On April 30, 2008 Germany's Federal Supreme Court
issued a further ruling, contributing to a set of 3-D trademark
decisions related to the requirements of successful enforcement
and, in particular, the mark-in-suit's scope of protection (see
also IP-Report 2007/IV No. 5).
The claimant's product is a range of suitcases that are
being sold in Germany for fifty years in the shape as shown below,
having been registered by way of German 3-D trademarks for
"cases and suitcases (made of aluminium or plastic)" as
exemplarily depicted below:
The defendant was sued for distributing the below
"Beauty-Trolleys" in Germany.
The Cologne District Court granted corresponding claims for
cease-and-desist plus further claims for damages etc. The Cologne
Appeal Court lifted said decision and denied the asserted claims.
The Federal Supreme Court now overruled the Appeal Court's
decision, starting by drawing a clear distinction between IP
protection on the grounds of IP rights conferred by a registered
(or non-registered) 3-D trademark, on the one hand, and, on the
other hand, parallel protection provided by German unfair
competition law ("passing off"). The latter protection,
says the Court, is necessarily linked with the protection of a
concrete product or product range, claiming specific features of
origin ("competitive individuality") which if copied
would cause an avoidable deception as to the origin (Section 4 No.
9 lit a Act against Unfair Competition). Such protection would not
conform with the essence of trademark law.
As regards asserted claims for trademark infringement, the Court
held that the distinctive character of the 3-D mark-in-suit had an
impact on whether consumers perceive the underlying shape as an
indication of origin when being confronted in public with this
shape as the shape of the claimant's underlying product. If
said product had been extensively marketed and sold over fifty
years, this could amount to an increased distinctiveness of the
3-D-mark-in-suit through use – a consequence ignored by
the Cologne Appeal Court.
Turning to asserted claims under German unfair competition law,
the Supreme Court confirmed that for a full product range of cases
and suitcases corresponding protection against misappropriation may
be claimed when showing similarities as to purpose and design. It
is not necessary, said the Court, that competitive individuality
can be claimed for each of the single products, unless the
recurring characteristic features of appearance would cause a clear
distinction, in the perception of the public, between the products
belonging to the product range and products of other competitors
– an aspect also ignored by the Cologne Appeal Court.
Due to the above inconsistencies and deficiencies, the Federal
Supreme Court remanded the case to the Cologne Appeal Court for
review and decision.
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.
The former governing mayor of Berlin, Klaus Wowereit, a member of the German Social Democratic Party, SPD, has suffered a legal defeat in his year-plus battle with the German publishing house Axel Springer.
Securing effective legal protection for patents is a high priority for all businesses who seek the quick but safe entry of their new products into the commercial marketplace.
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