of inventive step.

The Board considered claim 1 to relate to a mixture of technical and non-technical features in the field of biotechnology. Whereas step A was technical by reacting a material to produce a first reaction value, in steps B to E the following mental activities were performed based on the application of mathematical methods: (i) forming a data set (step B); (ii) establishing a distribution set of probability distributions (step C); (iii) applying the first reaction value to each pertinent probability distribution (step D) and (iv) determining the genotype based on the data obtained from step D (step E).

Referring to decisions T 641/00 and T 154/04, both of Electricity Board 3.5.01, Board 3.3.08 found that the claimed method was an invention within the meaning of Article 52(1) EPC. In the Board's view, it was established case law, recently confirmed by the Enlarged Board of Appeal in its opinion G 3/08 citing T 154/04, that non-technical features, such as mental activities, were not to be ignored in assessing inventive step, insofar as they interacted with the technical aspects of the claim for solving a technical problem and thereby contributed to the technical character of the claimed subjectmatter.

Thus, the Board concluded that for assessing inventive step of the method of claim 1, the first and fundamental question to be answered was whether the mental activities of steps B to E interacted with the technical activity of step A so as to yield a tangible technical result. This question was answered positively by the patent proprietor who saw in the data treatment the key for the determination of the genotype of the biological sample. The opponent answered negatively, as in its view the data treatment steps were too general to provide any technical contribution beyond a trivial one.

The Board then observed that steps B to C of claim 1 were indeed very generally formulated, and the description of the patent specification was not more informative in this respect. It merely repeated the wording of the claims and disclosed an unspecified embodiment wherein the data treatment was carried out by means of computer processing and software especially developed by the inventors. This section did not provide a truly useful example of how to proceed within the framework of the outlined method. In fact, the mathematical reasoning  starting from an actual experimental value determined according to step A and ending with the determination of a precise genotype according to step E was not described in detail, nor was a reasonably complete and sufficient description of the specific software supplied. This deficiency was neither remedied by the mathematical formulae referred to in the description nor by the code lines given in Appendix A.

In the Board's view, the stated deficiencies deprived the skilled reader of the information he/she needed to understand how to proceed from the first reaction value collected in step A through steps B, C and D to the determination on a probabilistic basis of the genotype of step E. Under these circumstances, no interaction could be established between the technical activity of step A with the mental activities of steps B to E leading to a tangible technical result, as required by case law. The features of steps B to E which pertained to a general manner of analysing the data were thus to be ignored in assessing inventive step, which assessment therefore relied on a reasoning focussing only on the technical feature of step A.

Since a method comprising step A was widely known from the prior art on file, the Board found that the claimed subject-matter of all admissible requests did not involve an inventive step and revoked the patent.

Remarks

This appears to be the first decision of an EPO Board of Appeal explicitly dealing with aspects of bioinformatics. Board 3.3.08 expressed its clear intention to apply the established case law on computer-implemented inventions mainly developed by boards in electricity and physics also in the field of molecular biology, not least because it considers this case law to have now been confirmed by the Enlarged Board. Hence, the Board was guided by the principle that nontechnical features, such as the mental activities found in steps B to E, were not to be ignored in assessing inventive step if they interacted with the technical activity of step A for solving a technical problem and thereby contributed to the technical character of the claimed subjectmatter. In the Board's view, such interaction was required by case law to lead to a “tangible technical result”. Since the patent claimed and disclosed steps B to E too generally so that a skilled reader lacked the information how to proceed from step A to step E, no such interaction leading to a “tangible technical result” could be established, with the consequence that the features of steps B to E did not count for inventive step. This finding arrived at by reasoning an absence of interaction from a lack of detailed disclosure is somewhat surprising, in particular since it seems to lose sight of the intended focus on the solution of a technical problem. The decision thus appears to rely heavily on specific deficiencies of the case and does not answer the question of whether such mathematical steps more or less necessarily performed by computer processing might in principle make technical contributions in biotechnology as was, e.g., found in T 1227/05-3.5.01 to be the case in electricity where mathematical steps were applied for simulating the performance of an electrical circuit. Nor do we know for the moment how a “tangible technical result” can reliably be achieved or how specific the disclosure must be to establish the required interaction. While the situation may be clarified by further cases in the future, applicants are again well advised to include as many technical details as possible.

