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GERMANYLast updated: December 2012

This material is only intended to provide an introduction to and simplified profile of this jurisdiction's local practice and procedure relevant to trade dress international practice and procedure. This material does not take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of this jurisdiction such as might be provided by a local trademark attorney.

EDITOR: Peter J. Chalk, Ashurst, Melbourne, AustraliaCONTRIBUTOR: Georg A. Jahn, Noerr LLP, Munich, Germany

I. DEFINITION OF TRADE DRESS• The term "trade dress" is not defined or referred to by statute or regulation, or Trademark Office or other

intellectual property rules or guidelines. German statutes do not include a definition of the term "trade dress." In fact, the German Trademark Act, the Design Act, the Patent Act and the Unfair Competition Act do not even mention the term "trade dress" or a German translation thereof. Nevertheless, colloquially, the term has its roots in the old German Trademark Act (see below). Under the present regime of intellectual property laws, there is no need to define the term, as the new Trademark Act of January 1, 1995 broadened the definition of a trademark to any thinkable form of sign (see below). Outside trademark or design protection, the Unfair Competition Act of July 3, 2004 (as amended) applies and, under certain circumstances, grants protection against the imitation of "goods" or "services" in the broadest form of these terms.

• The term "trade dress" is not defined or referred to in case law.• The definition or scope of "trade dress" has evolved/expanded over the years, e.g. from traditional types

of product packaging, to product shape/configuration, to more non-traditional indica of origin as follows:Under the German Trademark Act of January 2, 1968, registration of trademarks was limited to words, pictures, combinations of these and two-dimensional signs. Nevertheless, even then the Act, in Sec. 25, accepted the need to protect "get-ups" (which otherwise could not be registered). These "get-ups" could include any form, logo, shape, color, promotion or combination of any of these, all of which were used for the purpose of distinguishing one's goods and services from those of others. The Act did not, however, grant protection at any price but provided protection on the condition that these "get-ups" had obtained secondary meaning. Given the very broad wording of the new Trademark Act (see Section I.A.), the distinction between registrable trademarks and non-registrable get-ups is no longer necessary and, accordingly, has been omitted.

II. TRADEMARK PROTECTION OF TRADE DRESS: SCOPE OF TRADEMARK RIGHTS

• Trademark rights are created through registration. Sec. 4 No. 1 of the German Trademark Act of January 1, 1995 ("TMA") provides that trademark protection comes into existence by registering a trademark with the German Patent and Trademark Office ("GPTO"). Detailed rules are found in Sec. 32 et seq. of the TMA and in certain regulations governing procedural aspects of trademark applications, including the

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Trademark Regulation and the Regulation of the GPTO. Some of these rules are internal guidelines and are not publicly accessible.

• Trademark rights are created through use, promotion and/or advertising, at common law or civil law. Sec. 4 No. 2 of the TMA provides that trademark protection may also be granted by use, provided that the trademark has acquired secondary meaning among the public addressed by the trademark, e.g., the public at large or certain professional circles. Whether a trademark has acquired secondary meaning depends on many factors, including the percentage of the public knowing the trademark as well as the distinctiveness of the trademark. It is noteworthy that the Community Trade Mark law does not provide for the creation of a trademark by use but does permit an opposition based on a national use of a trademark.

• Trademark rights are created through the following means other than registration, use, promotion and/or advertising: Under Sec. 4 No. 3 of the TMA, foreign trademarks held "notorious" under Article 6bis of the Paris Convention for the Protection of Industrial Property of March 20, 1883 are likewise protected in Germany.

• The term "trademark" is defined or referred to by• statute and/or regulation as follows: Under Sec. 3(1) of the TMA, a trademark may consist of any

sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, acoustic signals, three-dimensional designs, including the form of a product or its packing, as well as other make-ups, including colors or combination of colors, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Making use of the very broad language of "Directive 89/104/EEC of the (European) Council, of 21 December 1988, to approximate the laws of the member states relating to trademarks," forming the basis of the national trademark laws of all member states of the European Union, the TMA includes signs that have not been expressly referred to by the Directive, including three-dimensional designs or colors (cf. Art. 2 - Signs of which a trademark may consist under the Directive).

• The term "trademark" is not defined by case law.• Trademark registration grants the following basic rights:

• the right to the exclusive use of the registered trademark throughout this jurisdiction with the registered goods and/or services;

• the right to prevent the sale, distribution or advertising of goods or services with a confusingly similar trademark by another merchant in this jurisdiction;

• the right to prevent the dilution/depreciation of goodwill in the registered trademark in this jurisdiction.

• Trademark rights established through use, promotion and/or advertising at common law or civil law grant the following basic rights:

• the right to the exclusive use of the unregistered trademark in the geographic region where goodwill or a reputation in the trademark can be shown;

• the right to prevent the sale, distribution or advertising of goods or services with a confusingly similar trademark by another merchant in the same geographic region;

• the right to prevent the dilution/depreciation of goodwill in the unregistered trademark in the same geographical region.

• Trademark rights established through means other than registration or use, promotion and/or advertising at common law or civil law, grant the following basic rights:

• the right to the exclusive use of a trademark in the geographic region where goodwill or a reputation in the trademark can be shown;

• the right to prevent the sale, distribution or advertising of goods or services with a confusingly similar trademark by another merchant in the same geographic region;

• the right to prevent the dilution/depreciation of goodwill in the trademark in the same geographical region. Trademark rights created under Art 6bis of the Paris Convention have the same "standing" under Sec. 4 TMA and, accordingly, grant the same rights.

• The term of protection for a registered trademark is as follows: According to Sec. 47(1) of the TMA, protection of a registered trademark starts with the date of application and expires on the last date of the month ten years after the month during which the application date was assigned by the GPTO. A registered trademark may be indefinitely extended by terms of ten years each (Sec. 47(2) TMA).

• The term of protection for an unregistered trademark is as follows: By its very definition, the term of protection for an unregistered trademark under Sec. 4 No. 2 of the TMA is triggered once its requirements are met and expires if and when the owner of the trademark does not use or no longer sufficiently uses the trademark resulting in the loss of secondary meaning (BGH (Federal Court) GRUR 1961, 347, 352 -Almglocke). However, it is thinkable that a very well known unregistered trademark (for example, the name of a very famous department store which no longer trades but the building in which it was located continues to be known by the name of the store) survives indefinitely. As long as an unregistered trademark keeps its secondary meaning, i.e., serves among the members of the public addressed as an indication of origin for goods and services, it is valid. The mere fact that the owner of the trademark temporarily stops using the trademark for the relevant goods or services or closes down its commerce does not matter as long as it does not affect the secondary meaning. Leading scholars believe that a trademark enjoying secondary meaning all over the country may eventually be reduced to a locally

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restricted secondary meaning, i.e., in the example given perhaps to the community where the store used to be.

III. TRADEMARK PROTECTION OF TRADE DRESS: REGISTRABILITY OF TRADE DRESS

A. Product Label• Product label trade dress is registrable as a trademark.Leading cases (ECJ GRUR 2005,1042 -

THOMSON LIFE) have held that, as a matter of rule, all trademarks accepted by Sec. 3(1) of the TMA are to be treated as equal, that is they are registrable unless any or all of the grounds for refusal or invalidity under Secs. 3(2) and 8 of the TMA exist, e.g., they are devoid of any distinctive character, consist of signs which have become customary in the current language, etc. Nevertheless, the ECJ has pointed out in several cases that the average consumer will hardly regard the form of a product or a product wrapper without word or graphical elements as a reference to the origin of the product (i.e., the main function of a trademark). Accordingly, only a trademark that would considerably deviate from the norm or generally accepted usage in trade would be sufficiently distinctive and thus be regarded as a trademark. Consequently, a product label which is limited to a reproduction of the shape or the form of the product may not meet the requirement of distinctiveness (BGH GRUR 1999, 495 - Etiketten).

• Unique statutory or regulatory requirements that must be met in order to obtain registration of product label trade dress as a trademark are: none.

• Trademark Office rules or guidelines applying to the registration of product label trade dress as a trademark are: none.

• Examples of product label trade dress that is registered as a trademark are: Exquisa - German trademark no. 30411620.

• The leading cases involving trademark registration of product label trade dress are: BGH GRUR 1999, 495 - Etiketten. Most cases dealing with the protection of product label trade dress focus on copyright issues only.

B. Product Wrapper• Product wrapper trade dress is registrable as a trademark. See Sec. 3(1) of the TMA. Accordingly, the

same standards for registration apply as to any "traditional" trademark. Yet, wrappers which reflect only the "usual" will hardly be regarded as referencing the origin of the goods; a customer would generally look for words or pictures in order to identify the origin of the goods. Consequently, in order to qualify for registration, wrapper trade dress must "considerably" deviate from generally accepted practices in trade (ECJ GRUR 2006, 1022 - Wicklerform; BGH GRUR 2007, 235 - Goldhase).

• Unique statutory or regulatory requirements that must be met in order to obtain registration of product wrapper trade dress as a trademark are: none.

• Trademark Office rules or guidelines applying to the registration of product wrapper trade dress as a trademark are: none. See also Section II.

• Examples of product wrapper trade dress that is registered as a trademark are: FERRERO - German 3D trademark no. 39746213; Storck - German 3D trademark no. 30320653; Nestlé Choclait chips - German 3D trademark no. 39531621.

• The leading cases involving trademark registration of product wrapper trade dress are: ECJ GRUR 2006, 1022 - Wicklerform; BGH GRUR 2007, 235 - Goldhase.

See above and Section III.D. (product shape trademarks) for virtually the same reasoning.

C. Product Container• Product container trade dress (e.g. bottles and boxes, etc.) is registrable as a trademark. As a matter of

statute (and, therefore, principle), product container trade dress is registrable as a trademark. Yet, practice which has developed has, in most cases, refused to accept registration, in particular as it relates to bottles as a form of product container trade dress. Under leading cases of the German Patent Court (heavily influenced by the European Court of Justice's policy) distinctiveness and, therefore, registration is accepted only where the form of the bottle conspicuously sets itself apart from "usual" bottles that the relevant public would consider the shape of the bottle in addition to the label's being particular. In virtually all cases, this benchmark has not been reached by the product containers (bottles) submitted as trademarks (BGH GRUR 2008, 339 - Develey; BPatG 1998, 581 - Weisse Kokosflasche).

• Unique statutory or regulatory requirements that must be met in order to obtain registration of product container trade dress as a trademark are: see above.

• Trademark Office rules or guidelines applying to the registration of product container trade dress as a trademark are: none. See Section II.

Exhibit 1

Exhibit 2

Exhibit 3

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• Examples of product container trade dress that is registered as a trademark are: Underberg bottles -German figurative trademark no. 30227336, German 3D trademark (red) no. 302011054580, German 3D trademark (green) no. 302011054581, German 3D trademark (blue) no. 302011054582.

• The leading cases involving trademark registration of product container trade dress are: ECJ GRUR Int. 2008, 135 - Develey (-); ECJ GRUR 2006, 233 - Standbeutel (-); ECJ GRUR Int. 2004, 326 - Nestle bottle (+); BPatG GRUR 1998, 580 - Dimple (+).

D. Product Shape/Configuration • Product shape/configuration trade dress is registrable as a trademark. A product shape/configuration

trade dress is registrable as a trademark provided that the product shape is in line with Secs. 3(2) and 8 of the TMA, i.e., the shape does not result from the nature of the goods themselves, is necessary to obtain a technical result or gives substantial value to the goods and is otherwise distinctive. Under the leading cases of the European Court of Justice, product shape/configuration trade dress is, therefore, registrable if (and only if) the shape deviates "considerably" from the norm or trade practice (ECJ GRUR 2006, 233 -Standbeutel). See Sections III.A. and III.B., which confirm an identical approach to the various types of trade dress.

• Unique statutory or regulatory requirements that must be met in order to obtain registration of product shape/configuration trade dress as a trademark are: none.

• Trademark Office rules or guidelines applying to the registration of product shape/configuration trade dress as a trademark are: none. See Section II.

• Examples of product shape/configuration trade dress that is registered as a trademark are: Dishwasher Tabs (DE30015676) (-); Duplo (DE39911609) (+); Ritter (DE39869969) (+)".

• The leading cases involving trademark registration of product shape/configuration trade dress are: ECJ GRUR Int. 2006, 842 - Form eines Bonbons II (form of a candy); ECJ GRUR Int. 2005, 135 - Winward flashlight; ECJ GRUR 2002, 804 - Philips/Remington; BGH GRUR 2006, 589 - Rasierer mit 3 Scherköpfen; BGH GRUR 2007, 973 - Rado-Uhr III; BPatG GRUR 2007, 786 - LEGO; BGH GRUR 2008, 71 - Fronthaube; BGH GRUR 2006, 679 - Porsche Boxster; ECJ GRUR 2004, 428 - Henkel.

E. Single Color • Single color trade dress is registrable as a trademark.As a matter of law and principle, color marks, color

per se and color combinations are registrable as a trademark. Express reference to this is to be found in Sec. 3(1) of the TMA. The color per se may possess inherent distinctiveness only under “exceptional circumstances,” namely, where the number of goods/services is restricted, and the relevant market is very specific. However, since the ECJ's decision in "Libertel," ECJ GRUR 2003, 604, the registration of a single color will, for all practical purposes, be successful only where the color ("abstract" color) has acquired secondary meaning (see BPatG 2009, 161 - single color yellow for mail services ("Yello"); BPatG GRUR 2008, 428 - red for legal books).

• Unique statutory or regulatory requirements that must be met in order to obtain registration of single color trade dress as a trademark are: none.

• Trademark Office rules or guidelines applying to the registration of single color trade dress as a trademark are: Single color trade dress applications require a color specimen and reference to an internationally accepted color code.

• Examples of single color trade dress that is registered as a trademark are: "red" for legal books/publications (secondary meaning); the color "purple"; the color "yellow." See also Section V.E.

• The leading cases involving trademark registration of single color trade dress are: ECJ 2003, 604 -Libertel; BPatG 2009, 161 - single color yellow for mail services ("Yello"); BPatG GRUR 2008, 428 - red for legal books.

F. Color Combination • Color combination trade dress is registrable as a trademark. Color marks, color per se and color

combinations are registrable as a trademark. Express reference is to be found in Sec. 3(1) of the TMA. In an application for color combinations, the order of the combined colors must be defined in the application by defining the proportion and the distribution order of the colors. An indication of the color codes in a universally accepted color code system (e.g., RAL) is recommended.

• Unique statutory or regulatory requirements that must be met in order to obtain registration of color combination trade dress as a trademark are: Since BGH GRUR 2007, 55 - color trademark yellow/green II, registration requires that the application exactly specify proportions and positions of the colors against each other. Indications as to the approximate percentage (50%/50%) of the two colors are not sufficiently precise to fulfill requirements as to the spatial arrangements of the colors (BPatG 26W (pat) 12/10).

• Trademark Office rules or guidelines applying to the registration of color combination trade dress as a trademark are: none.

Exhibit 4

Exhibit 5

Exhibit 6

Exhibit 7

Exhibit 8

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• Examples of color combination trade dress that is registered as a trademark are: colors green/yellow; colors blue/yellow; colors red/black.

• The leading cases involving trademark registration of color combination trade dress are: ECJ GRUR 2004, 858 - Heidelberger Bauchemie; BGH GRUR 2007, 55 - color trademark yellow/green II; BPatG 26W(pat) 12/10, BeckRS 07/2011 985 - colors blue (Pantone 2747C)/silver (Pantone 877C).

G. Point of Sale Materials • Point of sale materials (e.g. banners, posters, shelf displays) trade dress is registrable as a trademark.

While not expressly mentioned in Sec. 3(1) of the TMA, the wording is explicit in permitting "all signs" suitable to distinguish the products/services of one entitiy as against those of another.

• Unique statutory or regulatory requirements that must be met in order to obtain registration of point of sale materials trade dress as a trademark are: none.

• Trademark Office rules or guidelines applying to the registration of point of sale materials trade dress as a trademark are: none.

• Examples of point of sale materials trade dress that is registered as a trademark are: German figurative trademark no. DE302008045841 - Immo Poster.

• The leading cases involving trademark registration of point of sale materials trade dress are: BPatG 25W (pat) 13/11 - Immo Poster.

H. Exterior Building Design • Exterior building design trade dress is registrable as a trademark. There is no reference in the relevant

trademark sources. However, Sec. 3(1) of the TMA permits not only the registration of two-dimensional pictures but also of three-dimensional forms suitable to refer to the origin of products/services. Accordingly, it is fair to conclude that "Exterior building trade dress" is, in the abstract, registrable. Yet, if one looks into leading cases relevant to other types of trade dress, it seems that more than the "norm" is required. (See Section III.)

• Unique statutory or regulatory requirements that must be met in order to obtain registration of exterior building design trade dress as a trademark are: none.

• Trademark Office rules or guidelines applying to the registration of exterior building design trade dress as a trademark are: none.

• Examples of exterior building design trade dress that is registered as a trademark are: not known.• The leading cases involving trademark registration of exterior building design trade dress are: BGH I ZB

1/04 (BPatG), GRUR 2005, 257, 258 - Bürogebäude; OHIM R 1/2003-4, GRUR 2004, 1033 - Smart Turm (-).

I. Interior Building Design • Interior building design trade dress is registrable as a trademark.There is no reference in the relevant

trademark sources. However, Sec. 3(1) of the TMA permits not only the registration of two-dimensional pictures but also of three-dimensional forms suitable to refer to the origin of products/services. Accordingly, it is fair to conclude that "interior building trade dress" is, in the abstract, registrable. Yet, if one looks into leading cases relevant for other types of trade dress, it seems that more than the "norm" is required. (See Section III.H.)

• Unique statutory or regulatory requirements that must be met in order to obtain registration of interior building design trade dress as a trademark are: none.

• Trademark Office rules or guidelines applying to the registration of interior building design trade dress as a trademark are: none.

