With a decision of 05.04.2011, the Hamburg Regional
Court ruled that the trade mark "Migration Factory" had
become a customary designation of goods or services, with the
consequence that it should be declared revoked, Art 51 (1 b)
Community Trade Mark Regulation (CTMR). The decision is set out for
example in GRUR-RR 2011, p. 270 et seq.
The claimant in this case was the owner of the community trade
mark "Migration Factory", registered on 28.01.2003, for
Software goods under Class 9, and in particular for Data processing
services for others under Class 35, Training in the field of data
processing under Class 41 and the Database services, including via
networks, including the Internet; creating, maintenance and
adaptation of software under Class 42.
The defendant in the proceedings used the designations
"Migration Factory" and "PAAS Migration
Factory" to designate services in connection with the
migration of data and the associated software.
The claimant demanded that the defendant cease to use these
designations on the grounds of trade mark infringement. In the
counter-claim the defendant asked for the claimant's community
trade mark "migration factory" to be declared null and
void, or alternatively revoked.
The Hamburg Regional Court held that the term
"migration" is used purely descriptively in the field of
data processing. The general public in that field would understand
it to denote a service that consisted of transferring data. Even
the combination of the term "migration" with the term
"factory" would not lead to a different assessment. The
claimant and owner of the community trade mark "Migration
Factory" had not taken action against third parties who used
its community trade mark for the goods/services referred to in the
registration. The passivity of the claimant had led to the
designation "migration factory" becoming a customary
designation for goods or services in the normal business of the
public in the field in question. In accordance with Art. 51 (1 b)
of the CTMR this caused the community trade mark "Migration
Factory" to be pronounced revoked.
A similar fate is well-known to have been suffered by the trade
mark "Fön" many years ago. "Fön" was
originally a registered trade mark held by the company AEG. Over
the years the word "Föhn" was well-known to have
become a customary designation in German for a hairdryer, a process
against which AEG took insufficient action. The same applies, for
example, to the brand "Explorer", which over the years
also became a customary designation among the general public in the
field in question.
It is therefore advisable for all trade mark owners to keep a
close eye on their trade marks and to take action against
infringers, otherwise they risk their trade mark becoming a
customary designation, and losing its protection as a trade
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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