4. Dusseldorf Appeal Court on the objection of invalidity of the patent-in-suit in preliminary injunction proceedings (Decision of April 29, 2010 – Case I-2 U 126/09 – Blasenkatheterset/Urinary Catheter Set)

Reported by Dr. Tilman Müller-Stoy and Jörg Wahl

The present decision gives a general overview on the practice of the Dusseldorf infringement courts as to the objection of invalidity of the patent-in-suit in preliminary injunction proceedings. Unlike in proceedings on the merits, the defendant may assert the invalidity of the patent-in-suit in preliminary injunction proceedings and may thereby trigger a dismissal of the request (and not only a stay of the infringement case).

In the present case, the claimant asserted against the defendant the European patent EP 1 809 345 (hereinafter referred to as “patent-in- suit”). The patent-in-suit concerns a ready-touse urinary catheter set. The defendant offers and distributes urinary catheter sets in Germany since spring 2009 which, according to the claimant, literally infringed the patent-in-suit. The claimant filed for a preliminary injunction which, however, was rejected in first instance. The first instance court argued inter alia that it had doubts about the validity of the patent-insuit in view of a pending opposition against that patent. On the claimant’s appeal, the Dusseldorf Appeal Court confirmed the first instance ruling with the present decision.

In the present decision, the Dusseldorf Appeal Court explained in general its practice as to the objection of invalidity of the patent-in-suit in preliminary injunction proceedings.

According to the Dusseldorf Appeal Court, in order to grant a preliminary injunction the validity of the patent in suit needs to be sufficiently certain. This question must be assessed by the infringement court itself. The latter cannot merely rely on the fact that the patent-in-suit was granted, i.e. that it is in force. However, a defendant will only be heard raising the invalidity objection if the patent-in-suit is actually subject to opposition or invalidity proceedings. Only if the defendant cannot be expected to start opposition or invalidity proceedings due to the short period of time between the moment when the defendant gained knowledge about the request for the preliminary injunction and the scheduled oral hearing, it might be sufficient if it is apparent beyond doubt that the defendant will start opposition or invalidity proceedings against the patent-in-suit.

If one of the above requirements is met, it then falls within the claimant’s burden of proof to convince the court that the raised invalidity objections are unjustified. Consequently, insofar the claimant cannot argue, for example, that the defendant did not submit the opposition briefs and/or citations in the German language. In such a case, it would be rather within the claimant’s burden of proof to provide corresponding German translations. Further, if the question of validity cannot be clarified by the infringement court, because e.g. the technology is complex and therefore cannot be sufficiently assessed in the course of the preliminary injunction proceedings, the court is to dismiss the claimant’s request.

Generally, according to the Dusseldorf Appeal Court, the validity of the patent-in-suit is only sufficiently certain if the patent-in-suit already survived first instance opposition or invalidity proceedings. Thus, a preliminary injunction cannot be granted if opposition proceedings are still pending against the patent-in-suit, or if such proceedings are not yet pending (because the patent was just granted). It is thus generally required that the technically trained opposition divisions or invalidity instances have already rendered a positive first instance decision on the validity of the patent-in-suit. Only in exceptional cases a positive first instance decision is not necessary, such as in case the defendant participated in the patent prosecution proceedings with own objections, or if no opposition or invalidity proceedings were conducted because the patent is generally acknowledged to be valid (which can be mirrored by license agreements with well-known licensees or the like) or if other exceptional circumstances are given showing that the claimant exceptionally cannot be expected to wait with the assertion of his patent rights until a first instance decision was rendered in opposition or invalidity proceedings. If the patent-in-suit was already revoked in the first instance of opposition or invalidity proceedings, generally, a preliminary injunction can no longer be based on such a patent. Only if the respective invalidity decision is evidently wrong and if it is clearly foreseeable that the invalidity decision will be lifted in the next instance, a preliminary injunction may be granted on the basis of such a patent. However, in such case, the patent owner needs to show in addition that he will suffer an exceptional disadvantage if he was hindered to assert his rights out of the (in first instance) revoked patent.