• Examples of interior building design trade dress that is registered as a trademark are: not known.• The leading cases involving trademark registration of interior building design trade dress are: none.

J. Other Types • The following other types of trade dress are registrable as trademarks: sound trademark; BGH GRUR

2007, 148 - Tastmarke (touch trademark; generally accepted, not granted in the quoted case); C GRUR Int 2006, 134 - Odeur de fraise mur (smell trademark; generally accepted, not granted in the quoted case); Positionsmarken: BPatG GRUR 1998, 819 - jeans pocket with exclamation mark.

• Unique statutory or regulatory requirements that must be met in order to obtain registration of these other types of trade dress as trademarks are: As to general requirements, the established trademark principles require that a trademark must be capable of being represented graphically and distinguishing the goods or services of one undertaking from those of another.

Regarding "touch and feel" marks: the German Federal Supreme Court decided that such a trademark

Exhibit 9

Exhibit 10

Exhibit 11

Exhibit 12

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must be graphically reproducible/describable. An indication that the mark is an “other/specific” trademark is required.

Regarding three-dimensional trademarks: the graphic representation of the mark must be provided in a form of a picture, drawing, photograph or any other means that clearly represents the mark. An indication that the mark is a three-dimensional mark is required. Marks without such indication are recorded as figurative marks.

Regarding sound marks: a sound trademark application requires, for the purposes of graphic presentation of the sound, a structured musical notation (with clef, musical notes, pauses, beats, etc., of the sound). A simple sequence of musical notes (without any illustration as to the length or the tune) does not suffice since the melody cannot be identified. The verbal description of a sound (such as the roaming of an engine or animal sounds) is not sufficient for the graphical representation. Equally, a sonogram or sound spectrogram seems inappropriate since it is probably not legible for the use of a trademark registry and does not fulfil the requirement of certainty. Furthermore, a sample of the sound claimed must be submitted in WAVE-format (wav) or mp3 format (mp3) on a data carrier. In case that the sample differs from the musical graphical notation the latter is the determining factor.

Regarding smell marks, taste marks: according to strict criteria by the ECJ they are graphically not representable.

• Trademark Office rules or guidelines applying to the registration of these other types of trade dress as trademarks are: see above.

• Examples of these other types of trade dress that are registered as trademarks are: Sound Mark 1 (DE30638392); Sound Mark 2 (DE30159439); Sound Mark 3 (DE39408718); "Touch & feel" mark/Braille (DE30259811).

• The leading cases involving trademark registration of these other types of trade dress are: touch and feel mark: BGH GRUR 2007, 148 - Tastmarke (-); smell mark: C GRUR Int 2006, 134 - Odeur de fraise mur (-); position mark: BPatG GRUR 1998, 819 - jeans pocket with exclamation mark.

IV. TRADEMARK PROTECTION OF TRADE DRESS: INHERENT DISTINCTIVENESS

A. Product Label • When registering product label trade dress as a trademark, the product labels are always capable of

possessing inherent distinctiveness (i.e., the inherent ability to distinguish the goods/services of one merchant from those of others). The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e., it must possess the inherent ability to distinguish the goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is merely descriptive will not qualify for registration.

• The relevant statutory or regulatory provisions are: TMA Secs. 3, 8(1), 8(2) Nos. 1 (lack of distinctiveness), 2 (descriptiveness).

• The relevant Trademark Office rules or guidelines are: none. See Section II.• The leading cases regarding the inherent distinctiveness of product label trade dress are: BGH GRUR

1999, 495 - Etiketten. Most cases deal with the protection of product label trade dress focus on copyright issues only.

B. Product Wrapper• When registering product wrapper trade dress as a trademark, the product wrappers are always capable

of possessing inherent distinctiveness (i.e., the inherent ability to distinguish the goods/services of one merchant from those of others). The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration in any concrete case, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e., it must possess the inherent ability to distinguish the goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is (merely) descriptive will not qualify for registration.


• The relevant Trademark Office rules or guidelines are: none. See also Section II.• The leading cases regarding the inherent distinctiveness of product wrapper trade dress are: ECJ GRUR

2006, 1022 - Wicklerform; BGH GRUR 2007, 235 - Goldhase.

C. Product Container

Exhibit 13

Exhibit 14

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• When registering product container trade dress (e.g. bottles and boxes, etc.) as a trademark, the containers are always capable of possessing inherent distinctiveness (i.e., the inherent ability to distinguish the goods/services of one merchant from those of others). The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration in any concrete case, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e. it must possess the inherent ability to distinguish the goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is (merely) descriptive will not qualify for registration.

While all trademark forms are treated "equal," cases have held that - as a rule - only a product container trade dress is registrable the form of which "conspicuously" deviates from the "usual" form so that consumers are in a position to distinguish that container trade dress form even without the label.


• The relevant Trademark Office rules or guidelines are: none.• The leading cases regarding the inherent distinctiveness of product container trade dress are: BPatG

GRUR 1998, 580 - Dimple Bottle (+); BPatG GRUR 1998, 581 - Weiße Kokosflasche (White Cocos Bottle). See Section III.C.

D. Product Shape/Configuration • When registering product shape/configuration trade dress as a trademark, the product

shape/configuration is always capable of possessing inherent distinctiveness (i.e., the inherent ability to distinguish the goods/services of one merchant from those of others). The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration in any concrete case, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e., it must possess the inherent ability to distinguish the goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is (merely) descriptive will not qualify for registration.

• The relevant statutory or regulatory provisions are: TMA Secs. 3, 8(1), Sec. 8(2) Nos. 1 (lack of distinctiveness), 2 (descriptiveness).

• The relevant Trademark Office rules or guidelines are: none.• The leading cases regarding the inherent distinctiveness of product/shape configuration trade dress are:

ECJ GRUR Int. 2006, 842 - Form eines Bonbons II (form of a candy); ECJ GRUR Int. 2005, 135 -Winward flashlight; ECJ GRUR 2002, 804 - Philips/Remington; ECJ GRUR 2004, 428 - Henkel; ECJ C-344/10 P, C-345/10 P, Freixenet/HABM; BGH GRUR 2006, 589 - Rasierer mit 3 Scherköpfen; BGH GRUR 2007, 973 - Rado-Uhr III; BGH GRUR 2008, 71 - Fronthaube; BGH GRUR 2010, 138 - ROCHER-Kugel; BGH GRUR 2011, 158 - Hefteinband. See Section III.D.

E. Single Color • When registering single color trade dress as a trademark, the single color is only capable of possessing

inherent distinctiveness (i.e, the inherent ability to distinguish the goods/services of one merchant from those of others) under the following circumstances: The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration in any concrete case, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e., it must possess the inherent ability to distinguish the goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is (merely) descriptive will not qualify for registration.

As a matter of law and principle, color marks, color per se and color combinations are registrable as a trademark. Express reference to this is to be found in Sec. 3 (1) of the TMA. The color per se may possess inherent distinctiveness only under “exceptional circumstances,” namely, where the number of goods/services is restricted, and the relevant market is very specific. However, since the ECJ's decision in "Libertel," ECJ GRUR 2003, 604, the registration of a single color will, for all practical purposes, be successful only where the color ("abstract" color) has acquired secondary meaning (see BPatG 2009, 128 - single color yellow for mail services; BPatG GRUR 2008, 428 - red for legal books).


• The relevant Trademark Office rules or guidelines are:none.• The leading cases regarding the inherent distinctiveness of single color trade dress are: ECJ 2003, 604 -

Libertel; BPatG 2009, 128 - single color yellow for mail services; BPatG GRUR 2008, 428 - red for legal books.

F. Color Combination

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• When registering color combination trade dress as a trademark, the color combination is always capable of possessing inherent distinctiveness (i.e., the inherent ability to distinguish the goods/services of one merchant from those of others). The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration in any concrete case, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e., it must possess the inherent ability to distinguish the goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is (merely) descriptive will not qualify for registration.

Color marks, color per se and color combinations are registrable as a trademark. Express reference is to be found in Sec. 3(1) of the TMA. In an application for color combinations, the order of the combined colors must be defined in the application by defining the proportion and the distribution order of the colors. An indication of the color codes in a universally accepted color code system (e.g., RAL) is recommended.

Since BGH GRUR 2007, 55 - color trademark yellow/green II, registration requires that the application exactly specify proportions and positions of the colors against each other. Indications as to the approximate percentage (50%/50%) of the two colors are not sufficiently precise to fulfill requirements as to the spatial arrangements of the colors (BPatG 26W (pat) 12/10).


• The relevant Trademark Office rules or guidelines are: none.• The leading cases regarding the inherent distinctiveness of color combination trade dress are: ECJ GRUR

2004, 858 - Heidelberger Bauchemie; BGH GRUR 2007, 55 - color trademark yellow/green II; BPatG 26W(pat) 12/10, BeckRS 07/2011 985 - colors blue (Pantone 2747C)/silver (Pantone 877C).

G. Point of Sale Materials • When registering point of sale materials (e.g., banners, posters, shelf displays) trade dress as a

trademark, the point of sale materials are always capable of possessing inherent distinctiveness (i.e, the inherent ability to distinguish the goods/services of one merchant from those of others). The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration in any concrete case, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e., it must possess the inherent ability to distinguish the goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is (merely) descriptive will not qualify for registration.


• The relevant Trademark Office rules or guidelines are: none.• The leading cases regarding the inherent distinctiveness of point of sale materials trade dress are: BPatG

25W (pat) 13/11 Immo Poster.

H. Exterior Building Design • When registering exterior building design trade dress as a trademark, the exterior building design is

always capable of possessing inherent distinctiveness (i.e., the inherent ability to distinguish the goods/services of one merchant from those of others). The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration in any concrete case, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e., it must possess the inherent ability to distinguish the goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is (merely) descriptive will not qualify for registration.


• The relevant Trademark Office rules or guidelines are: none.• The leading cases regarding the inherent distinctiveness of exterior building design trade dress are: BGH I

ZB 1/04 (BPatG), GRUR 2005, 257, 258 - Bürogebäude; OHIM R 1/2003-4, GRUR 2004, 1033 - Smart Turm (-); BGH I ZR 177/02, GRUR 2005, 419 - Räucherkate (-).

I. Interior Building Design • When registering interior building design trade dress as a trademark, the building design/interior is always

capable of possessing inherent distinctiveness (i.e., the inherent ability to distinguish the goods/services of one merchant from those of others). The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration in any concrete case, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e., it must possess the inherent ability to distinguish the

8

goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is (merely) descriptive will not qualify for registration.


• The relevant Trademark Office rules or guidelines are:none.• The leading cases regarding the inherent distinctiveness of interior building design trade dress are: not

known.

J. Other Types • When registering the following other types of trade dress as a trademark, they are always capable of

possessing inherent distinctiveness (i.e., the inherent ability to distinguish the goods/services of one merchant from those of others): The requirement of inherent distinctiveness is approached (and answered) in two steps: (1) Any sign meeting the requirements of Sec. 3 of the TMA is eligible for trademark protection. (2) In order to qualify for registration in any concrete case, a sign covered by Sec. 3 of the TMA must be inherently distinctive, i.e., it must possess the inherent ability to distinguish the goods/services (for which protection is sought) from those of other merchants. Any trademark that lacks this distinctiveness and/or is (merely) descriptive will not qualify for registration.


• The relevant Trademark Office rules or guidelines are: none.• The leading cases regarding the inherent distinctiveness of these other types of trade dress are: touch

and feel mark: BGH GRUR 2007, 148 - Tastmarke (-); smell mark: C GRUR Int 2006, 134 - Odeur de fraise mur (-); position mark: BPatG GRUR 1998, 819 - jeans pocket with exclamation mark.

V. TRADEMARK PROTECTION OF TRADE DRESS: ACQUIRED DISTINCTIVENESS

A. Product Label • When registering product label trade dress as a trademark, acquired distinctiveness (secondary meaning)

must always be proven. Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases.

• The relevant statutory or regulatory provisions are: Sec. 8(3) of the TMA (Art. 7(3) CTMR).• The relevant Trademark Office rules or guidelines are: Other than the TMA, the Trademark Order and the

Order on the German Patent and Trademark Office, there are no rules publicly available; there are only internal rules of the GPTO.

• The leading cases regarding the acquired distinctiveness of product label trade dress are: not known.

B. Product Wrapper • When registering product wrapper trade dress as a trademark, acquired distinctiveness (secondary

meaning) must always be proven. Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases.

• The relevant statutory or regulatory provisions are: Sec. 8(3) of the TMA (Art. 7(3) CTMR).• The relevant Trademark Office rules or guidelines are:Other than the TMA, the Trademark Order and the


• The leading cases regarding the acquired distinctiveness of product wrapper trade dress are: ECJ GRUR 2006, 1022 - Wicklerform (GRUR Int. 2005, 317 - Wicklerform); BGH GRUR 2007, 235 -Goldhase.

C. Product Container

Exhibit 15

9

• When registering product container trade dress (e.g. bottles and boxes, etc.) as a trademark, acquired distinctiveness (secondary meaning) must always be proven.Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases. Because of the very strict requirements that have developed with respect to the registration of container trade dresses, shapes and colors, proof of acquired distinctiveness has become the rule rather than the exception.

• The relevant statutory or regulatory provisions are: Sec. 8(3) of the TMA (Art 7(3) CTMR).• The relevant Trademark Office rules or guidelines are: Other than the TMA, the Trademark Order and the


• The leading cases regarding the acquired distinctiveness of product container trade dress are: not known; there are also no references in literature.

D. Product Shape/Configuration • When registering product shape/configuration trade dress as a trademark, acquired distinctiveness

(secondary meaning) must always be proven. Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases. Because of the very strict requirements that have developed with respect to the registration of container trade dresses, shapes and colors proof of acquired distinctiveness has become the rule rather than the exception.



• The leading cases regarding the acquired distinctiveness of product shape/configuration trade dress are:BGH GRUR 2008, 510 - Milchschnitte (secondary meaning); BPatG 25W (pat) 193/99 (Feb. 17, 2006) -Dishwasher Tabs (-); BGH I ZB 33/04, GRUR 2006, 679, - Porsche Boxster (+); BGH I ZR 22/04, GRUR 2007, 780, 784 - Pralinenform (+); OLG Köln 6 U 159/11 (Mar. 30, 2012) - Ritter Sport (+).

E. Single Color • When registering a single color trade dress as a trademark, acquired distinctiveness (secondary meaning)

must always be proven. Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases. Because of the very strict requirements that have developed with respect to the registration of container trade dresses, shapes and colors, proof of acquired distinctiveness has become the rule rather than the exception.



• The leading cases regarding the acquired distinctiveness of a single color trade dress are: BPatG GRUR 2008, 428 - red (for legal books); BPatG 26W (pat) 15/00 (Feb. 14, 2007) - brown (for transport and storage services); OLG Hamburg WRP 2009, 638, 642 - NIVEA-Blau - blue (-); LG Köln 31 O 352/11 -Langenscheidt - yellow (for books).

F. Color Combination • When registering color combination trade dress as a trademark, acquired distinctiveness (secondary

meaning) must always be proven.Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular

Exhibit 16

10

owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases. See also Section III.F.



• The leading cases regarding the acquired distinctiveness of color combination trade dress are: BPatG 28 W(pat) 129/00 - magenta/grey (published without image); BGH I ZB 23/98 (Mar. 25, 1999) - “Farbmarke ("color trademark") magenta/grau.”

G. Point of Sale Materials • When registering point of sale materials (e.g., banners, posters, shelf displays) trade dress as a

trademark, acquired distinctiveness (secondary meaning) must always be proven. Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases. Because of the very strict requirements that have developed with respect to the registration of container trade dresses, shapes and colors, proof of acquired distinctiveness has become the rule rather than the exception.



• The leading cases regarding the acquired distinctiveness of point of sale materials trade dress are: not known; there are also no references in literature.

H. Exterior Building Design • When registering exterior building design trade dress as a trademark, acquired distinctiveness (secondary

meaning) must always be proven.Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness is possible. It is generally held that 50% is the minimum without being sufficient in all cases. See also Section III.H.



• The leading cases regarding the acquired distinctiveness of exterior building design trade dress are: none.

I. Interior Building Design • When registering interior building design trade dress as a trademark, acquired distinctiveness (secondary

meaning) must always be proven.Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases. See also Section III.I.

• The relevant statutory or regulatory provisions are: There is no reference in the relevant trademark sources. However, Sec. 3(1) of the TMA permits not only the registration of two-dimensional pictures but also of three-dimensional forms suitable to refer to the origin of products/services. Accordingly, it is fair to conclude that "interior building trade dress" is, in the abstract, registrable. Yet, if one looks into leading cases relevant for other type of trade dress, it seems that more than the "norm" is required. (See Section III.H.) Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases.

Exhibit 17

11

• The relevant Trademark Office rules or guidelines are: Other than the TMA, the Trademark Order and the Order on the German Patent and Trademark Office, there are no rules publicly available; there are only internal rules of the GPTO.

• The leading cases regarding the acquired distinctiveness of interior building design trade dress are: none; there are also no references in literature.

J. Other Types • When registering the following other types of trade dress trade dress as a trademark, acquired

distinctiveness (secondary meaning) must always be proven:Generally speaking, acquired distinctiveness (secondary meaning) need not be proven. Only if a trademark is not inherently distinctive (Sec. 8(2) No. 1 TMA), i.e., able to distinguish the goods and/or services to which the application relates from those of others or (merely) descriptive (Sec. 8(2) No. 2 TMA), must the test of acquired distinctiveness be met. Requirements vary. Generally speaking, only if a "considerable" part of the relevant public links the trademark to a particular owner is acquired distinctiveness possible. It is generally held that 50% is the minimum without being sufficient in all cases. Because of the very strict requirements that have developed with respect to the registration of container trade dresses, shapes and colors, proof of acquired distinctiveness has become the rule rather than the exception. See also Section III.J.



• The leading cases regarding the acquired distinctiveness of these other types of trade dress are: none.