Remarks

With the present decision the Dusseldorf Appeal Court is giving a guideline as to its presently envisaged more restrictive practice on allowing requests for preliminary injunctions in patent cases. A more generous approach in the past apparently made the court feel “uncomfortable”, probably since patents with respect to which preliminary injunctions were allowed were later revoked in parallel validity proceedings. Although the practice of other venues differs in detail, this overview generally is a good starting point for evaluating the chances of success of a potential request for a preliminary injunction in patent cases. It also means that the question of validity of the patent-in-suit is a critical issue which needs to be dealt with and which cannot simply be overcome by pointing to the rather formal presumption of validity of an examined and granted patent.

Trademark Law

5. Court of Justice of the European Union: Relevant date for examination of descriptiveness or distinctiveness is the filing date (Decision of April 24, 2010 – Case C-332/09 P – OHIM v Frosch Touristik GmbH – Flugbörse)

Reported by Dr. Alexander von Mühlendahl, J.D., LL.M.

Frosch Touristik GmbH is proprietor of Community trademark (CTM) “Flugbörse” for goods and services in cl. 16, 39, and 42. The mark has a filing date of 1 April 1996 and a registration date of 26 October 1998. In 2004, a third party, DSR touristik GmbH, applied for a declaration of invalidity, based, inter alia, on descriptiveness and absence of distinctiveness. With the exception of some services in cl. 42 the mark was declared invalid. The Board of Appeal confirmed (Decision of March 22, 2007, R 1084/2004-4), considering that at the time of registration the mark was descriptive and devoid of distinctiveness. Frosch Touristik appealed to the General Court (then still Court of First Instance) and obtained an annulment of the Board’s decision (decision of June 3, 2009,  Case T-189/07). The Court held that the relevant point in time for judging distinctiveness and descriptiveness is the filing date, and not the registration date. OHIM appealed, in view of the practice of the office to judge the absolute grounds in relation to the filing date and the registration date.

The ECJ confirmed the decision of the General Court in a reasoned Order, i.e. without an opinion of the Advocate General and without a Hearing, dismissing OHIM’s appeal as manifestly unfounded. The Order is available only in German (the language of the proceedings) and in French.

The Court considers that an applicant should not be disadvantaged by developments occurring after the filing date. Arguments based on the language of Article 51 (2) CTMR (now Article 52 (2) CTMR), according to which a mark cannot be declared invalid if it acquired distinctiveness after registration, were rejected.

Remarks

The Order of the ECJ in the “Flugbörse” case has remained below the “radar” of the ECJ observers. Its low profile is confirmed by the approach of the ECJ – decision by Order, availability of the Order only in German and French. The decision confirms a controversial approach to absolute grounds by focussing entirely on the filing date. This goes against not only OHIM practice but also the practice of many national trademark offices which consider that a mark in order to be registrable must have been registrable at the time of filing and must have remained registrable until the decision on registration.

It should be expected that a “legislative reversal” of this interpretation will be sought when the CTMR is up for review and revision.

6. Court of Justice of the European Union: Trademark consisting of the single letter “α” not presumed to be non-distinctive (Decision of September 9, 2010 – Case C-265/09 P – OHIM v BORCO-Marken-Import Matthiesen GmbH & Co KG – Letter α)

Reported by Dr. Alexander von Mühlendahl, J.D., LL.M.