VI. TRADEMARK PROTECTION OF TRADE DRESS: FUNCTIONALITY • When registering trade dress as a trademark, functionality is a potential bar to registration. Under Sec. 3

(2) of the TMA, signs that consist exclusively of the shape of goods are barred from registration when the shape is necessary to obtain a technical result or the shape gives substantial value to the goods. Leading cases of the ECJ held that, in order to refuse registration, essential features are necessary to trigger the provision; signs that also contain elements tjat have no functionality may be registered. Cf. ECJ Philips/Remington, GRUR 2002, 1804; BPatG GRUR 2007, 58 - LEGO, confirmed by BGH I ZB 53/07 and I ZB 55/07 (July 16, 2009) - LEGO.

• When registering trade dress as a trademark, utilitarian functionality is distinguished from ornamental (aesthetic) functionality as follows: Utilitarian functionality relates to technical elements, whereas aesthetic functionality covers elements which are primarily protected by copyright or design law.

• When seeking to protect trade dress as an unregistered trademark, functionality is a potential bar.Protection of a trademark outside the register, i.e., by use, is governed by Sec. 4 No. 2 of the TMA. Secondary meaning, however, cannot overcome the non-registration bars of Sec. 3(2) of the TMA if the secondary meaning relates to elements that if isolated were barred from registration because of functionality.

• When seeking to protect trade dress as an unregistered trademark, utilitarian functionality is distinguished from ornamental (aesthetic) functionality as follows: There is no special test that would relate to the protection of unregistered trademarks. The rules applying are those that would apply in a case of registered trade dress (see above).

• The test for "utilitarian functionality" is defined or referred to by:• trademark statute and/or regulation as follows: Sec. 3(2) No. 2 of the TMA and, again, under Sec.

50(1) Nos. 1 and (2) of the TMA, governing the cancellation of trademarks that had been registered against the bar of Sec. 3 of the TMA.

• Trademark Office rules and/or guidelines as follows: Other than the TMA, the Trademark Order and the Order on the German Patent and Trademark Office, there are no rules publicly available; there are only internal rules of the GPTO.

• case law as follows: It is the purpose of Sec. 3(2) No. 2 of the TMA to avoid technical solutions' or features of goods' being monopolized by trademark protection. Technical solutions either are protected by the patent law or are in the public domain.

• The test for "ornamental" or "aesthetic" functionality is defined or referred to by:• trademark statute and/or regulation as follows: Sec. 3(2) No. 3 of the TMA and Sec, 50 of the TMA

(see above);• Trademark Office rules and/or guidelines as follows:Other than the TMA, the Trademark Order and

the Order on the German Patent and Trademark Office, there are no rules publicly available; there are only internal rules of the GPTO;

• case law as follows: "Substantial value" under Sec. 3(2) No. 3 of the TMA is only aesthetic value. Accordingly, Sec. 3(2) of the TMA will protect registration of trademarks only where, in the eyes of the relevant public, the aesthetic form is the tradable good as such. Generally, this would apply only to pieces of art but not, however, to goods that also have another purpose. BPatG 28 W (pat) 61/01 - Schmuckring; BGH GRUR 2008, 71 - Fronthaube; ECJ C -371/06 - Benetton/G-Star.

12

• When applying to register trade dress as a trademark, functionality is considered at the examination stage. Pursuant to Sec. 37(1) of the TMA, the Patent and Trademark Office will examine an application also with respect to Sec. 3 of the TMA and must reject registration (on absolute grounds) if the trademark (trade dress) is found to consist exclusively of functional elements, as further defined by Sec. 3 and leading cases.

• Functionality is not a ground for opposing trademark applications for trade dress. Grounds for opposing a trademark are reflected and limited by Sec. 42(2) of the TMA (Art. 8 CTMR).

• Functionality is a ground for canceling a trademark registration for trade dress. Sec. 50(1) No. 1 TMA: All trademarks registered against, inter alia, Sec. 3 of the TMA (signs qualifying as trademarks) will be canceled upon application.

• The time limit within which a third party can seek cancellation of a trademark registration for trade dress on functionality grounds is: none (cf. Sec. 50 TMA).

VII. TRADEMARK PROTECTION OF TRADE DRESS: PROTECTION OF UNREGISTERED TRADE DRESS AT COMMON OR CIVIL LAW

A. Product Label• Trademark rights can be established in product label trade dress through use, promotion and/or

advertising at common law or civil law. The leading cases in this area are: Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, i.e., any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and that are not covered by Sec. 3(2) of the TMA, may enjoy protection, whether or not they are registered (BGH GRUR 2004, 151 -Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases (i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought).

• Trademark rights can be established in product label trade dress through means other than registration, use, promotion and/or advertising at common law or civil law. These means are: notorious trademarks under Art. 6bis of the Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that packaging/label trade dress can be protected through these other means are: none. The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 -Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

B. Product Wrapper• Trademark rights can be established in product wrapper trade dress through use, promotion and/or

advertising at common law or civil law. The leading cases in this area are: BGH GRUR 1968, 371 - Maggi. Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, i.e., any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and that are not covered by Sec. 3(2) of the TMA, may enjoy protection, whether or not they are registered (BGH GRUR 2004, 151 - Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases (i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought).

• Trademark rights can be established in product wrapper trade dress through means other than registration, use, promotion and/or advertising at common law or civil law. These means are: notorious trademarks under Art. 6bis of the Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that product wrapper trade dress can be protected through these other means are: none. The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 -Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

C. Product Container • Trademark rights can be established in product container trade dress (e.g. bottles and boxes, etc.)

through use, promotion and/or advertising at common law or civil law. The leading cases in this area are:Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, i.e., any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and that are not covered by Sec. 3(2) of the TMA, may enjoy protection, whether or not they are registered (BGH GRUR 2004, 151 - Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements

Exhibit 18

13

set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases (i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought).

• Trademark rights can be established in product container trade dress (e.g. bottles and boxes, etc.) through means other than registration, use, promotion and/or advertising at common law or civil law. These means are: notorious trademarks under Art. 6bis of the Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that product container trade dress can be protected through these other means are: The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 -Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

D. Product Shape/Configuration • Trademark rights can be established in product shape/configuration trade dress through use, promotion

and/or advertising at common law or civil law. The leading cases in this area are: Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, i.e., any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and that are not covered by Sec. 3(2) of the TMA, may enjoy protection, whether or not they are registered (BGH GRUR 2004, 151 -Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases (i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought).

• Trademark rights can be established in product shape/configuration trade dress through means other than registration, use, promotion and/or advertising at common law or civil law. These means are: notorious trademarks under Art. 6bis of the Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that product shape/configuration trade dress can be protected through these other means are: none. The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 - Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

E. Single Color • Trademark rights can be established in single color trade dress through use, promotion and/or advertising

at common law or civil law. The leading cases in this area are: OLG Hamburg GRUR-RR 2004, 198 - gelb (yellow); OLG Hamburg, 5 U 148/07 (Nov. 19, 2008) - NIVEA-Blau. Since the ECJ's decision in "Libertel," ECJ GRUR 2003, 604, the registration of a single color application will, for all practical purposes, be successful only where the color ("abstract" color) has acquired secondary meaning (see BPatG 2009, 128 - single color yellow (for mail services); BPatG GRUR 2008, 428 - red (for legal books)). Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, i.e., any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and that are not covered by Sec. 3(2) of the TMA, may enjoy protection, whether or not they are registered (BGH GRUR 2004, 151 -Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases (i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought).

• Trademark rights can be established in single color trade dress through means other than registration, use, promotion and/or advertising at common law or civil law. These means are: notorious trademarks under Art 6bis Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that single color trade dress can be protected through these other means are:none. The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 -Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

F. Color Combination • Trademark rights can be established in color combination trade dress through use, promotion and/or

advertising at common law or civil law. The leading cases in this area are: not known (also no reference in literature). Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and that are not covered by Sec. 3(2) of the TMA, may enjoy protection, whether or not they are registered (BGH GRUR 2004, 151 - Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases

14

(i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought).

• Trademark rights can be established in color combination trade dress through means other than registration, use, promotion and/or advertising at common law or civil law. These means are: notorious trademarks under Art. 6bis of the Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that color combination trade dress can be protected through these means are:none. The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 -Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

G. Point of Sale Materials • Trademark rights can be established in point of sale materials (e.g., banners, posters, shelf displays)

trade dress through use, promotion and/or advertising at common law or civil law. The leading cases in this area are: not known (also no reference in literature). Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, i.e., any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and tjat are not covered by Sec 3(2) of the TMA, may enjoy protection, whether or not they are registered (BGH GRUR 2004, 151 - Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases (i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought).

• Trademark rights can be established in point of sale materials (e.g., banners, posters, shelf displays) trade dress through means other than registration, use, promotion and/or advertising at common law or civil law. These means are: notorious trademarks under Art. 6bis of the Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that point of sale materials trade dress can be protected through these other means are: none. The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 - Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

H. Exterior Building Design • Trademark rights can be established in exterior building design trade dress through use, promotion and/or

advertising at common law or civil law. The leading cases in this area are: not known (also no reference in literature). See Section III.H. Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, i.e., any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and that are not covered by Sec. 3(2) of the TMA, may enjoy protection, whether or not they are registered (BGH GRUR 2004, 151 - Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases (i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought).

• Trademark rights can be established in exterior building design trade dress through means other than registration, use, promotion and/or advertising at common law or civil law. These means are: notorious trademarks under Art. 6bis of the Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that exterior building design trade dress can be protected through these other means are: none. The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 - Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

I. Interior Building Design • Trademark rights can be established in interior building design trade dress through use, promotion and/or

advertising at common law or civil law. The leading cases in this area are: not known (also no reference in literature). See Section III.I. Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, i.e., any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and that are not covered by Sec. 3(2) of the TMA, may enjoy protection, no matter whether or not they are registered (BGH GRUR 2004, 151 - Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases (i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought).

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• Trademark rights can be established in interior building design trade dress through means other than registration, use, promotion and/or advertising at common law or civil law. These means are: notorious trademarks under Art. 6bis of the Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that interior building design trade dress can be protected through these other means are: none. The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 - Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

J. Other Types • Trademark rights can be established in the following other types of trade dress through use, promotion

and/or advertising at common law or civil law. The leading cases in this area are: Generally speaking, all trademarks recognized under Sec. 3(1) of the TMA, i.e., any and all signs that are suitable to distinguish the goods/services of one merchant from those of another and that are not covered by Sec. 3(2) of the TMA, may enjoy protection, whether or not they are registered (BGH GRUR 2004, 151 -Farbmarkenverletzung (infringement of color mark)), provided that they otherwise meet the requirements set by law, including Sec. 4 No. 2 of the TMA (trademarks by use) and the leading cases (i.e., they are distinctive and not descriptive with respect to the goods/services for which protection is sought). OLG Frankfurt, 6 U 189/98, GRUR 2000, 1063 - "Spee-Fuchs" (motion mark).

• Trademark rights can be established in the following other types of trade dress through means other than registration, use, promotion and/or advertising at common law or civil law: notorious trademarks under Art. 6bis of the Paris Convention (Sec. 4 No. 3 TMA) used outside Germany. The degree of notoriety must be well over 50% of the relevant public.

• The leading cases holding that these other types of trade dress can be protected through means other than registration, use, promotion and/or advertising at common law or civil law are: none. The very few cases published deal with other aspects of the provision, including the possible application of Art. 6bis of the Paris Convention to purely domestic cases (OLG Frankfurt GRUR-RR 2003, 274 - Vier-Zeichen-Kennzeichnung) or the required degree of notoriety (BGH GRUR Int. 1969, 257 - Recrin). See also OLG Köln GRUR-RR 2007, 272 - 4 DSL. The overall relevance of the provision is very limited.

VIII. TRADEMARK PROTECTION OF TRADE DRESS: FORM OF NOTICE/MARKING

• For registered trademarks, use of a trademark notice and/or marking is optional. It is recommended that the following marking be used and/or the following information be included in the notice: There is no trademark notice under German law. When it nevertheless is used, it is generally in the form of a "R" in a circle.

• There are no marking or notice requirements or issues unique to registered trademarks comprising trade dress.

• For unregistered trademarks, use of a trademark notice and/or marking is not known. Use of notices relating to unregistered trademarks may easily result into a violation of unfair competition principles (misleading advertising).

• There are no marking or notice requirements or issues unique to unregistered trademarks comprising trade dress.

• Guidance on unique marking requirements pertaining to non-traditional trademarks such as sounds (songs and jingles), smells, motion marks and holograms is not found in trademark statute or regulation, Trademark Office rule or guideline, or case law. They do not exist.

IX. DESIGN PROTECTION OF TRADE DRESS: SCOPE OF DESIGN RIGHTS

• This jurisdiction recognizes design rights through a separate intellectual property protection scheme, e.g., via industrial designs, design patents and/or Community Designs. Design rights can be created through the German Design Act ("DA"), Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs ("CDR"), and - indirectly - the Hague System for the International Registration of Industrial Designs.

• Design rights are created through registration. Sec. 11 of the DA (Germany) and Art. 35 of the CDR (European Union).

• Design rights are created through use, promotion and/or advertising, at common law or civil law. Only on a European level, Art. 11 No. 1 of the CDR. German design law does not know the creation of design rights by use only. Nevertheless, unregistered Community designs take effect in Germany (cf. BGH GRUR 2009, 79 - Gebäckpresse).

• The term "design" is defined or referred to by:

Exhibit 19

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• statute and/or regulation as follows: Sec. 1 of the DA: the two- or three-dimensional appearance of an entire product or parts of it resulting in particular from the features of the lines, contours, colors, shape, texture or materials of the product itself or its ornamentation. Virtually the same wording will be found in Art. 3(a) of the CDR.

• The term "design" is defined or referred to by case law as follows: see above.• In order to obtain a design registration, the design must meet the following basic criteria:

• it must consist of or incorporate features of shape, configuration, pattern or ornament (According to Sec. 1 No. 1 of the DA, a design means a two-or three-dimensional appearance of the whole or a part of a product, resulting from the features of, in particular, the lines, contours, colors, shape, texture, and/or materials of the product itself and/or its ornamentation.);

• it must be new, novel or original (According to Sec. 2(1) of the DA, a design is considered new if no identical design has been disclosed before the filing date. Further, a design shall be considered to be original if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design that has been made available to the public before the date of filing the application.);

• it must not be dictated by utilitarian function (According to Sec. 3(1) Nos. 1 and 2 of the DA, design protection is excluded for features of appearances that are dictated solely by their technical function. Moreover, a Community design shall not subsist in features of appearance of a product that must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.).

• In order to establish rights in an unregistered design, the design must meet the following basic criteria:• There are no rights in an unregistered design under German law, although German law fully

recognizes the right in an unregistered design created under Art. 11 of the CDR.• Public disclosure of a design may constitute a bar to registration, but there is a grace period to file a

design application after public disclosure. The grace period is as follows: According to Sec. 6 of the DA, there is a grace period of 12 months; publication of the design during the 12-month period preceding the date of filing of the application is not detrimental to novelty.

• Design registration grants the following basic rights:• the exclusive right to apply the registered design to any article for which the design is registered

throughout this jurisdiction (According to Sec. 37 of the DA, protection is provided for those features that are visible in the application of the design.);

• the right to prevent another from making, importing, selling or renting any article for which the design is registered and to which a substantially similar design is applied within this jurisdiction(According to Sec. 38 of the DA, a registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.).

• Design rights established through use, promotion and/or advertising at common law or civil law grant the following basic rights:

• There are no rights in an unregistered design under German law, though German law fully recognizes the right in an unregistered design created under Art. 11 of the CDR.

• The term of protection for a registered design is: 25 years as of the date of application (Sec. 27(2) DA); the design is to be renewed in years 5, 10, 15 and 20 by paying a renewal fee. Without payment, protection expires (Secs. 28(1) and 28(3) DA).

• The term of protection for an unregistered design is: not applicable.

X. DESIGN PROTECTION OF TRADE DRESS: REGISTRABILITY OF TRADE DRESS

A. Product Label • Product label trade dress can be registered as a design. A design is defined in Sec. 1 of the DA as the

two- or three-dimensional appearance of an entire product or parts of it resulting in particular from the features of the lines, contours, colors, shape, texture or materials of the product itself or its ornamentation. Virtually the same wording will be found in Art. 3(a) of the CDR. The registration process is governed by Secs. 11-26 of the DA (Arts. 35-50 CDR). In order to obtain a design registration, the design must meet the following basic criteria: it must consist of or incorporate features of shape, configuration, pattern or ornament; it must be new and original; and it must not be dictated by utilitarian function.

• Unique requirements that must be met to obtain design protection for product label trade dress are: none.• The leading cases on design protection for product label trade dress are: BGH GRUR 2004, 770 -

Abgewandelte Verkehrszeichen (+); OHIM ICD 000002210 (Mar. 14, 2007) - packaging for foodstuffs (+); OHIM ICD 000001782 (Mar. 29, 2006) - Fortuna (label II). Exhibit 20

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B. Product Wrapper • Product wrapper trade dress can be registered as a design. A design is defined in Sec. 1 of the DA as the

two- or three-dimensional appearance of an entire product or parts of it resulting in particular from the features of the lines, contours, colors, shape, texture or materials of the product itself or its ornamentation. Virtually the same wording will be found in Art. 3(a) of the CDR. The registration process is governed by Secs. 11-26 of the DA (Arts. 35-50 CDR). In order to obtain a design registration, the design must meet the following basic criteria: it must consist of or incorporate features of shape, configuration, pattern or ornament; it must be new and original; and it must not be dictated by utilitarian function. Examples include: Community design no. 54994-0001.1 - Bastumhüllung einer Chiantiflasche (drinks flask); Community design no. 958624-0005 - Aufmachung einer Parfümflasche (perfume bottles); Community design no. 903307-0001.1 - Ausstattung einer Likörflasche (liquor bottles).