An application for registering the letter α for goods in cl. 33 (alcoholic beverages) was rejected by OHIM on grounds of absence of distinctive character, the rejection was confirmed by OHIM’s Board of Appeal, but the General Court (then still “Court of First Instance”) annulled the decision and remanded the case to OHIM (Decision of August 29, 2009 in Case T-23/07). The General Court held that OHIM had failed to carry out a proper examination and instead based its refusal on conjecture and speculation. OHIM appealed to the ECJ but failed: the ECJ dismissed OHIM’s appeal as unfounded.

OHIM essentially argued that it was permissible with regard to single-letter marks to base the examination for distinctiveness on general assumptions, such as they are established by the ECJ with regard to single-colour marks and shape-of-product marks, without the need to make any specific showings regarding the goods or services for which registration is sought. The ECJ referred to its case law and rejected OHIM’s line of argument:

37      “In that regard, it should be pointed out that, even though it is apparent from the case law cited that the Court has recognised that there are certain categories of signs which are less likely prima facie to have distinctive character initially, the Court, nevertheless, has not exempted the trademark authorities from having to carry out an examination of their distinctive character based on the facts. 39      It follows that, particularly as it may prove more difficult to establish distinctiveness for marks consisting of a single letter than for other word marks, OHIM is required to assess whether the sign at issue is capable of distinguishing the different goods and services in the context of an examination, based on the facts, focusing on those goods or services.

OHIM’s argument that examination of trade- marks was always an a priori examination without regard to actual use on the market was similarly rejected by the ECJ:

46      “The very objective of an a priori review would be thwarted if, despite the requirement, recalled in paragraph 39 above, to carry out an examination, based on the facts, of the distinctive character of the mark applied for, it was open to OHIM, without relevant justification, to rely on conjecture or mere doubts.”

Finally, OHIM’s argument that the office did not have a “burden of proof” in the absolute grounds examination, but that the applicant must come forward with specific arguments, was also rejected:

57      “According to Article 74(1) of that regulation, when examining absolute grounds for refusal, OHIM is required to examine, of its own motion, the relevant facts which might lead it to apply such a ground. 58      Contrary to what OHIM claims, that requirement cannot be made relative or reversed, to the detriment of the applicant for a trademark, on the basis of paragraph 50 of the judgment in Case C 238/06 P Develey v OHIM [2007] ECR I 9375. 59      As is apparent from that paragraph, it is only inasmuch as, despite OHIM’s analysis, an applicant claims that a trademark applied for is distinctive, that it is for that applicant to provide specific and substantiated information to show that the trademark applied for has distinctive character (Develey v OHIM, para. 50).”

Remarks

Single-letter trademarks may be rare in daily practice. Nevertheless, the “Letter  α” judgment is a welcome addition to the growing body of ECJ jurisprudence dealing with absolute grounds of refusal. The lesson to be learned by trademark examining offices around Europe is that there is no category of marks, and certainly not the category of single-letter marks, where the office may abstain from a thorough and complete examination and rely on conjecture and speculation. Applicants will certainly invoke this judgment to counter summary objections to or rejections of certain types of trademarks: It is for the trademark office to substantiate the claim of absence of distinctive character by analysing the mark in relation to the specific goods or services for which protection is sought.

7. Court of Justice of the European Union: Shape of goods necessary to obtain a technical result – LEGO brick cancellation confirmed (Decision of September 14, 2010 – Case C-48/09 P – Lego Juris A/S v OHIM – Mega Brands Inc – LEGO)

Reported by Dr. Alexander von Mühlendahl, J.D., LL.M.

Lego Juris was the proprietor of a Community trademark (CTM) consisting of the well-known three-dimensional shape of the Lego block:

The mark had been filed on April 1, 1996 and registered on October 19, 1999, on the basis of distinctiveness acquired through use. Only two days later, on October 21, 1999, Mega Brands, a competitor making similar blocks which are compatible with the Lego blocks, brought an action for cancellation of the Lego CTM on the basis of Article 7 (1)(e)(ii) CTMR, claiming that the shape was necessary to obtain a technical result. By decision of July 30, 2004, OHIM’s cancellation division, having stayed the proceedings in view of the pending Philips/ Remington case (Case C-299/99, decided on June 18, 2002), declared the trademark invalid for “construction toys” in class 28. The result was based to a large extent on (expired) patents disclosing the technical solution performed by the studs. Lego appealed, but OHIM’s Grand Board of Appeal, in a decision of July 10, 2006, confirmed the cancellation. Lego’s appeal to the Court of First Instance (now: General Court) was dismissed (Decision of November 12, 2008, Case T-270/06). Some two years later, the ECJ dismissed Lego’s appeal.