• Unique requirements that must be met to obtain design protection for product wrapper trade dress are:none.

• The leading cases on design protection for product wrapper trade dress are: OHIM ICD 000002210 (Mar. 14, 2007) - packaging for foodstuffs (+). There is sometimes no clear-cut line between the various sets of cases.

C. Product Container • Product container trade dress (e.g. bottles and boxes, etc.) can be registered as a design. A design is

defined in Sec. 1 of the DA as the two- or three-dimensional appearance of an entire product or parts of it resulting in particular from the features of the lines, contours, colors, shape, texture or materials of the product itself or its ornamentation. Virtually the same wording will be found in Art. 3(a) of the CDR. The registration process is governed by Secs. 11-26 of the DA (Arts. 35-50 CDR). In order to obtain a design registration, the design must meet the following basic criteria: it must consist of or incorporate features of shape, configuration, pattern or ornament; it must be new and original; and it must not be dictated by utilitarian function.

• Unique requirements that must be met to obtain design protection for product container trade dress (e.g. bottles and boxes, etc.) are: none.

• The leading cases on design protection for product container trade dress (e.g. bottles and boxes, etc.) are: BHG GRUR 1966, 681 - Laternenflasche (bottle lamp); OHIM ICD 000001576 (Mar. 2, 2006) -perfume bottle (-).

D. Product Shape/Configuration • Product shape/configuration trade dress can be registered as a design. A design is defined in Sec. 1 of

the DA as the two- or three-dimensional appearance of an entire product or parts of it resulting in particular from the features of the lines, contours, colors, shape, texture or materials of the product itself or its ornamentation. Virtually the same wording will be found in Art. 3(a) of the CDR. The registration process is governed by Secs. 11-26 of the DA (Arts. 35-50 CDR). In order to obtain a design registration, the design must meet the following basic criteria: it must consist of or incorporate features of shape, configuration, pattern or ornament; it must be new and original; and it must not be dictated by utilitarian function.

• Unique requirements that must be met to obtain design protection for product shape/configuration trade dress are: none.

• The leading cases on design protection for product shape/configuration trade dress are: OHIM ICD 000000982 (Mar. 3, 2006) - sanitary appliances [no image available]; OHIM ICD 000002715 (Apr. 27, 2007) - Go-kart; BGH GRUR 1977, 602 - Braun shaver (-) [no image available]; OLG Hamburg 5 U 135/05 - mobile design (Nokia); BGH GRUR 1962, 258 - Moped (-); OHIM ICD 000002244 (Dec. 20, 2006) - motor scooter (-); OLG München 6U 4546/01 (Jan. 30, 2003) - illuminated bear (+) [no image available]; BGH GRUR 2011, 1112 - Schreibgeräte (writing utensil) (+).

E. Single Color • Single color trade dress cannot be registered as a design. While single color may add to the appearance

of products, it is no "product" as defined (cf. also the definition of "design" in Section X.A. and OHIM -Announcement No. 2/2005). A product may, however, be easily created by submitting a color-specimen card.

F. Color Combination • Color combination trade dress cannot be registered as a design. While a color combination may add to

the appearance of products, it is no "product" as defined (cf. also the definition of "design" in Section X.A. and OHIM - Announcement No. 2/2005). A product may, however, be easily created by submitting a color-specimen card.

Exhibit 21

Exhibit 22

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G. Point of Sale Materials • Point of sale materials (e.g., banners, posters, shelf displays) trade dress can be registered as a design.

However, no cases are known.• Unique requirements that must be met to obtain design protection for point of sale materials trade dress

are: none.• The leading cases on design protection for point of sale materials trade dress are: none are known.

H. Exterior Building Design • Exterior building design trade dress can be registered as a design. There exist several Community

designs: no. 995 402-0001.1 (skyscrapers), no. 952510-0001.1 (sports stadiums) and no. 969555-0001.5 (houses). While the CDR has the quality of "domestic" law in Germany, we have found one expired German exterior building design (M 9801660.1 - date of expiration Jan. 5, 2009).

• Unique requirements that must be met to obtain design protection for exterior building design trade dress are: none.

• The leading cases on design protection for exterior building design trade dress are: not known; there are also no references in literature.

I. Interior Building Design • Interior building design trade dress can be registered as a design. GGM 675 467-0002 (kitchen).

• Unique requirements that must be met to obtain design protection for interior building design trade dress are: none.

• The leading cases on design protection for interior building design trade dress are: OLG Frankfurt GRUR 1955, 210 - Künstlerische Ausstattung einer Gaststätte (artistic design of an inn) (-).

J. Other Types • The following other types of trade dress can be registered as a design: holograms (cf. Sec. 1 No. 2 DA;

Art. 3(b) CDR); no cases known.• Unique requirements that must be met to obtain design protection for these other types of trade dress are:

none.• The leading cases on design protection for these other types of trade dress are: not known; there are also

no references in literature.

XI. DESIGN PROTECTION OF TRADE DRESS: PROTECTION OF UNREGISTERED TRADE DRESS AT COMMON OR CIVIL LAW

A. Product Label • Design rights cannot be established in product label trade dress through use, promotion and/or

advertising at common law or civil law. Only on a European level, under Art. 11 No. 1 of the CDR. German design law does not acknowledge the creation of design rights by use only. Nevertheless, unregistered Community designs take effect in Germany (cf. BGH GRUR 2009, 79 - Gebäckpresse). Protection starts as of the date when the design was first made available within the Community. The term of protection is three years. The unregistered design was introduced for the benefit of the fashion and jewel industry, taking into account that these industries produce large numbers of designs for products having a short market life often not warranting the burden of cost-triggering registration formalities. Protection is limited to copying of the design (Art. 19 No. 2 CDR).

• Design rights cannot be established in product label trade dress through means other than registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

B. Product Wrapper • Design rights cannot be established in product wrapper trade dress through use, promotion and/or

advertising at common law or civil law. Only on a European level, under Art. 11 No. 1 of the CDR. German design law does not acknowledge the creation of design rights by use only. Nevertheless, unregistered Community designs take effect in Germany (cf. BGH GRUR 2009, 79 - Gebäckpresse). Protection starts as of the date when the design was first made available within the Community. The term of protection is three years. The unregistered design was introduced for the benefit of the fashion and jewel industry,

Exhibit 23

Exhibit 24

Exhibit 25

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taking into account that these industries produce large numbers of designs for products having a short market life often not warranting the burden of cost-triggering registration formalities. Protection is limited to copying of the design (Art. 19 No. 2 CDR). Both registered and unregistered designs require that the design relates to a "product," which is defined as any industrial or handcraft item, including, inter alia, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs (Art. 3(b) CDR).

• Design rights cannot be established in product wrapper trade dress through means other than registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

C. Product Container • Design rights cannot be established in product container trade dress (e.g. bottles and boxes, etc.) through

use, promotion and/or advertising at common law or civil law. Only on a European level, under Art. 11 No. 1 of the CDR. German design law does not acknowledge the creation of design rights by use only. Nevertheless, unregistered Community designs take effect in Germany (cf. BGH GRUR 2009, 79 -Gebäckpresse). Protection starts as of the date when the design was first made available within the Community. The term of protection is three years. The unregistered design was introduced for the benefit of the fashion and jewel industry, taking into account that these industries produce large numbers of designs for products having a short market life often not warranting the burden of cost-triggering registration formalities. Protection is limited to copying of the design (Art. 19 No. 2 CDR).

• Design rights cannot be established in product container trade dress (e.g. bottles and boxes, etc.) through means other than registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

D. Product Shape/Configuration • Design rights cannot be established in product shape/configuration trade dress through use, promotion

and/or advertising at common law or civil law. Only on a European level, under Art. 11 No. 1 of the CDR. German design law does not acknowlege the creation of design rights by use only. Nevertheless unregistered Community designs take effect in Germany (cf. BGH GRUR 2009, 79 - Gebäckpresse). Protection starts as of the date when the design was first made available within the Community. The term of protection is three years. The unregistered design was introduced for the benefit of the fashion and jewel industry, taking into account that these industries produce large numbers of designs for products having a short market life often not warranting the burden of cost-triggering registration formalities. Protection is limited to copying of the design (Art. 19 No. 2 CDR).

• Design rights cannot be established in product shape/configuration trade dress through means other than registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

E. Single Color • Design rights cannot be established in single color trade dress through use, promotion and/or advertising

at common law or civil law. See, however, Section X.E. Accordingly, if a single color is applied to a color code card (as a minimum; otherwise and for obvious reasons "use" is not possible) a design right can be established (so it must be noted that such "design" in a "product" will hardly be new or have individual character).

• Design rights cannot be established in single color trade dress through means other than registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

F. Color Combination• Design rights cannot be established in color combination trade dress through use, promotion and/or

advertising at common law or civil law. See Sections XI.A., XI.B. and XI.E.• Design rights cannot be established in color combination trade dress through means other than

registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

G. Point of Sale Materials • Design rights cannot be established in point of sale materials (e.g., banners, posters, shelf displays) trade

dress through use, promotion and/or advertising at common law or civil law. Only on a European level, under Art. 11 No. 1 of the CDR. German design law does not acknowlege the creation of design rights by use only. Nevertheless, unregistered Community designs take effect in Germany (cf. BGH GRUR 2009, 79 - Gebäckpresse). Protection starts as of the date when the design was first made available within the Community. The term of protection is three years. The unregistered design was introduced for the benefit of the fashion and jewel industry, taking into account that these industries produce large numbers of

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designs for products having a short market life often not warranting the burden of cost-triggering registration formalities. Protection is limited to copying of the design (Art. 19 No. 2 CDR).

• Design rights cannot be established in point of sale materials (e.g., banners, posters, shelf displays) trade dress through means other than registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

H. Exterior Building Design • Design rights cannot be established in exterior building design trade dress through use, promotion and/or

advertising at common law or civil law. Only on a European level, under Art. 11 No. 1 of the CDR. German design law does not acknowlege the creation of design rights by use only. Nevertheless, unregistered Community designs take effect in Germany (cf. BGH GRUR 2009, 79 - Gebäckpresse). Protection starts as of the date when the design was first made available within the Community. The term of protection is three years. The unregistered design was introduced for the benefit of the fashion and jewel industry, taking into account that these industries produce large numbers of designs for products having a short market life often not warranting the burden of cost-triggering registration formalities. Protection is limited to copying of the design (Art. 19 No. 2 CDR). Given the definition of a "design in a product," an unregistered design in exterior building is possible. This conclusion is confirmed by the fact that both registered and unregistered designs are subject to the same requirements for protection (though term and extent of protection differ) and further that there are building designs registered with OHIM (cf. CD No. 995402-0001.1).

• Design rights cannot be established in exterior building design trade dress through means other than registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

I. Interior Building Design • Design rights cannot be established in interior building design trade dress through use, promotion and/or

advertising at common law or civil law. Only on a European level, under Art. 11 No. 1 of the CDR. German design law does not acknowlege the creation of design rights by use only. Nevertheless, unregistered Community designs take effect in Germany (cf. BGH GRUR 2009, 79 - Gebäckpresse). Protection starts as of the date when the design was first made available within the Community. The term of protection is three years. The unregistered design was introduced for the benefit of the fashion and jewel industry, taking into account that these industries produce large numbers of designs for products having a short market life often not warranting the burden of cost-triggering registration formalities. Protection is limited to copying of the design (Art. 19 No. 2 CDR). Given the definition of a "design in a product," an unregistered design in interior building is possible. This conclusion is confirmed by the fact that both registered and unregistered designs are subject to the same requirements for protection (though term and extent of protection differ) and further that there are interior building designs registered with OHIM (cf. CD No. 675467-0002, registered with OHIM for a kitchen).

• Design rights cannot be established in interior building design trade dress through means other than registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

J. Other Types • Design rights can be established in the following other types of trade dress through use, promotion and/or

advertising at common law or civil law. The leading cases in this area are: none supplied. See Sections XI.A. and XI.B. Theoretically, holograms may qualify under the definition of Art. 3 of the CDR, though this has not been heard of.

• Design rights cannot be established in other types of trade dress (examples include: sounds (songs and jingles), smells, motion marks and holograms) through means other than registration, use, promotion and/or advertising and common law or civil law. See Sections IX, XI.A. and XI.B.

XII. DESIGN PROTECTION OF TRADE DRESS: FORM OF NOTICE/MARKING

• For registered designs, use of a design notice and/or marking is optional. It is recommended that the following marking be used and/or information be included in a notice: none supplied.

• There are no marking or notice requirements or issues unique to registered designs comprising trade dress.

• For unregistered designs, use of a design notice and/or marking is optional. It is recommended that the following marking be used and/or information be included in a notice: none - also not possible. In order to enjoy protection as an unregistered design under the CDR, a design must live up to the requirements of a registered design (Art. 11(1) CDR). Whether or not this is the case is often difficult to know, as timing and substance - in the absence of a register - are often very hard to recognize.

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• There are no marking or notice requirements or issues unique to unregistered designs comprising trade dress.

XIII. COPYRIGHT PROTECTION OF TRADE DRESS: SCOPE OF COPYRIGHT

• This jurisdiction has a copyright protection scheme. Copyrights are protected under the German Copyright Act of September 9, 1965, as amended ("CA"). Protection under the CA extends to works of literature, science and art (Sec. 1 CA). In order to enjoy protection, however, the literature, science or art must be the result of a personal intellectual creation (Sec. 2 CA).

• This jurisdiction is a member of the Berne Convention. Germany is a long-time member of the Revised Berne Convention granting domestic treatment to foreigners, i.e., the same treatment that citizens of Germany would enjoy.

• Copyright rights are created automatically through the creation of a copyrightable work. Under the CA, there are no formalities for a copyright to come into existence. Only the creation by an individual (Sec. 7 CA) of a work meeting the requirements of Secs. 1 and 2 of the CA is necessary. Only individuals can be creators of a work; others, e.g., companies, are limited to rights to use and make use of the work.

• A registered copyright protects the following basic rights:• the sole right to produce, reproduce, or publicly perform the work that is the subject of the copyright

registration;• the right to prevent the production, reproduction or public performance of the work or a substantial

part of the work that is the subject of the copyright registration. The scope of protection of copyrighted works is comprehensive and irrespective of a registration.

• Unregistered copyright protects the following basic rights:The scope of protection of copyrighted works is comprehensive and irrespective of a registration.

• In order to be eligible for copyright registration, a work must meet the following basic criteria:• the work must be in fixed/tangible form;• the work must be original;• the work must qualify as a protectible work, such as an artistic work, literary work, dramatic work,

musical work, etc.• In order to be eligible for unregistered copyright protection, a work must meet the following basic criteria:

• the work must be in fixed/tangible form;• the work must be original;• the work must qualify as a protected work, such as an artistic work, literary work, dramatic work,

musical work, etc. It is not necessary that the work be in written form but the work must be perceptible by a recipient. Mere "ideas" and "motifs" and "concepts" as such do not qualify the work for copyright protection if they are not perceptible by a reader, listener or observer. Also, the work must be an individual intellectual creation, and be a creation that is original, individual, and creative; a work must not only be different but also "special." Registration is not a requirement for protection.

• When copyright is registered, the term of protection is generally as follows:Not applicable.• When copyright is unregistered, the term of copyright protection is generally as follows: According to Sec.

64 of the CA, copyright protection starts with the creation of the work and expires seventy (70) years after the death of the creator. Shorter terms may apply to so-called neighboring rights, i.e., works that lack a certain amount of creativity but were created with a substantial economic investment, e.g., the accomplishments of a film producer, record producer, data base producer, etc. Neigboring rights usually expire 50 years after the first publication of the work.

XIV. COPYRIGHT PROTECTION OF TRADE DRESS: PROTECTABILITY OF TRADE DRESS

A. Product Label • Product label trade dress is protectible under copyright law. Product label trade dress may be protectible if

it meets the requirements of Secs. 1 and 2 of the CA. Protection is not dependent on formalities or payment of fees and provides the advantage of a much longer period of protection than under the DA, i.e., the lifetime of the creator plus 70 years, as opposed to a maximum of 25 years for protection of a design. Contrary to trademark protection, though, it may not be extended at will. The CA sets much higher standards and protects only personal intellectual creations. By virtue of that requirement, most "industrial" creations, including in most cases product label trade dress, do not qualify for protection under the CA.

• The statutory or regulatory basis for copyright protection of product label trade dress is: Secs. 1 and 2 pf tje CA, in particular Sec. 2(1) No. 4 ("Art").

• Unique statutory or regulatory requirements that must be met in order to obtain copyright protection of product label trade dress are:not applicable.

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• Copyright Office rules or guidelines applying to the copyright protection of Product label trade dress as are: not applicable.

• Examples of product label trade dress that have been registered under the Copyright Act or recognized as being protected by copyright are: not applicable.

• The leading cases involving copyright protection of product label trade dress are: BGH ZUM 1995, 482 -Rosaroter Elefant (pink elephant); LG Kiel ZUM 2005, 81 - Großenbrode (forbidden use of picture material).

B. Product Wrapper • Product wrapper trade dress is protectible under copyright law. Product wrapper trade dress may be

protectible if it meets the requirements of Sec. 1 and 2 of the German Copyright Act ("CA"). Protection is not dependent on formalities or payment of fees and provides the advantage of a much longer period of protection than under the German Design Act ("DA"), i.e., the lifetime of the creator plus 70 years as opposed to a maximum of 25 years for protection of a design. Contrary to trademark protection, though, it may not be extended at will. The CA sets much higher standards and only protects personal intellectual creations. By virtue of that requirement, most "industrial" creations, including in most cases product label trade dress, do not qualify for protection under the CA.

• The statutory or regulatory basis for copyright protection of product wrapper trade dress is: Secs. 1 and 2 of the CA, in particular Sec. 2(1) No. 4 ("Art").

• Unique statutory or regulatory requirements that must be met in order to obtain copyright protection of product wrapper trade dress are:not applicable.