Lego’s challenges were, first, that the General Court had given Article 7 (1)(e)(ii) CTMR an overly broad scope, second, that the Court had applied the wrong criteria in determining whether the elements considered to be technical were “essential”, and, third, that the Court had wrongly assessed the functional character of the elements.

On the interpretation of Article 7 (1)(e)(ii) CTMR, the ECJ, referring to the judgment in Philips/Remington, held as follows: in order to refuse a shape under this provision, it was necessary that all the essential elements of the shape must incorporate a technical solution (para. 48). Non-essential minor additional features (in this case: color) do not change the outcome (para. 52). The shape is excluded from registration even if alternative shapes exist capable of obtaining the same result (para. 53 to 58). The fact that the same technical result can be obtained with shapes having dimensions different from those of the Lego block also does not change the outcome (para. 59 to 61):

59      “To the extent that the appellant also submits, and OHIM does not dispute, that in order to use the same technical solution, its competitors do not need to place on the market toy bricks whose shape and dimensions are in all respects identical to those of the Lego brick, it is sufficient to observe that that fact cannot prevent application of the rules laid down by the European Union’s legislature, interpreted above, under which a sign consisting of the shape of a product that, without the inclusion of significant non functional elements, merely performs a technical function cannot be registered as a trademark. Such a registration would unduly impair the opportunity for competitors to place on the market goods whose shapes incorporate the same technical solution. 60      That applies a fortiori in a case of this kind, where it has been found by the competent authority that the solution incorporated in the shape of goods examined is the technically  preferable solution for the category of goods concerned. If the three-dimensional sign consisting of such a shape were registered as a trademark, it would be difficult for the competitors of the proprietor of that mark to place on the market shapes of goods constituting a real alternative, that is to say, shapes which are not similar and which are nevertheless attractive to the consumer from a functional perspective. 61      In those circumstances, the position of an undertaking which has developed a technical solution cannot be protected – with regard to competitors placing on the market slavish copies of the product shape incorporating exactly the same solution – by conferring a monopoly on that undertaking through registering as a trademark the three-dimensional sign consisting of that shape, but can, where appropriate, be examined in the light of rules on unfair competition. Such an examination is, however, outside the scope of these proceedings.”

On the second issue, identification of the “essential characteristics, the ECJ held that the identification must be carried out on a case-by-case basis, having regard to the individual elements or the sign as a whole (para. 70, 71). Therafter, the technical function must be determined. This was a finding of fact by the General Court which the ECJ would not review (para. 74). The ECJ also dismissed Lego’s argument that the perception of the public should be decisive (para. 75 to 77):

75      “As regards the appellant’s argument that the General Court erred in law in finding that the surveys on the target public’s perception of the shape of the goods at issue were irrelevant, it must be observed that, unlike in the situation covered by Article 3(1)(b) of Directive 89/104 and Article 7(1)(b) of Regulation No 40/94, where the perception of the target public must be taken into account since it is essential in order to determine whether the sign filed for registration as a trademark enables the goods  or services concerned to be recognized as originating from a particular undertaking (see, to that effect, Case C-104/01 Libertel [2003] ECR I 3793, para. 62, and Koninklijke KPN Nederland, para. 34), such an obligation cannot be imposed in the context of para. 1(e) of those articles. 76      The presumed perception of the sign by the average consumer is not a decisive element when applying the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94, but, at most, may be a relevant criterion of assessment for the competent authority when it identifies the essential characteristics of the sign. 77      Consequently, the appellant’s argument that the identification of the essential characteristics of a sign in the context of Article 7(1)(e)(ii) of Regulation No 40/94 must in any event be carried out from the target public’s perspective cannot be upheld.”