• Copyright Office rules or guidelines applying to the copyright protection of product wrapper trade dress are: not applicable.

• Examples of product wrapper trade dress that have been registered under the Copyright Act or recognized as being protected by copyright are: not applicable.

• The leading cases involving copyright protection of product wrapper trade dress are: Of the cases published, only one case seems to have accepted copyright protection for a product wrapper: LG Kiel, 6 O 18/81 (Apr. 16, 1982) - Fischverpackung mit Firmenzeichen (wrapper for fish with company logo); all other cases published seem to have refused to accept copyright on the ground of lack of intellectual creation. Cf. KG ZUM 2005, 230 - Verpackungsgestaltung (-) but enjoying protection as unregistered design.

C. Product Container • Product container trade dress (bottles and boxes, etc.) is protectible under copyright law. Product

container trade dress may be protectible if it meets the requirements of Secs. 1 and 2 of the CA. Protection is not dependent on formalities or payment of fees and provides the advantage of a much longer period of protection than under the DA, i.e., the lifetime of the creator plus 70 years, as opposed to a maximum of 25 years for protection of a design. Contrary to trademark protection, though, it may not be extended at will. The CA sets much higher standards and only protects personal intellectual creations. By virtue of that requirement, most "industrial" creations, including in most cases product label trade dress, do not qualify for protection under the CA.

• The statutory or regulatory basis for copyright protection of product container trade dress is: Secs. 1 and 2 of the CA, in particular Sec. 2(1) No. 4 ("Art").

• Unique statutory or regulatory requirements that must be met in order to obtain copyright protection of product container trade dress are: none.

• Copyright Office rules or guidelines applying to the copyright protection of product container trade dress are: not applicable.

• Examples of product container trade dress that have been registered under the Copyright Act or recognized as being protected by copyright are: not applicable.

• The leading cases involving copyright protection of product container trade dress are: BGH GRUR 1972, 38 - Vasenleuchter (+); LG Düsseldorf 4 O 293/63, GRUR 1966, 156 - Bienenkorbspardose (-); OLG Nürnberg 3 U 731/97, ZUM RD 2000, 114 - Dreidimensionale Form (-); BGH I ZR 112/57, GRUR 1959, 289 - Rosenthal-Vase (-).

D. Product Shape/Configuration • Product shape/configuration trade dress is protectible under copyright law. Product shape/configuration

trade dress may be protectible if it meets the requirements of Secs. 1 and 2 of the CA. Protection is not dependent on formalities or payment of fees and provides the advantage of a much longer period of protection than under the DA, i.e., the lifetime of the creator plus 70 years, as opposed to a maximum of 25 years for protection of a design. Contrary to trademark protection, though, it may not be extended at will. The CA sets much higher standards and protects only personal intellectual creations. By virtue of that requirement, most "industrial" creations, including in most cases product label trade dress, do not qualify for protection under the CA.

Exhibit 26

Exhibit 27

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• The statutory or regulatory basis for copyright protection of product shape/configuration trade dress is:Secs. 1 and 2 of the CA, in particular Sec. 2(1) No. 4 ("Art").

• Unique statutory or regulatory requirements that must be met in order to obtain copyright protection of product shape/configuration trade dress are: none.

• Copyright Office rules or guidelines applying to the copyright protection of product shape/configuration trade dress are:not applicable.

• Examples of product shape/configuration trade dress that have been registered under the Copyright Act or recognized as being protected by copyright are: not applicable.

• The leading cases involving copyright protection of product shape/configuration trade dress are: There are quite many cases addressing copyright protection of product shape, including for lamps (OLG Karlsruhe GRUR 1994, 283 - Eileen Gray) and for furniture (OLG Düsseldorf ZUM 2006, 326, 328; OLG Frankfurt GRUR 1981, 739 - lounge chair).

E. Single Color • Single color trade dress is not protectible under copyright law. Given the requirements set by law and

leading cases, no known case has permitted the protection of single color trade dress.

F. Color Combination• Color combination trade dress is not protectible under copyright law.

G. Point of Sale Materials • Point of sale materials (e.g., banners, posters, shelf displays) trade dress is protectible under copyright

law. Point of sale materials trade dress may be protectible if it meets the requirements of Secs. 1 and 2 of the CA. Protection is not dependent on formalities or payment of fees and provides the advantage of a much longer period of protection than under the DA, i.e., the lifetime of the creator plus 70 years, as opposed to a maximum of 25 years for protection of a design. Contrary to trademark protection, though, it may not be extended at will. The CA sets much higher standards and only protects personal intellectual creations. By virtue of that requirement, most "industrial" creations, including in most cases product label trade dress, do not qualify for protection under the CA.

• The statutory or regulatory basis for copyright protection of point of sale materials trade dress is: Secs. 1 and 2 of the CA, in particular Sec. 2(1) No. 4 ("Art").

• Unique statutory or regulatory requirements that must be met in order to obtain copyright protection of point of sale materials trade dress are: none.

• Copyright Office rules or guidelines applying to the copyright protection of point of sale materials trade dress are: not applicable.

• Examples of point of sale materials trade dress that have been registered under the Copyright Act or recognized as being protected by copyright are: not applicable.

• The leading cases involving copyright protection of point of sale materials trade dress are: OLG Jena GRUR - RR 2002, 379 - Rudolstädter Vogelschießen (+); LG Köln MMR 2008, 64 - Banner (-); LG München I 21 O 3450/81 - Arbeitsschuhe-Prospekt (+); OGH Österreich 4 Ob 94/01, GRUR Int. 2002, 349 - telering.at (+); LG Frankfurt/Main 2-06 O 272/06, ZUM-RD 2006, 530 - Bildschirmmaske.

H. Exterior Building Design • Exterior building design trade dress is protectible under copyright law. Exterior building design trade dress

may be protectible if it meets the requirements of Sec. 1 and 2 of the German Copyright Act ("CA". Protection is not dependent on formalities or payment of fees and provides the advantage of a much longer period of protection than under the German Design Act ("DA"), i.e., the lifetime of the creator plus 70 years as opposed to a maximum of 25 years for protection of a design. Contrary to trademark protection, though, it may not be extended at will. The CA sets much higher standards and only protects personal intellectual creations. By virtue of that requirement, most "industrial" creations, including in most cases product label trade dress, do not qualify for protection under the CA.

• The statutory or regulatory basis for copyright protection of exterior building design trade dress is: Secs. 1 and 2(1) No. 4 ("works of architecture" ("Werke der Baukunst")) of the CA.

• Unique statutory or regulatory requirements that must be met in order to obtain copyright protection of exterior building design trade dress are:none.

• Copyright Office rules or guidelines applying to the copyright protection of exterior building design trade dress are: not applicable.

• Examples of exterior building design trade dress that have been registered under the Copyright Act or recognized as being protected by copyright are:not applicable.

Exhibit 28

Exhibit 29

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• The leading cases involving copyright protection of exterior building design trade dress are: BGHZ (Federal Court) 61, 88 - Wählamt; OLG München GRUR 1974, 484 - Betonstrukturplatten; OLG Oldenburg 1 U 50/07, NZBau 2008, 715 - Blockhausbauweise.

I. Interior Building Design• Interior building design trade dress is protectible under copyright law. Interior building design trade dress

may be protectible if it meets the requirements of Secs. 1 and 2 of the CA. Protection is not dependent on formalities or payment of fees and provides the advantage of a much longer period of protection than under the DA, i.e., the lifetime of the creator plus 70 years, as opposed to a maximum of 25 years for protection of a design. Contrary to trademark protection, though, it may not be extended at will. The CA sets much higher standards and protects only personal intellectual creations. By virtue of that requirement, most "industrial" creations, including in most cases product label trade dress, do not qualify for protection under the CA.

• The statutory or regulatory basis for copyright protection of interior building design trade dress is: Secs. 1 and 2(1) No. 4 ("works of architecture" ("Werke der Baukunst")) of the CA.

• Unique statutory or regulatory requirements that must be met in order to obtain copyright protection of interior building design trade dress are: none.

• Copyright Office rules or guidelines applying to the copyright protection of interior building design trade dress are: not applicable.

• Examples of interior building design trade dress that have been registered under the Copyright Act or recognized as being protected by copyright are: not applicable.

• The leading cases involving copyright protection of interior building design trade dress are: BGH ZUM 1999, 146, 148 - Treppenhausgestaltung (configuration of a stair house); not accepted where configuration did not reveal any particular feature, as in OLG Celle BauR 2000,1069, 1071 - Zweckbau; LG München - 7 O 20567/07, BeckRS 2009, 11767 - Fassadengestaltung (configuration of the face of a building); BGH I ZR 137/79, GRUR 1982, 107 - Kirchen-Innenraumgestaltung (configuration of the interior space of a church).

J. Other Types • The following other types of trade dress are protectible under copyright law: sounds, motion marks or

holograms.• The statutory or regulatory basis for copyright protection of these other types of trade dress is: Secs. 1, 2

(1) No. 2 ("musical works") and 2(1) No. 4 ("works of fine art") of the CA.• Unique statutory or regulatory requirements that must be met in order to obtain copyright protection of

these other types of trade dress are: none.• Copyright Office rules or guidelines applying to the copyright protection of these other types of trade dress

are: not applicable.• Examples of these other types of trade dress that have been registered under the Copyright Act or

recognized as being protected by copyright are: not applicable. • The leading cases involving copyright protection of these other types of trade dress are: It is generally

held that "jingles" or "acoustic signals" do not enjoy copyright protection. Yet, the more sophisticated and longer the "sound" is, the more likely it is that protection may be granted under the CA (e.g., OLG Hamburg ZUM 2002, 480 - mobile phone).

XV. COPYRIGHT PROTECTION OF TRADE DRESS: FORM OF NOTICE/MARKING

• For registered copyrights, use of a copyright notice is optional. It is recommended that the following marking be used and/or information be included in a notice:not applicable.

• There are no marking or notice requirements or issues unique to registered copyrights comprising trade dress:not applicable.

• For unregistered copyrights, use of a copyright notice is optional. It is recommended that the following marking be used and/or information be included in a notice: A copyright comes into existence, if at all, by creation alone, and there are no formalities, including no "notice" requirements. In practice, however, one finds such notices as ©, referring to (former) U.S. practice, or "All rights reserved" or "protected by law" ("gesetzlich geschützt"), all of which aim at deterring possible infringers. Since these notices do not "create" a copyright, use of such notice on a work found not to live up to the requirements of the CA may be grounds for being held liable for unfair competition (misleading advertising).

• There are no marking or notice requirements or issues unique to unregistered copyrights comprising trade dress.

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XVI. PATENT PROTECTION OF TRADE DRESS

A. Scope of Patent Rights• Utility patents can be obtained in this jurisdiction. German utility patents are governed by the Patent Act of

December 16, 1980, as amended ("PA"). European utility patents are governed by the European Patent Convention of October 5, 1973, as amended ("EPC").

• The basic requirements that must be met in order to obtain a utility patent are:• patentable subject matter (Only technical inventions may enjoy legal protection.);• novelty (Sec. 3 of the PA defines novelty as all knowledge not belonging to the state of the art.);• inventiveness or non-obviousness (Recent developments in court cases and the literature take the

position (as opposed to the long-standing practice) that "inventive step" under Sec. 1(1) of the GebrMG (Gebrauchsmustergesetz ("Registered Design Act")) and "inventiveness" under Sec. 1(1) of the PA are not different, i.e., both require the same efforts.);

• usefulness/utility (According to Sec. 5 of the PA, the object of a utilty patent is deemed to be useful, i.e., susceptible of industrial use, if it is to be used in any area of industry, including farming.).

• The term of protection for a utility patent is as follows: According to Sec. 16 of the PA, the term of a utility patent is 20 years as of the date of application, subject to the payment of annual annuities.

• Public disclosure of an invention constitutes an absolute bar to utility patent protection. All public disclosures become part of the state of art and accordingly are no longer novel.

• The following "lesser" forms of patent protection are available:• utility model ("petty patent") - GebrMG.

• Patent rights (utility patents and lesser forms of patents) are created through registration. Details of patent registration may be found, for utility patents, under Secs. 34-64 of the PA for German patents, under Art. 91 et seq. of the EPC for European patents and under Sec. 4 et seq. of the GebrMG for utility models. Only technical inventions may enjoy legal protection.

The following are required with regard to utility models: - novelty: Sec. 3(1) of the GebrMG defines novelty as all knowledge not belonging to the state of the art;- "inventive step" (Sec. 1(1) GebrMG): Recent developments in court cases and the literature take the position (as opposed to the long-standing practice) that "inventive step" under Sec. 1(1) of the GebrMG and "inventiveness" under Sec. 1(1) of the PA are not different, i.e., both require the same efforts;- usefulness/utility: According to Sec. 3(2) of the GebrMG, the object of a utility model is deemed to be useful, i.e., susceptible of industrial use, if it is to be used in any area of industry, including farming.

B. Protectability of Trade Dress • It may be possible to obtain direct protection for functional elements of trade dress by way of patent

protection. Sec. 3(2) No. 2 of the TMA excludes from trademark protection those signs that consist exclusively of the shape of goods that is necessary to obtain a technical result. It is generally held that this provision is meant to differentiate trademarks from technical rights. Similar wording is found in the DA. According to Sec. 3(1) No. 1 of the DA, design protection shall not subsist in features of appearance of a product that are dictated solely by their technical function. Among leading scholars are those who, with respect to design protection, take the view that the "more effective" design protection may be obtained via registration of a patent, i.e., a technical right.

• It may be possible to obtain indirect or incidental protection for trade dress by way of patent protection, for example by patenting the technology or method to produce the trade dress.

C. Form of Notice/Marking• Use of a patent notice is optional. While no particular information is required to be included in a patent

notice, it is recommended that the following information be included: While no particular information is required to be included in a patent notice, it is recommended that the following information be included: Optional notices frequently found are "patented" or "patent pending" (or similar wording in the German language). The use of any notice, direct or indirect, to the effect that technical protection is claimed does trigger Sec. 146 of the PA, entitling anyone with a "justified interest" to request information on the basis of the notice. Wrong notices may result in unfair competition claims (misleading advertising).

• There are no notice requirements or other issues that are unique to direct and/or indirect protection for trade dress by means of patent protection.

XVII. INTERFACES OF FORMS OF PROTECTION OF TRADE DRESS• Specific forms of intellectual property protection for trade dress may preclude other forms of protection.

Trademark protection, copyright protection, design protection and patent protection serve different goals. While trademarks intend to protect the origin of goods or services, copyright and, at a lower level, design

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protection are meant to protect the "creator's" interest in his work, and patent protection to protect technical functions. Generally speaking, protection of one leaves the other unaffected. Nevertheless, all of these tools possess various boundary points which may result in the exclusion of one or the other in order to avoid "double protection" of one and the same goal. Consequently, trademark protection may preclude design protection, but not vice versa. Patent protection may preclude trademark and design protection.

• Trademark protection for trade dress may be precluded if the trade dress is (or has been) the subject of:• patent protection. Patent protection relates to technical inventions only. In turn, Sec. 3(2) No. 2 of

the TMA does not afford trademark protection to signs that consist exclusively of the shape of goods that is necessary to obtain a technical result.

• Design protection for trade dress may be precluded if the trade dress is (or has been) the subject of:• trademark protection (Design protection is only possible if the design is, inter alia, new. Novelty,

however, will not be deemed to exist where the design has been disclosed to the public more than 12 months before application for registration (Sec. 6 DA). Accordingly, older trademark applications which would not fall within the above window would preclude design protection.);

• patent protection (Sec. 3(1) of the DA excludes from design protection features of the appearance of a product which are solely dictated by their technical function. Since a design may not consist of features that are dictated solely by technical function, design and patent protection may subsist for the same product. This is also valid with regard to trademark protection.).

• Copyright protection for trade dress may be precluded if the trade dress is (or has been) the subject of:• design protection. Design protection requires that the design is, inter alia, new. In order to qualify for

copyright protection, a work must be "original" and "special," all of which may have been lost when a design is published prior to the creation of a similar work (which otherwise might have been protected by copyright).

• Direct or indirect patent protection for trade dress may be precluded if the trade dress is (or has been) the subject of:

• design protection. Design protection as such, generally speaking, is not detrimental to patent protection in that design protection (not examined at the application stage) does not extend to features that are dictated solely by technical function. However, there is always the risk of premature disclosure, which would be detrimental to patent protection. In turn, patent protection is excluded only if protection is sought for aesthetic forms as such. Accordingly, technical teachings may be protected under the PA even if its effects are in an aesthetic field. "Technical teaching" means the disclosed technical feature in a given case.

• Specific forms of intellectual property protection may complement other forms of protection. See BGH GRUR 2006, 679 - Porsche Boxster (Trademark/Design).

• It may be easier to establish trademark rights in trade dress if the trade dress has been the subject of: not applicable.

• It may be easier to establish design protection in trade dress if the trade dress has been the subject of: not applicable.

• It may be easier to establish copyright protection in trade dress if the trade dress has been the subject of: not applicable.

• It may be easier to establish direct or indirect patent protection in trade dress if the trade dress has been the subject of: not applicable.

XVIII. SEARCHING AND CLEARANCE OF TRADE DRESS• It is possible to perform searches for trade dress. Searches may be carried out at the German Patent and

Trademark Office, the Office for Harmonization in the Internal Market, or the International Bureau of WIPO.

• One can perform a basic (or preliminary) search of registered trade dress by using the following print or online sources:

• for pending and/or registered trademarks: the database of the German Patent and Trademark Office (www.dpma.de - database DPINFO), the database of the Office for Harmonization in the Internal Market (www.oami.eu) or the database of the International Bureau of WIPO (www.wipo.int) -indicating trademark number, applicant/registrant, date of application/registration, etc.

• for pending and/or registered designs (industrial designs and design patents): for registered designs with the German Patent and Trademark Office (www.dpma.de - database DPMApublikationen), the International Bureau of WIPO (www.wipo.int/design), or the Office for Harmonization in the Internal Market (www.oami.eu) - indicating design number, applicant/registrant, date of application/registration, etc.