On the third issue, examination of functionality. Lego had claimed that this necessarily required technical expertise and a comparison with other solutions. The ECJ dismissed this argument (para. 84, 85):

84      “In examining the functionality of a sign consisting of the shape of goods, once the essential characteristics of the sign have been identified, it is only necessary to assess whether those characteristics perform the technical function of the product concerned. Clearly, that examination must be carried out by analysing the sign filed with a view to its registration as a trademark, and not signs consisting of other shapes of goods. 85      The technical functionality of the characteristics of a shape may be assessed, inter alia, by taking account of the documents relating to previous patents describing the functional elements of the shape concerned. In the present case, the Grand Board of Appeal of OHIM and the General Court have taken such documents into consideration with regard to the Lego brick.”

Remarks

The Advocate General in this case, Mengozzi, had delivered his Opinion on January 26, 2010. In fact, the Opinion was prepared by one of the great figures on the Court, Advocate General Ruiz-Jarabo Colomer, who had died on November 12, 2009, a mere two days after the Hearing.

The Lego block has occupied courts and lawyers and academics around the world for decades, and it is in a way sad to see that one of the world’s proverbial toys falls victim to “technical necessity”: Some 14 years and four months after the application date and 11 years after registration, the Lego CTM finally lost its life.

8. Court of Justice of the European Union: Removal of Community trademarks from the Register following failure to renew – Restitutio in integrum (Decision of September 30, 2010 – Case C-479/09 P – Evets Corp v OHIM – DANELECTRO and QWIK TUNE)

Reported by Dr. Alexander von Mühlendahl, J.D., LL.M.

Evets Corp. was proprietor of two Community trademarks (DANELECTRO and QWIK TUNE) for goods in cl. 9 and 15, filed on April 1, 1996 and registered in 1998. Notices of renewal, provided for in Article 47 (2) CTMR (now, after codification, Article 49 (2) CTMR), were sent to Evets’ professional representative in September 2005. The marks were not renewed. The proprietor of the marks had entrusted the renewal to a specialized renewal agency which somehow missed the timely renewal.

On November 21 and 23, 2006 OHIM issued notifications of cancellation of the two marks, addressed to Evets’ professional representative. On January 26, 2007, Evets’ professional representative requested, pursuant to Article 78 CTMR, restitutio in integrum into the missed period for renewing the two marks. In first instance, the request was rejected because the applicant could not show due care as required under Article 78 CTMR. On appeal, the application was rejected because the applicant had not observed the time limit of two months within which a request must be filed after knowledge of the missed time limit is obtained. The appeals to the General Court were dismissed by judgment of September 23, 2009 (Joined Cases T-20 & 21/08). The General Court confirmed OHIM’s interpretation that the two months must be calculated from the date when the representative obtains knowledge, not from the date when the trademark proprietor is informed. Evets’ further appeal to the Court of Justice was dismissed as unfounded.

The Court confirmed the interpretation of the rules governing professional representation. Since OHIM must communicate with the representative and not the represented party, what counts in determining the two months is the knowledge of the representative. The representative’s claim that, since the renewal had been entrusted to a separate agency, the knowledge of that agency was decisive was rejected. The Court also pointed out that the renewal agency was not even entitled to receive communications from OHIM unless it is appointed as a representative. As to the claim made by Evets that the decision of OHIM was, without justification, different from the practice of the European Patent Office’s Boards of Appeal, the Court confirms the holding of the General Court that the CTM system is an autonomous system applying independently of other systems. The General Court had added that the case law relied on by Evets dealt with a different issue, namely the question of whose knowledge is relevant when a communication is received in a professional representative’s office.

Remarks

The Evets judgment makes apparent a dilemma faced by trademark proprietors when they entrust their renewals to independent renewal agencies. Where mistakes are made by that agency, in order to obtain restitutio it must be proved that the agency’s mistake was made in spite of the exercise of due care on the part of that agency.

Neither the proprietor nor the representative can invoke that they selected a reputable renewal agency and thus acted with due care (Judgment of the General Court of 13 May 2009, Case T- 136/08 – Aurelia Finance SA). The judgment, which reflects the current state of the case law, is out of line with restitution principles applicable generally, where the duty of care must be observed by the party responsible vis-à-vis the office, i.e. either the proprietor or the professional representative. The outcome would not be different because it would then be the duty of the proprietor or the representative to assure themselves that the renewal was actually carried out as instructed.

Where the non-renewal is due to oversight on the part of the proprietor, he will have difficulties in establishing that he acted with due care; the case law of OHIM, confirmed by the General Court and the ECJ on various occasions, is very strict. The same applies when the oversight is due to some action or inaction on the part of the representative. The degree of attention paid by a representative to the renewal when the proprietor has given that task to a specialised firm is not likely to be very high. The present case is a good example where the restitutio action was filed more than two months after having learned of the removal of the marks from the register. Thus, even if in the Evets case the two months for requesting restitution had been observed by the representative, it is unlikely that the required proof of due care (by the renewal agency or by the representative) could have been delivered.

Representatives seeking to protect themselves from events of the kind having occurred in the Evets case may have to consider either to be responsible for the renewal themselves, or to “opt out” of representation for the purposes of renewal, thus putting the burden on the proprietor (who is unlikely to be appreciative of such an approach). The option of appointing a renewal agency as representative, limited for renewal purposes, is available only if these agencies or those operating them qualify for the appointment as professional representatives, which requires certain qualifications and an establishment in the European Union.

9. German Federal Patent Court holds representation of a green apple distinctive for goods and services of a dentist (Decision of September 9, 2010 – Case 30 W [pat] 106/09) – Grüner Apfel/Green Apple)

Reported by Anna Sophie Steinmeister, LL.M.

The German Federal Patent Court has set aside a recent decision of the German Patent and Trademark Office (GPTO) in which the latter had found the representation of a green apple registered as a figurative trademark for, inter alia, “medical services and health and beauty care for human beings” devoid of distinctive character.

A dental office had registered the below image of a green apple as a German trademark for medical goods and services, especially those of a dentist in classes 10, 16, 35, 40, 41, 42 and 44 of the Nice Classification.

Following the applicant’s request for invalida- tion, the GPTO found that the mark was descriptive and lacked distinctiveness as to “medical services, especially services of a dentist, as well as health and beauty care for human beings” (Class 44), since the public would perceive the image of a green apple as a mere symbol for healthy teeth. Interestingly, the GPTO mainly based its findings on the fact that a green apple had been used in the famous Blend-a-med advertisement showing people biting a green apple after having used Blend-a-med toothpaste.

Upon appeal of both the registered mark’s owner and the applicant of the invalidation action, the Federal Patent Court annulled the decision of the GPTO concluding that the mark was sufficiently distinctive in relation to all designated goods and services for which it was registered. The Court found that a figurative mark consisting of a picture showing goods in their true colours lacks distinctiveness if the goods in the picture correspond in form and colour to the customary design of products in the area in which the mark is used. The Court further relied on the fundamental assumption that the threshold for distinctiveness is not high.

Taking the above into account, the Court came to the conclusion that the mark-at-issue was not a customary design that is typically used in relation to the claimed goods and services, but a stylised depiction of a green apple with individual identifying characteristics, lending the trademark as a whole a meaning which adequately indicates its origin.

As regards the above-mentioned Blend-a-med advertisement, the Court admitted that the green apple had been used in order to show that the underlying goods and services would help the consumers to keep their teeth healthy. This assumption, however, would not support the conclusion that the mark applied for would lack any capability to serve as an indication of origin for the services in question. According to the Court, both the GPTO and the applicant of the invalidation request failed to submit sufficient evidence showing that the image of a green apple had become a general symbol for healthy teeth and dental services in the mind of the consumers. Rather, the public would not come to such a conclusion without any further analysis.