• for pending and/or registered copyrights: none (There are no registered copyrights under German law.).

• for pending and/or registered patents: German Patent and Trademark Office, European Patent Office.

• One can perform a basic (or preliminary) search of unregistered trade dress by using the following print or online sources: none.

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• There are no print or online sources available to perform a basic (or preliminary) search for unregistered trade dress. It is not possible to perform reliable searches for unregistered trade dress.

• The benefits of retaining a commercial search firm to perform a more comprehensive trade dress search are: The databases of the Patent and Trademark Office provide reliable information indicating details of trademarks, designs and patents (application/registration no., applicant/registrant, etc.). However, online sources may give only an overview of conflicting third-party rights. In most instances, therefore, it is advisable to order a search with a professional search agency.

• Searching trade dress is complicated by the following factors: not applicable.• Particular considerations in interpreting a trade dress search report and rendering an opinion of the

findings are as follows: none.

XIX. LICENSING OF TRADE DRESS

A. General• Trade dress that has been registered under an intellectual property protection scheme can be licensed in

this jurisdiction. If trademark, design or (to the extent applicable) patent protection for a product has been obtained, a license is permitted under Sec. 30 of the TMA, Sec. 31 of the DA and Sec. 15 of the PA. No particular rules apply to trade dress.

• Trade dress that has not been registered under any intellectual property protection scheme can be licensed. The TMA, in Sec. 30 (Licenses), does not distinguish between registered and unregistered trademarks. Accordingly, unregistered trade dress living up to the standards of an unregistered trademark may be licensed. The DA does not know unregistered designs. Unregistered Community designs, in turn, may not be subject to a license since they do not confer upon the owner a right to use (which could be licensed) but only a right to prevent the unauthorized imitation. Patents, if at all relevant, for trade dress can come into existence only via registration.

B. Exclusive Licenses for Registered Trade Dress• Exclusive licenses are possible for registered trade dress.See above.• An exclusive license for registered trade dress need not be recorded, but advantages of recording include:

none.• Recordal of an exclusive license for registered trade dress should be in the following form and/or contain

the following information: not applicable. • Recordal of an exclusive license for registered trade dress is made with the following Office: not

applicable. • The statutory or regulatory provision that covers exclusive licensing of registered trade dress is: Sec. 30 of

the TMA, Sec. 31 of the DA and Sec. 15 of the PA. No particular rules apply to trade dress.• The recordal deadline is: not applicable.• The consequences of failing to meet the recordal deadline are: none.

C. Non-Exclusive Licenses for Registered Trade Dress• Non-exclusive licenses are possible for registered trade dress. Both exclusive and non-exclusive licenses

in trade dress are possible, be it under a trademark, design, copyright or, where applicable, patent scheme. (Sec. 30 TMA; Sec. 31 DA; Sec. 31 CA; Sec. 15 PA.)

• A non-exclusive license for registered trade dress need not be recorded, but advantages of recording include: none.

• Recordal of a non-exclusive license for registered trade dress should be in the following form and/or contain the following information: not applicable.

• Recordal of an exclusive license for registered trade dress is made with the following Office: not applicable.

• The statutory or regulatory provision that covers non-exlusive licensing of registered trade dress is: Sec. 30 of the TMA; Sec. 31 of the DA; Sec. 31 of the CA; Sec. 15 of the PA.

• The recordal deadline is: none.• The consequences of failing to meet the recordal deadline are: none.

D. Sole Licenses for Registered Trade Dress• Sole licenses (granting only the licensee and the licensor the right to use the trade dress, but no one else)

are possible for registered trade dress. A sole license is generally regarded as a special form of the exclusive license with no additional requirements other than making the exclusive licensee/licensor a "sole" licensee/licensor.

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• A sole license for registered trade dress need not be recorded, but advantages of recording include: none.• Recordal of a sole license for registered trade dress should be in the following form and/or contain the

following information: not applicable. • Recordal of a sole license for registered trade dress is made with the following Office: not applicable. • The statutory or regulatory provision that covers sole licensing of registered trade dress is: Sec. 30 of the

TMA; Sec. 31 of the DA; Sec. 31 of the CA; Sec. 15 of the PA.• The recordal deadline is: none.• The consequences of failing to meet the recordal deadline are: none.• The following other types of licenses are possible for registered trade dress: Within the overall system of

exclusive and non-exclusive licenses, licenses may be limited to certain products, certain territories or a combination of these and other elements chosen by the parties at will.

E. Exclusive Licenses for Unregistered Trade Dress• Exclusive licenses are possible for unregistered trade dress. The TMA, in Sec. 30 (Licenses), does not

distinguish between registered and unregistered trademarks. Accordingly, unregistered trade dress living up to the standards of an unregistered trademark may be licensed. The DA does not know unregistered designs. Unregistered Community designs, in turn, may not be subject to a license since they do not confer upon the owner a right to use (which could be licensed) but only a right to prevent the unauthorized imitation. Patents, if at all relevant, for trade dress can come into existence only via registration.

• An exclusive license for unregistered trade dress need not be recorded. There is no registration.• Recordal of an exclusive license for unregistered trade dress should be in the following form and/or

contain the following information: not applicable. • Recordal of an exclusive license for unregistered trade dress is made with the following Office: not

applicable. • The statutory or regulatory provision that covers exclusive licensing of unregistered trade dress is: The

TMA, in Sec. 30 (Licenses), does not distinguish between registered and unregistered trademarks. Accordingly, unregistered trade dress living up to the standards of an unregistered trademark may be licensed. The DA does not acknowledge unregistered designs. Unregistered Community designs, in turn, may not be subject to a license since they do not confer upon the owner a right to use (which could be licensed) but only a right to prevent unauthorized imitation. Patents, if at all relevant for trade dress, can come into existence only via registration.

F. Non-Exclusive Licenses for Unregistered Trade Dress• Non-exclusive licenses are possible for unregistered trade dress. The TMA, in Sec. 30 (Licenses), does

not distinguish between registered and unregistered trademarks. Accordingly, unregistered trade dress living up to the standards of an unregistered trademark may be licensed. The DA does not acknowledge unregistered designs. Unregistered Community designs, in turn, may not be subject to a license since they do not confer upon the owner a right to use (which could be licensed) but only a right to prevent the unauthorized imitation. Patents, if at all relevant, for trade dress can come into existence only via registration.

• A non-exclusive license for unregistered trade dress need not be recorded. There is no recordation procedure.

• Recordal of a non-exclusive license for unregistered trade dress should be in the following form and/or contain the following information: not applicable.

• Recordal of a non-exclusive license for unregistered trade dress is made with the following Office: not applicable.

• The statutory or regulatory provision that covers non-exclusive licensing of unregistered trade dress is:The TMA, in Sec. 30 (Licenses), does not distinguish between registered and unregistered trademarks. Accordingly, unregistered trade dress living up to the standards of an unregistered trademark may be licensed. The DA does not acknow ledge unregistered designs. Unregistered Community designs, in turn, may not be subject to a license since they do not confer upon the owner a right to use (which could be licensed) but only a right to prevent the unauthorized imitation. Patents, if at all relevant, for trade dress can come into existence only via registration.

G. Sole Licenses for Unregistered Trade Dress• Sole licenses are possible for unregistered trade dress. The TMA, in Sec. 30 (Licenses), does not

distinguish between registered and unregistered trademarks. Accordingly, unregistered trade dress living up to the standards of an unregistered trademark may be licensed. The DA does not acknowledge unregistered designs. Unregistered Community designs, in turn, may not be subject to a license since they do not confer upon the owner a right to use (which could be licensed) but only a right to prevent the unauthorized imitation. Patents, if at all relevant, for trade dress can come into existence only via registration.

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• A sole license for unregistered trade dress need not be recorded. There is no recordation procedure. • Recordal of a sole license for unregistered trade dress should be in the following form and/or contain the

following information: not applicable.• Recordal of a sole license for unregistered trade dress is made with the following Office: not applicable. • The statutory or regulatory provision that covers sole licensing of unregistered trade dress is: The TMA, in

Sec. 30 (Licenses), does not distinguish between registered and unregistered trademarks. Accordingly, unregistered trade dress living up to the standards of an unregistered trademark may be licensed. The DA does not acknowledge unregistered designs. Unregistered Community designs, in turn, may not be subject to a license since they do not confer upon the owner a right to use (which could be licensed) but only a right to prevent the unauthorized imitation. Patents, if at all relevant, for trade dress can come into existence only via registration.

H. Other Issues• The following types of activities related to trade dress may be licensed:

• manufacturing;• selling/supplying;• importing;• exporting;• stocking (for distribution or otherwise);• advertising/promotion (Advertising/promotional rights generally are not separately licensed, as they

are regarded as adjacent rights to selling/supplying, i.e., rights necessary to properly exercise the "main right" licensed.).

• For a license of trade dress rights to be valid, the following requirements must be met: As with any other agreement, a license must contain the "essentialia negotii," i.e., those elements that are required for any agreement as well as the specific right licensed: e.g., the right to use trade dress rights by importing such products. There are no other mandatory requirements; even the absence of any consideration does not alter the character of the agreement ("free license").

• Additional essential information, not mentioned above, about recording a trade dress license includes: not applicable.

• Particular issues or unusual aspects of licensing trade dress include: none.

XX. ENFORCING TRADEMARK RIGHTS IN TRADE DRESS: AVAILABLE CAUSES OF ACTION

• If trademark rights have been acquired in trade dress, it may be possible to enforce such rights in a court proceeding based on the following statutory/regulatory causes of action:

• trademark infringement (The basis for enforcing trademark rights is Sec. 14(2)-(7) of the TMA. This "core" provision of the TMA covers in Sec. 14(2) Nos. 1, 2 and 3 direct trademark infringements or indirect trademark infringements, including situations that, under U.S. laws, would probably be covered by "passing off" principles and dilution.);

• dilution/depreciation of goodwill (Under Sec. 14(2) No. 3 of the TMA, trademark rights may be enforced against infringers even if the products or services are different, provided that the trade dress (trademark) has become known in public and its distinctiveness or reputation is affected or improperly made use of.);

• statutory passing off (under trademark or other IP statute) (An additional, though in many respects similar, route would be Sec. 4 No. 9 of the Unfair Competition Act (UCA), which, in particular, holds that the imitation of other's products is unfair (a) if resulting in an avoidable misconception about the product's origin, (b) if the valuation of the imitated goods and services is inappropriately taken advantage of or impaired or (c) if he has obtained the required information or documents for the imitation in a dishonest way. If, and to the extent that, a product enjoys trademark protection, unfair competition claims are, in general, available only if they are directed against unfair behavior not already covered by the relevant provision of the TMA. Consequently, trademark claims and unfair competition claims (including statutory claims - see below) may complement each other. Accordingly, where the owner of trademark rights in a trade dress only claims that a younger trademark/trade dress is confusingly similar, the unfair competition rules (Sec. 5(2) UCA) would not be open. Sec. 4 No. 9 of the UCA is also available in case of unregistered trade dress. However, as opposed to a registered trade dress, a non-registered trade dress needs to meet the higher standards of the UCA, i.e., requires a particular competitive individual character and originality to enjoy protection (BGH GRUR 2001, 413, 415 - Swatch). Also, the TMA provides for wider selection of defensive tools, including destruction, border seizures, and longer statute of limitations than the UCA.);

• unfair competition - trade dress infringement (Under German legal principles, statutory passing off is part of the unfair competition regime, i.e., is not an "alternative" to general unfair competition protection.).

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• If trademark rights have been acquired in trade dress, it may be possible to enforce such rights in a court proceeding based on the following causes of action at common law, civil law or other law.

XXI. ENFORCING TRADEMARK RIGHTS IN TRADE DRESS: TRADEMARK INFRINGEMENT

A. General • The statutory or regulatory provision/s prohibiting trademark infringement is/are: Sec. 14(1)-(7) of the

TMA.• To assert trademark infringement as a cause of action in a trade dress case:

• the trade dress need not be registered as a trademark, but registration is beneficial for the following reasons: Trademark rights may be created through registration, by use or via Art. 6bis (notorious rights) of the Paris Convention. As the requirements to enjoy protection outside registration are higher and need to be proven in a litigation, registration will always be beneficial; this is particularly so since the court will be bound by a registration. (A "nullity" defense by defendant in an infringement action is not available under German law; the court may stay an infringement action while an invalidity action by defendant is pending with the GPTO and the BPatG, respectively.)

• The key elements of a trademark infringement cause of action in a trade dress case are: (1) degree of distinctiveness of the trademark; (2) similarity of the goods and services; and (3) similarity of the signs. All three elements interact with each other. For example, a lower degree of similarity of the signs may be compensated for by a higher degree of similarity of the goods and services or by an increased distinctiveness of the older sign, or vice versa (BGH GRUR 2008, 1002 - Schuhpark).

• The elements of the cause of action for trademark infringement of trade dress that make it different from an infringement cause of action for a standard word mark are: As a matter of (procedural) rules, none. In practice, particular attention must be paid to the fact that, to name but a few examples, trade dress often appears in the "company" of word elements requiring an analysis of the relevance of the word element as against the trade dress factors. Also, in that trademark protection always covers the entire trade dress as filed with the GPTO and not parts of it, the question will often arise if collision in only one, albeit relevant, part of the trade dress will result into an overall infringement of the (older) trademark/trade dress.

B. Standing• In a trademark infringement case involving trade dress, the following party or parties have standing to sue:

• owner (The owner's standing is expressly referred to in Sec. 14(1) of the TMA.);• exclusive licensee (The exclusive licensee, non-exclusive licensee and/or any other person or entity

authorized by the owner to use a trademark needs the express approval of the owner to file an action (Sec. 30(3) TMA).);

• sole licensee (The exclusive licensee, non-exclusive licensee and/or any other person or entity authorized by the owner to use a trademark needs the express approval of the owner to file an action (Sec. 30(3) TMA).);

• non-exclusive licensee (The exclusive licensee, non-exclusive licensee and/or any other person or entity authorized by the owner to use a trademark needs the express approval of the owner to file an action (Sec. 30(3) TMA).);

• exclusive distributor (The exclusive distributor, non-exclusive distributor and/or any other person or entity authorized by the owner to use a trademark needs the express approval of the owner to file an action (Sec. 30(3) TMA).);

• non-exclusive distributor (The exclusive distributor, non-exclusive distributor and/or any other person or entity authorized by the owner to use a trademark needs the express approval of the owner to file an action (Sec. 30(3) TMA).).

• For an exclusive licensee to have standing, the license need not be recorded. The right to sue may be granted in a written power of attorney, by the terms of the license or even orally (even though that generally creates issues of proof if defendant disputes the standing).

• For a sole licensee to have standing, the license need not be recorded. The right to sue may be granted in a written power of attorney, by the terms of the license or even orally (even though that generally creates issues of proof if defendant disputes the standing).

• For a non-exclusive licensee to have standing, the license need not be recorded. The right to sue may be granted in a written power of attorney, by the terms of the license or even orally (even though that generally creates issues of proof if defendant disputes the standing).

C. Who May Be Sued• The following party or parties may be sued for trademark infringement in a trade dress case:

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• a direct infringer (Defendant in an infringement action is, in the first place, the person who commits the infringement, or, in the case of several persons acting jointly, each and any of them. Companies act through their representatives. The representatives, e.g., board members, may be liable in addition to the companies they work for.);

• a party who induces another party to infringe (A party inducing another party to infringe is treated as a joint infringer provided that he caused the damage by a jointly committed infringement and did not only induce the other party without acting himself. He is responsible, however, if it cannot be established which of several persons involved caused the damage by this act (Sec. 830(2) Civil Code.).);

• a party who in concert with another party infringes.

D. Forum • A court proceeding for trademark infringement in a trade dress case may be brought in the following court

or courts: District Court (Landgericht) where the wrongdoing occurred or where the defendant has its place of business. Within the District Court, it is primarily the commercial court (Kammer für Handelssachen). All 16 German federal states (Länder) have selected certain District Courts that have specific trademark competence and that are, within the rules set before, exclusive venues (according to Sec. 140(2) TMA).

• The advantages, disadvantages or limitations of asserting the cause of action in each court are as follows:not applicable.

• The time limit (or statute of limitations) for initiating a proceeding for trademark infringement in a trade dress case in each court is as follows: As a general rule, the statute of limitations runs three years as of the end of the year in which the claim arose and the plaintiff obtained knowledge of the circumstances giving rise to the claim or should have known had he or she not acted grossly negligently (Sec. 20 TMA; Secs. 195, 199 Civil Code). The statute is subject to many exceptions.

The three years statute of limitations rule pertains to all claims under Secs. 14-19c of the TMA, including cease-and-desist claims, damage claims, clais for destruction and recall of infringing products, claims for information. For damage claims, there is an absolute time limitation irrespective of the plaintiffs knowledge (10 years from the date the claim arose) according to Sec. 199(3) No. 1 of the Civil Code and irrespective of the plaintiff's knowledge and the arising of the claim (30 years from the date of the infringement action) according to Sec. 199(3) No. 2 of the Civil Code.

E. Remedies• The remedies available to a successful plaintiff in a trademark infringement case involving trade dress

are:• injunctive relief in the form of a prohibitory injunction, with special requirements, or limitations, as

follows: (Permanent) injunctive relief will be granted if and to the extent requested by plaintiff. The court is not authorized to give anything not asked for or otherwise "granted" under the law (see below).

• injunctive relief in the form of a mandatory injunction (e.g. corrective advertising, product destruction, etc.), with special requirements, or limitations, as follows: A "mandatory injunction" (this term as such is not known in German law) is possible. Recall or destruction of products, publication of judgment, etc., are recognized by Secs. 18 and 19 TMA but will be granted only if requested by plaintiff and are not unreasonable considering the overall circumstances in a given case.

• injunctive relief in the form of a temporary (or interlocutory) injunction pending trial, with special requirements, or limitations, as follows: A temporary or interlocutory injunction may precede and eventually may be followed by an action on the merits with a permanent injunction (unless defendant accepts the preliminary injunction as final and binding on the merits. Preliminary injunctions will be granted only where the matter is considered "urgent." In view of its "temporary" character, it may not have final effects (e.g., damages cannot be granted in a preliminary proceeding).

• monetary relief compensating for plaintiff's lost profits, with special requirements, or limitations, as follows: Damages are recognized in Sec. 14(6) of the TMA. There are three ways to calculate damages: plaintiff's lost profits, royalities or profits of defendant. In order to enable plaintiff to calculate the damages, plaintiff may request defendant to render account (Sec. 19 TMA; Sec. 242 Civil Code). The term "calculation" is not to be taken literally, but every request made by plaintiff must be mirrored by the figures of accounting and is at the risk of plaintiff. Lost profits of plaintiff are rarely requrested because of being very difficult to prove.

• monetary relief to compensate for past or future corrective action taken by plaintiff, with special requirements, or limitations, as follows: It is generally accepted that plaintiff may ask for monetary relief compensating for actions necessary to mitigate or even undo the consequences of a market confusion created by the use of the infringing trademark. A "rule of thumb" is that costs for a reasonable marketing campaign of the plaintiff are acceptable in this respect.

• monetary relief compensating for damage to goodwill, reputation or the value of the trade dress rights, with special requirements, or limitations, as follows: See above.

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• monetary relief in the form of a royalty, with special requirements, or limitations, as follows: See above.

• monetary relief disgorging the defendant's profits, with special requirements, or limitations, as follows: See above. The right to disgorge defendant's profits has become quite popular since the Federal Court (Bundesgerichtshof) and the courts of appeal have grossly limited the defendant's rights to deduct costs incurred.

• recovery of legal fees, expert fees or other costs incurred to bring an action, with special requirements, or limitations, as follows: Generally speaking, all costs triggered in conducting a litigation will have to be borne by the party who has been defeated. Limitations are set by the relevant statutes, e.g., only statutory fees, which are just a fraction of the time-based fees generally applied by parties, may be recovered. Contingency fees are for all practical purposes prohibited or, in any event, have no relevance in practice.

• Delay in initiating a court proceeding for trademark infringement in a trade dress case can affect the scope of remedies in the following ways: Delay may deprive the rights owner of its right to seek a temporary restraining order/preliminary injunction; preliminary relief is available only if the matter is "urgent." Urgency of a decision may, however, be denied (the court has to examine and rule ex officio on the urgency) if too much time has passed at the time the rights owner files the action. Generally speaking, and depending on local case law (courts in Germany quite often take different positions) and the complexity of a case, the period between learning of an infringement and taking preliminary action may vary between four weeks and three months before the matter is no longer considered urgent, leaving "only" a regular action on the merits to the plaintiff. Additionally, the statute of limitations may run. Recent leading cases take the position that, given the short period before the statute of limitation is triggered, claims may only "very rarely" be estopped before the statute of limitation runs. Available cases do not fit the trade dress scenario.

F. Invalidity Attack Defenses• An invalidity attack based on non-distinctiveness is not a defense to trademark infringement in a case

involving trade dress. Infringement actions and invalidity claims are subject to different procedures, i.e., infringement actions are attended by the District Court, invalidity actions primarily by the GPTO. An infringement court is bound by the registration; it may, however, stay the case if an invalidity action is pending outside infringement. However, the Court is competent to examine all four grounds for revocation of a trademark (Sec. 49(1), (2) TMA).

Moreoever, there are two things to note: first, where an action is based on an unregistered right (rarely as this may happen), the court must analyze the quality of the trademark and, therefore, must consider the non-distinctiveness defense. Also, the court must consider the defendant's defense that the distinctiveness of the trade dress is so weak that the distance between the (registered) right and the defendant's sign is wide enough to avoid a likelihood of confusion.

• An invalidity attack based on utilitarian functionality is not a defense to trademark infringement in a case involving trade dress.

• An invalidity attack based on ornamental/aesthetic functionality is not a defense to trademark infringement in a case involving trade dress.

• An invalidity attack based on functionality (no distinction between utilitarian and ornamental/aesthetic functionality) is not a defense to trademark infringement in a case involving trade dress.

G. Competitive Use Defenses • A competitive use defense based on fair use or fair dealing is permitted in a trademark infringement in a

case involving trade dress. The term "competitive use" or an equivalent translation is not known in this jurisdiction, though principles to that effect, subject to restrictions, do partly apply. In particular, the use of an unprotected sign or trade dress does not grant "grandfathering rights" against a younger protected right. There is no pre-use right in trademark law.

"Fair use" defenses against an infringement would include the following: (1) Use of an older trademark, including a trade dress, does not qualify as trademark use. This would be the case only if a consumer assumed that the use served the purpose to distinguish the (infringing) good from the same or similar goods. Accordingly, the use of the shape of a piece of chocolate protected under the TMA was not regarded as trademark use since consumers were not used to linking the form/shape of a sweet to its origin (BGH GRUR 2005, 414 - Russisches Schaumgebäck). (2) Descriptive use of a trademark is hardly relevant in trade dress cases (ECJ GRUR 2004, 234 - Gerolsteiner). (3) An infringement might also be excused if the infringer's name is used or if the use is to indicate characteristics of the good or service, such as the kind, quality, quantity, value, or geographic origin, or was necessary as a reference to the purpose of a good/service and did not violate decent practices (Sec. 23 TMA).

• Requirements for, or limitations to, a competitive use defense based on fair use or fair dealing are:see above.

• The burden of proof for a competitive use defense based on fair use or fair dealing is: always upon the person or entity invoking a right in his, her or its favor.

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• The leading cases discussing competitive use defenses based on fair use or fair dealing are: BGH GRUR 2005, 414 - Russisches Schaumgebäck; ECJ GRUR 2004, 234 - Gerolsteiner; ECJ GRUR 2007, 271 -Celine.

• A permitted competitive use defense based on functional feature or element embodied is not in defense to trademark infringement in a case involving trade dress.

• There are no other permitted competitive use defenses to trademark infringement in a case involving trade dress.

H. Other Defenses• The following other defenses to trademark infringement in a case involving trade dress are permitted: (1)

statute of limitations (Sec. 20 TMA); (2) estoppel (Sec. 21 TMA); (3) exhaustion of rights (Sec. 24 TMA); (4) non-use of a trade dress (Secs. 25, 26 TMA); (5) license defense; (6) non-infringement.

• Requirements for, or limitations to, these defenses are: (1) statute of limitations of three years; (2) acceptance by the owner of trade dress of infringing use for five years (general principles, though, might permit a much shorter period to pass in order to allow an estoppel defense); (3) exhaustion of rights (Sec. 24(1) TMA); (4) if the trade dress owner did not properly use the trademark for the registered goods/services for the last five years (provided that the trademark has been registered for at least five years), trademark rights may not be enforced against the infringer.

• The burden of proof for these defenses is: always upon the person or entity invoking a right in his, her or its favor.

• The leading cases discussing these defenses are: There are countless cases. Among them: (1) statute of limitations: leading cases have held that the statute of limitations pertaining to trademark owner's cease-and-desist claims does not run before infringer has stopped permanent infringement (see BGH GRUR 2003, 448 - gemeinnützige Wohnungsgesellschaft (nonprofit accommodation company)); (2) estoppel: where parties deal on a regular basis with each other, a trademark owner can be expected to notify infringer of the infringement much quicker than the statutory five-year period (BGH GRUR 2000, 605.607 -comtes/ComTel); (3) estoppel: three years after an unsuccessful trademark opposition may be sufficient to bar a trademark owner from filing an infringement action (BGH GRUR 1963, 478, 481); (4) exhaustion of rights (OLG Stuttgart GRUR-RR 2004, 8, 14 - BOSS; BGH GRUR 2006, 56, 59 - BOSS Club).

I. Domestic Liability • Trademark infringement activities that take place outside the country can give rise to domestic liability in

the following circumstances: Since the TMA covers only the infringement of German trademarks in Germany, outside activities are relevant only if they have a feasible effect in Germany. Such effect may cover preparatory activities (OLG Hamburg GRUR 1987, 403 - Informationsschreiben (informatory letter)) but also, and in particular, use via the Internet. Since the Internet is accessible all over Germany, every District Court is theoretically competent (Sec. 140 TMA) for an infringement action.

• The following remedies are available when domestic liability arises from trademark infringement activities that take place outside the country: the same as in the case of a "true" domestic case.

XXII. ENFORCING TRADEMARK RIGHTS IN TRADE DRESS: DILUTION/DEPRECIATION OF GOODWILL

A. General• The statutory or regulatory provision/s prohibiting dilution/depreciation of goodwill is/are: Sec. 14(2) No. 3

of the TMA; Sec. 4 No. 9(b) of the UCA.• To assert dilution/depreciation of goodwill as a cause of action in a trade dress case:

• the trade dress need not be registered as a trademark, but registration is beneficial for the following reasons: As opposed to a registered trademark, non-registered trade dress (which would not otherwise meet the requirements of a non-registered trademark) needs to meet the higher standards of the UCA, i.e., requires a particular individual character and originality to enjoy protection (BGH GRUR 2001, 413, 415 - Swatch). Also, the TMA provides for a wider selection of defensive tools, including destruction, border seizures, and a longer statute of limitations than the UCA.

• The key elements of a dilution/depreciation of goodwill cause of action in a trade dress case are: (1) similarity of the conflicting signs, though not to an extent that confusion is likely. It is sufficient that the public addressed believes that there is some sort of association between the owner of the trade dress and the infringer (ECJ GRUR 2008, 503 - adidas/Marca Mode); (2) no requirement that the conflicting goods/services are similar; (3) trade dress must be known in public and thus have a reputation; (4) distinctiveness or reputation is impaired or improperly made use of.

• The elements of the cause of action for dilution/depreciation of goodwill of trade dress that make it different from a dilution/depreciation cause of action for a standard word mark are: none.

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B. Standing• In a dilution/depreciation of goodwill case involving trade dress, the following party or parties have

standing to sue:• owner (The owner's standing is expressly referred to in Sec. 14(1) of the TMA.);• exclusive licensee (The licensee or any other person or entity authorized by the owner to use a

trademark needs the express approval of the owner to file an action (Sec. 30(3) TMA); an exclusive licensee needs to prove that his "individual interest in marketing or distributing the original product" is impaired.);

• sole licensee (The licensee or any other person or entity authorized by the owner to use a trademark needs the express approval of the owner to file an action (Sec. 30(3) TMA).);

• exclusive distributor (The licensee or any other person or entity authorized by the owner to use a trademark needs the express approval of the owner to file an action (Sec. 30(3) TMA).).

• For an exclusive licensee to have standing, the license need not be recorded. The right to sue may be granted in a written power of attorney, by the terms of the license or even orally (even though that generally creates issues of proof if defendant disputes the standing).

• For a sole licensee to have standing, the license need not be recorded. The right to sue may be granted in a written power of attorney, by the terms of the license or even orally (even though that generally creates issues of proof if defendant disputes the standing).

C. Who May Be Sued• The following party or parties may be sued for dilution/depreciation of goodwill in a trade dress case:

• a direct infringer;• a party who induces another party to infringe;• a party who in concert with another party infringes.

D. Forum • A court proceeding for dilution/depreciation of goodwill in a trade dress case may be brought in the

following court or courts: District Court (Landgericht) where the wrongdoing occurred or where the defendant has its place of business. Within the District Court, it is primarily the commercial court (Kammer für Handelssachen). All 16 German federal states (Länder) have selected certain District Courts that have specific trademark competence and that are, within the rules set before, exclusive venues (according to Sec. 140(2) of the TMA).


• The time limit (or statute of limitations) for initiating a proceeding for dilution/depreciation of goodwill in a trade dress case in each court is as follows: As a general rule, the statute of limitations runs three years as of the end of the year in which the claim arose and the plaintiff obtained knowledge of the circumstances giving rise to the claim or should have known had he or she not acted grossly negligently (Sec. 20 TMA; Secs. 195, 199 Civil Code). The statute is subject to many exceptions.

The three-year statute of limitations rule pertains to all claims under Secs. 14-19c of the TMA, including cease-and-desist claims, damage claims, claims for destruction and recall of infringing products, and claims for information. For damage claims, there is an absolute time limitation irrespective of the plaintiff's knowledge (10 years from the date the claim arose) according to Sec. 199(3) No. 1 of the Civil Code and irrespective of the plaintiff's knowledge and the arising of the claim (30 years from the date of the infringement action) according to Sec. 199(3) No. 2 of the Civil Code.

E. Remedies• The remedies available to a successful plaintiff in a dilution/depreciation of goodwill case involving trade

dress are: • injunctive relief in the form of a prohibitory injunction, with special requirements, or limitations, as

follows: (Permanent) injunctive relief will be granted if and to the extent requested by plaintiff. The court is not authorized to give anything not asked for or otherwise "granted" under the law (see below).

• injunctive relief in the form of a mandatory injunction (e.g. corrective advertising, product destruction, etc.), with special requirements, or limitations, as follows: A "mandatory injunction" (this term as such is not known in German law) is possible. Recall or destruction of products, publication of judgment, etc., are recognized by Secs. 18 and 19 of the TMA but will be granted only if requested by plaintiff and are not unreasonable considering the overall circumstances in a given case.

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• injunctive relief in the form of a temporary (or interlocutory) injunction pending trial, with special requirements, or limitations, as follows: A temporary or interlocutory injunction may precede and eventually may be followed by an action on the merits with a permanent injunction (unless defendant accepts the preliminary injunction as final and binding on the merits). Preliminary injunctions will be granted only where the matter is considered "urgent." In view of its "temporary" character, it may not have final effects (e.g., damages cannot be granted in a preliminary proceeding).

• monetary relief compensating for plaintiff's lost profits, with special requirements, or limitations, as follows: Damages are recognized in Sec. 14(6) of the TMA. There are three ways to calculate damages: plaintiff's lost profits, royalities or profits of defendant. In order to enable plaintiff to calculate the damages, plaintiff may request defendant to render account (Sec. 19 TMA; Sec. 242 Civil Code). The term "calculation" is not to be taken literally, but every request made by plaintiff must be mirrored by the figures of accounting and is at the risk of plaintiff. Lost profits of plaintiff are rarely requrested because they are very difficult to prove.



• monetary relief in the form of a royalty with special requirements, or limitations, as follows: See above.



• Delay in initiating a court proceeding for dilution/depreciation of goodwill in a trade dress case can affect the scope of remedies in the following ways: The three-year statute of limitations rule pertains to all causes of action under Secs. 14-19c of the TMA, including cease-and-desist claims, damages, destruction and recall of infringing products, accounting. In order to put a matter to "rest" at some time, there is an absolute limitation of ten years calculated as of the date the cause of action has been triggered (Sec. 199(3) No. 1 Civil Code); in damage cases causes of action are absolutely barred 30 years after the infringing action occurred, no matter whether the plaintiff had any knowledge (Sec. 199(3) No. 2 Civil Code).

Delay may deprive the rights owner of its right to seek a temporary restraining order/preliminary injunction; preliminary relief is available only if the matter is "urgent." Urgency of a decision may, however, be denied (the court has to examine and rule ex officio on the urgency) if too much time has passed at the time the rights owner files the action. Generally speaking, and depending on local case law (courts in Germany quite often take different positions) and the complexity of a case, the period between learning of an infringement and taking preliminary action may vary between four weeks and three months before the matter is no longer considered urgent, leaving "only" a regular action on the merits to the plaintiff. Additionally, the statute of limitations may run. Recent leading cases take the position that, given the short period before the statute of limitations is triggered, claims may only very rarely be estopped before the statute of limitations runs. Available cases do not fit the trade dress scenario.

F. Invalidity Attack Defenses• An invalidity attack based on non-distinctiveness is not a defense to dilution/depreciation of good will in a

case involving trade dress. If, depending on the circumstances of a case, an action is based on unfair competition (i.e., it is not an infringement under the TMA), the issue becomes necessarily part of the considerations, though in "disguised" form (See Section XX). As opposed to a registered trademark, non-registered trade dress (which would not otherwise meet the requirements of a non-registered trademark) needs to meet the higher standards of the UCA, i.e., requires a particular individual character and originality to enjoy protection (BGH GRUR 2001, 413, 415 - Swatch). Also, the TMA provides for a wider selection of defensive tools, including destruction, border seizures, and a longer statute of limitations than the UCA.

• An invalidity attack based on utilitarian functionality is not a defense to dilution/depreciation of good will in a case involving trade dress. See above and Section XXI.

• An invalidity attack based on ornamental/aesthetic functionality is not a defense to dilution/depreciation of good will in a case involving trade dress. See above. In unfair competition cases "ornamental/aesthetic functionality" may even cause the trade dress to be distinctive. As opposed to a registered trademark, non-registered trade dress (which would not otherwise meet the requirements of a non-registered trademark)

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needs to meet the higher standards of the UCA, i.e., requires a particular individual character and originality to enjoy protection (BGH GRUR 2001, 413, 415 - Swatch). Also, the TMA provides for a wider selection of defensive tools, including destruction, border seizures, and a longer statute of limitations than the UCA.

• An invalidity attack based on functionality (no distinction between utilitarian and ornamental/aesthetic functionality) is not a defense to dilution/depreciation of good will in a case involving trade dress.See above.

G. Competitive Use Defenses • A competitive use defense based on fair use or fair dealing is permitted as a defense to

dilution/depreciation of good will in a case involving trade dress. "Fair dealing" and "dilution" are, in the first instance, mutually exclusive. If the use is not "improper," there is no cause of action under Sec. 14(2) No. 3 of the TMA. If there is a cause of action, other defenses may apply ((1) statute of limitations (Sec. 20 TMA); (2) estoppel (Sec. 21 TMA); (3) non-use of a trade dress (Secs. 25, 26 TMA); (4) license defense; and, of course, (5) non-infringement).