 

Remarks

The present decision confirms a fundamental principle which has been acknowledged by German and European Courts over the last years: The mere fact that the mark conveys an objective message does not necessarily mean that it lacks distinctiveness. The picture of a product must only be rejected or cancelled on absolute grounds if it clearly, i.e., without further analysis, describes the characteristics of the covered goods or services.

10. Hamburg Appeal Court: “eiPott” confusingly similar with “iPod” (Decision of August 9, 2010 – 5 W 84/10 – eiPott/iPod)

Reported by Anna Sophie Steinmeister, LL.M.

The Hamburg Appeal Court found that use of the sign “eiPott” was in breach of Article 9 (1) lit b and c CTMR. The phonetic similarity between “eiPott” and “iPOD” was held to be sufficient for finding likelihood of confusion.

German houseware manufacturer Koziol offered the plastic egg cup illustrated below, identified by the name “eiPott”, meaning “egg pot” in English and being pronounced “Ipott” in German.

Apple is the holder of several Community trademarks for “iPod” registered inter alia for musical apparatuses and also for household and kitchen utensils and containers. Apple considered the use of Koziol’s “eiPott” as an infringement of its trademark rights and filed a request for an interim injunction.

Following Apple’s request, the Court proceeded from the assumption that, in order to establish likelihood of confusion, it is sufficient if the signs in question are visually, phonetically or conceptually similar. At the same time, the Court admits that conceptual differences in certain circumstances may counteract the visual and aural similarities between two signs (so-called “counteraction theory”). For there to be such a “counteraction”, however, at least one of the signs must have a clear and specific meaning so that the public be capable of grasping it immediately. In the present case, the sign “eiPott” had no clear meaning, according to the Court. Therefore, the “counteraction theory” was not applicable. Instead, in light of identity of goods and given that Apple’s mark enjoyed at least an average degree of distinctiveness in relation to household goods, phonetic identity of the conflicting signs was sufficient to establish likelihood of confusion (Article 9 [1] lit b CTMR).

Moreover, the Court found that the contested trademark “eiPott” was likely to take unfair advantage of the distinctive character of the earlier trademark “iPod” enjoying a reputation in the EU in relation to digital music players (Article 9 [1] lit c CTMR). Referring to the decision of the Federal Supreme Court Lila-Postkarte (“Violet Postcard”), the Court admitted that a trademark infringement can be excluded by taking into account the user’s right to the freedom of art as protected by Article 5 (3) German Constitution, but came to the conclusion that the wordplay of “eiPott”, being a “funny idea”, did not reach far enough to be covered by the freedom of art.

Remarks

The decision is particularly interesting since the Court, when assessing the question of likelihood of confusion, applied the European “counteraction theory” whereas the German Federal Patent Court in its decision Xxero/Zero (Decision of April 21, 2009 – Case 24 W [pat] 37/08) found that the European “counteraction theory” does not apply to national trademarks (see BARDEHLE PAGENBERG IP Report 2010/I). On the other hand, the decision is in line with most recent case law from the Federal Supreme Court, ruling that even in case of phonetic or visual similarity of signs a likelihood of confusion can be denied due to the signs’ lack of conceptual similarity (Decision of July 29, 2009 – Case I ZR 102/07 – AIDA/AIDU).

The decision is also significant in that it establishes some general rules as to the question whether trademark infringement can be excluded by taking into account the user’s right to the freedom of art. In this respect, the use of a trademark in a witty and humorous manner will not exclude trademark infringement as long as the mark is used for the main purpose of exploiting its distinctiveness.

Published on
November 2010
Author
Niels Malkomes
German and European Patent Attorney, Partner
Stefan V. Steinbrener
Senior Consultant
Tilman Müller-Stoy
Attorney-at-Law, Certified IP lawyer, Commercial Mediator (MuCDR), Partner
Stefan Bianchin
Jörg Wahl
Anna Sophie Steinmeister, LL.M.