• Requirements for, or limitations to, a competitive use defense based on fair use or fair dealing are: "Fair dealing" and "dilution" are, in the first instance, mutually exclusive. If the use is not "improper," there is no cause of action under Sec. 14(2) No. 3 of the TMA. If there is a cause of action, other defenses may apply ((1) statute of limitations (Sec. 20 TMA); (2) estoppel (Sec. 21 TMA); (3) non-use of a trade dress (Secs. 25, 26 TMA); (4) license defense; and, of course, (5) non-infringement). (See Sections XXI.G. and XXI.H.)


• The leading cases discussing a competitive use defenses based on fair use or fair dealing are: BGH GRUR 2005, 583 - Lila Postkarte (Pink postcard).

• A competitive use defense based on a functional feature or element embodied in the trade dress is not a permitted defense to dilution/depreciation of good will in a case involving trade dress. If a trade dress is not registered as a trademark or meets the requirements of an unregistered trademark, protection may only be available under the Act against Unfair Competition. In that context, the defense may be available.

• No other competitive use defenses are permitted defenses to dilution/depreciation of good will in a case involving trade dress.

H. Other Defenses• The following other defenses to dilution/depreciation of good will in a case involving trade dress are

permitted: (1) statute of limitations (Sec. 20 TMA); (2) estoppel (Sec. 21 TMA); (3) exhaustion of rights (Sec. 24 TMA); (4) non-use of a trade dress (Secs. 25, 26 TMA); (5) license defense; (6) non-infringement.

• Requirements for or limitations to these defenses are: (1) statute of limitations of three years; (2) acceptance by owner of trade dress of infringing use for five years (general principles, though, might permit a much shorter period to pass in order to allow an estoppel defense); (3) exhaustion of rights (Sec. 24 TMA); (4) if the owner of a trade dress did not properly use the trademark for the registered goods/services for the last five years (provided that the trademark has been registered for at least five years), trademark rights may not be enforced against the infringer.


• The leading cases discussing these defenses are: There are countless cases. Among them: (1) statute of limitations: Leading cases have held that the statute of limitations pertaining to trademark owner's cease-and-desist claims does not run before infringer has stopped permanent infringement (see BGH GRUR 2003, 448 - gemeinnützige Wohnungsgesellschaft (nonprofit accommodation company)); (2) estoppel: Where parties deal on a regular basis with each other, a trademark owner can be expected to notify an infringer of the infringement much quicker than the statutory five-year period (BGH GRUR 2000, 605.607 -comtes/ComTel); (3) estoppel: Three years after an unsuccessful trademark opposition may be sufficient to bar a trademark owner from filing an infringement action (BGH GRUR 1963, 478, 481); (4) exhaustion of rights (OLG Stuttgart GRUR-RR 2004, 8, 14 - BOSS; BGH GRUR 2006, 56, 59 - BOSS Club).

I. Domestic Liability• Dilution/depreciation of goodwill activities that take place outside the country give rise to domestic liability

in the following circumstances: In view of the fact that Sec. 14(2) No. 3 of the TMA covers only "domestic" dilution, "foreign" dilution would probably matter only if feasible parts of the infringement have taken place within this jurisdiction or "cross border."

• The following remedies are available when domestic liability arises from dilution/depreciation of goodwill activities that take place outside the country: the same as in a "true" domestic case.

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XXIII. ENFORCING TRADEMARK RIGHTS IN TRADE DRESS: STATUTORY PASSING OFF

A. General • The statutory or regulatory provision/s prohibiting statutory passing off (under trademark or other IP

statute) is/are: Sec. 14(2) No. 3 of the TMA; Sec. 4 No. 9(a), (b) of the UCA.• To assert statutory passing off as a cause of action in a trade dress case:

• the trade dress need not be registered as a trademark, but registration is beneficial for the following reasons: As opposed to a registered trademark, non-registered trade dress (which would not otherwise meet the requirements of a non-registered trademark) needs to meet the higher standards of the UCA, i.e., requires a particular individual character and originality to enjoy protection (BGH GRUR 2001, 413, 415 - Swatch). Also, the TMA provides for a wider selection of defensive tools, including destruction, border seizures, and a longer statute of limitations than the UCA.

• The key elements of a statutory passing off cause of action in a trade dress case are: (1) similarity of the conflicting signs, though not to an extent that confusion is likely. It is sufficient that the public addressed believes that there is some sort of association between the owner of trade dress and the infringer (ECJ GRUR 2008, 503 - adidas/Marca Mode); (2) no requirement that the conflicting goods/services are similiar; (3) trade dress must be known in public and thus have a reputation; (4) distinctiveness or reputation is impaired or improperly made use of. Passing off requires an "image transfer" or "transfer of reputation."

• The elements of the cause of action for statutory passing off of trade dress that make it different from statutory passing off cause of action for a standard word mark are:none.

B. Standing• In a statutory passing off case involving trade dress, the following party or parties have standing to sue:

• owner (The owner's standing is expressly referred to in Sec. 14(1) of the TMA.);• exclusive licensee (The exclusive licensee, non-exclusive licenseeand/or any other person or entity






• For an exclusive licensee to have standing, the license need not be recorded.• For a sole licensee to have standing, the license need not be recorded.

C. Who May Be Sued• The following party or parties may be sued for statutory passing off in a trade dress case:

• a direct infringer (Defendant in an infringement action is, in the first place, the person who commits the infringement, or in the case of several persons acting jointly, each and any of them. Companies act through their representatives. The representatives, e.g., board members, may be liable in addition to the companies they work for.);

• a party who induces another party to infringe (A party inducing another party to infringe is treated as a joint infringer provided that he caused the damage by a jointly committed infringement and did not only induce the other party without acting himself. He is responsible, however, if it cannot be established which of several persons involved caused the damage by this act (Sec. 830(2) Civil Code).);


D. Forum

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• A court proceeding for statutory passing off in a trade dress case may be brought in the following court or courts: District Court (Landgericht) where the wrongdoing occurred or where the defendant has its place of business. Within the District Court, it is primarily the commercial court (Kammer für Handelssachen). All 16 German federal states (Länder) have selected certain District Courts that have specific trademark competence and that are, within the rules set before, exclusive venues (according to Sec. 140(2) of the TMA).


• The time limit (or statute of limitations) for initiating a proceeding for statutory passing off in a trade dress case in each court is as follows: As a general rule, the statute of limitations runs three years as of the end of the year in which the claim arose and the plaintiff obtained knowledge of the circumstances giving rise to the claim or should have known had he or she not acted grossly negligent (Sec. 20 TMA; Secs. 195, 199 Civil Code). The statute is subject to many exceptions.

The three-year statute of limitations rule pertains to all claims under Secs. 14-19c of the TMA, including cease-and-desist claims, damage claims, claims for destruction and recall of infringing products, and claims for information. For damage claims, there is an absolute time limitation irrespective of the plaintiff's knowledge (10 years from the date the claim arose) according to Sec. 199(3) No. 1 of the Civil Code and irrespective of the plaintiff's knowledge and the arising of the claim (30 years from the date of the infringement action) according to Sec. 199(3) No. 2 of the Civil Code.

In addition, causes of action outside the TMA and based solely on unfair competition principles may already be barred by the statute of limitations after six months.

E. Remedies• The remedies available to a successful plaintiff in a statutory passing off case involving trade dress are:

• injunctive relief in the form of a prohibitory injunction, with special requirements, or limitations, as follows: (Permanent) injunctive relief will be granted if and to the extent requested by plaintiff. The court is not authorized to give anything not asked for or otherwise "granted" under the law (see below).

• injunctive relief in the form of a mandatory injunction (e.g. corrective advertising, product destruction, etc.), with special requirements, or limitations, as follows: A "mandatory injunction" (this term as such is not known in German law) is possible. Recall or destruction of products, publication of judgment, etc., are recognized by Secs. 18 and 19 of the TMA, but will be granted only if requested by plaintiff and are not unreasonable considering the overall circumstances in a given case.

• injunctive relief in the form of a temporary (or interlocutory) injunction pending trial, with special requirements, or limitations, as follows: A temporary or interlocutory injunction may precede and eventually may be followed by an action on the merits with a permanent injunction (unless defendant accepts the preliminary injunction as final and binding on the merits). Preliminary injunctions will be granted only where the matter is considered "urgent." In view of its "temporary" character, it may not have final effects (e.g., damages cannot be granted in a preliminary proceeding).

• monetary relief compensating for plaintiff's lost profits, with special requirements, or limitations, as follows: Damages are recognized in Sec. 14(6) of the TMA. There are three ways to calculate damages: plaintiff's lost profits, royalities or profits of defendant. In order to enable plaintiff to calculate the damages, plaintiff may request defendant to render account (Sec. 19 TMA; Sec. 242 Civil Code). The term "calculation" is not to be taken literally, but every request made by plaintiff must be mirrored by the figures of accounting and is at the risk of plaintiff. Lost profits of plaintiff are rarely requested because they are very difficult to prove.





• recovery of legal fees, expert fees or other costs incurred to bring an action, with special requirements, or limitations, as follows: Generally speaking, all costs triggered in conducting a litigation will have to be borne by the party who has been defeated. Limitations are set by the relevant statutes, e.g., only statutory fees, which are just a fraction of the time-based fees generally

39

applied by parties, may be recovered. Contingency fees are for all practical purposes prohibited or, in any event, have no relevance in practice.

• Delay in initiating a court proceeding for statutory passing off in a trade dress case can affect the scope of remedies in the following ways: The three-year statute of limitations rule pertains to all causes of action under Secs. 14-19c of the TMA, including cease-and-desist claims, damages, destruction and recall of infringing products, accounting. In order to put a matter to "rest" at some time, there is an absolute limitation of ten years calculated as of the date the cause of action has been triggered (Sec. 199(3) No. 1 Civil Code); in damage cases causes of action are absolutely barred 30 years after the infringing action occurred, no matter whether the plaintiff had any knowledge (Sec. 199(3) No. 2 Civil Code).

Delay may deprive the rights owner of its right to seek a temporary restraining order/preliminary injunction; preliminary relief is available only if the matter is "urgent." Urgency of a decision may, however, be denied (the court has to examine and rule ex officio on the urgency) if too much time has passed at the time the rights owner files the action. Generally speaking, and depending on local case law (courts in Germany quite often take different positions) and the complexity of a case, the period between learning of an infringement and taking preliminary action may vary between four weeks and three months before the matter is no longer considered urgent, leaving "only" a regular action on the merits to the plaintiff. Additionally, the statute of limitations may run. Recent leading cases take the position that, given the short period before the statute of limitation is triggered, claims may only very rarely be estopped before the statute of limitations runs. Available cases do not fit the trade dress scenario.

F. Invalidity Attack Defenses• An invalidity attack based on non-distinctiveness is not a defense to statutory passing off in a case

involving trade dress. Cases outside the TMA, under Sec. 4 No. 9 of the UCA, require that the trade dress, in order to enjoy protection, is distinctive, i.e., has a particular individual character and originality. Accordingly, in such a case, a defense on non-distinctiveness is feasible. An invalidity attack is also feasible where the trade dress arguably lives up to the requirements of a non-registered trademark. The lines between trademark distinctiveness and unfair competition distinctiveness may sometimes be blurry.

• An invalidity attack based on utilitarian functionality is not a defense to statutory passing off in a case involving trade dress. Again, an invalidity attack based on utilitarian functionality is never a defense in an infringement case where the trade dress is registered as a trademark. Where a trade dress is not registered as a trademark, the defense may be available under both trademark and unfair competition laws (cf. BGH GRUR 2007, 339 - Stufenleitern).

• An invalidity attack based on ornamental/aesthetic functionality is not a defense to statutory passing off in a case involving trade dress. Under the unfair competition scheme it may be "ornamental/aestetic functionalty" that makes the trade dress distinctive. As opposed to a registered trademark, non-registered trade dress (which would not otherwise meet the requirements of a non-registered trademark) needs to meet the higher standards of the UCA, i.e., requires a particular individual character and originality to enjoy protection (BGH GRUR 2001, 413, 415 - Swatch). Also, the TMA provides for a wider selection of defensive tools, including destruction, border seizures, and a longer statute of limitations than the UCA.

• An invalidity attack based on functionality (no distinction between utilitarian and ornamental/aesthetic functionality) is not a defense to statutory passing off in a case involving trade dress. See above.

G. Competitive Use Defenses • A competitive use defense based on fair use or fair dealing is not a permitted defense to statutory passing

off in a case involving trade dress. (1) statute of limitations (Sec. 20 TMA); (2) estoppel (Sec. 21 TMA); (3) exhaustion of rights (Sec. 24 TMA); (4) non-use of a trade dress (Secs. 25, 26 TMA); (5) license defense; (6) non-infringement. See Section XXIII.H.

• A competitive use defense based on a functional feature or element embodied in the trade dress is not a permitted defense to statutory passing off in a case involving trade dress. (1) statute of limitations (Sec. 20 TMA); (2) estoppel (Sec. 21 TMA); (3) exhaustion of rights (Sec. 24 TMA); (4) non-use of a trade dress (Secs. 25, 26 TMA); (5) license defense; (6) non-infringement. See Section XXIII.H.

• No other competitive use defenses to statutory passing off in a case involving trade dress are permitted.

H. Other Defenses• The following other defenses to statutory passing off in a case involving trade dress are permitted: (1)


• Requirements for, or limitations to, these defenses are: (1) statute of limitations of three years; (2) acceptance by owner of trade dress of infringing use for five years (general principles, though, might permit a much shorter period to pass in order to allow an estoppel defense); (3) exhaustion of rights (Sec. 24 TMA); (4) if the owner of a trade dress did not properly use the trademark for the registered goods/services for the last five years (provided that the trademark has been registered for at least five years), trademark rights may not be enforced against the infringer.

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• The burden of proof for these defenses are: always upon the person or entity invoking a right in his, her or its favor.

• The leading cases for these defenses are: There are countless cases. Among them: (1) statute of limitations: Leading cases have held that the statute of limitations pertaining to a trademark owner's cease-and-desist claims does not run before the infringer has stopped permanent infringement (see BGH GRUR 2003, 448 - gemeinnützige Wohnungsgesellschaft (nonprofit accommodation company)); (2) estoppel: Where the parties deal on a regular basis with each other, a trademark owner can be expected to notify the infringer of the infringement much quicker than the statutory five-year period (BGH GRUR 2000, 605, 607 - comtes/ComTel); (3) estoppel: Three years after an unsuccessful trademark opposition may be sufficient to bar a trademark owner from filing an infringement action (BGH GRUR 1963, 478, 481); (4) exhaustion of rights (OLG Stuttgart GRUR-RR 2004, 8, 14 - BOSS; BGH GRUR 2006, 56, 59 -BOSS Club).

I. Domestic Liability • Statutory passing off activities that take place outside the country give rise to domestic liability in the

following circumstances: Since the TMA covers only the infringement of German trademarks in Germany, outside activities are relevant only if they have a feasible effect in Germany. Such effect may cover preparatory activities (OLG Hamburg GRUR 1987, 403 - Informationsschreiben (informatory letter)) but also, and in particular, the use via the Internet. Since the Internet is accessible all over Germany, every District Court is theoretically competent (Sec. 140 TMA) for an infringement action.

• The following remedies are available when domestic liability arises from statutory passing off activities that take place outside the country: The same remedies as in regular domestic cases apply.

XXIV. ENFORCING TRADEMARK RIGHTS IN TRADE DRESS: TRADE DRESS INFRINGEMENT

A. General • The statutory or regulatory provision/s prohibiting trade dress infringement is/are: Sec. 14(1)-(7) of the

TMA, and, indirectly, Sec. 4 No. 9 of the UCA.• To assert trade dress infringement as a cause of action:

• the trade dress need not be registered as a trademark, but registration is beneficial for the following reasons: Given the requirements for an unregistered trade dress under Sec. 4 of the TMA to qualify as a protected trademark, registration is beneficial as an infringer (defendant) may not claim in an infringement action based on a registered trademark that the registered trademark is void or voidable.

Trademark rights may be created through registration, use or via Art. 6bis (notorious rights) of the Paris Convention. As the requirements to enjoy protection outside registration are higher and need to be proven in a litigation, registration will always be beneficial; this is particularly so since the court will be bound by a registration. (A "nullity" defense by defendant in an infringement action is not available under German law; the court may stay an infringement action while an invalidity action by defendant is pending with the GPTO and the BPatG, respectively.)

• The key elements of a trade dress infringement cause of action are: (1) degree of distinctiveness of the trademark; (2) similarity of the goods and services; and (3) similarity of the signs. All three elements interact with each other. For example, a lower degree of similarity of the signs may be compensated for by a higher degree of similarity of the goods and services or by an increased distinctiveness of the older sign, or vice versa (BGH GRUR 2008, 1002 - Schuhpark).

• The elements of the cause of action for trade dress infringement that make it different from an infringement cause of action for a standard word mark are:none.

B. Standing• In a trade dress infringement case the following party or parties have standing to sue:

• owner (The owner's standing is expressly referred to in Sec. 14(1) of the TMA.);• exclusive licensee (The exclusive licensee, non-exclusive licensee and/or any other person or entity




41



• For an exclusive licensee to have standing, the license need not be recorded.The right to sue may be granted in a written power of attorney, by the terms of the license or even orally (even though that generally creates issues of proof if defendant disputes the standing).

• For a sole licensee to have standing, the license need not be recorded. See above. The right to sue may be granted in a written power of attorney, by the terms of the license or even orally (even though that generally creates issues of proof if defendant disputes the standing).

• For a non-exclusive licensee to have standing, the license need not be recorded. See above. The right to sue may be granted in a written power of attorney, by the terms of the license or even orally (even though that generally creates issues of proof if defendant disputes the standing).

C. Who May Be Sued• The following party or parties may be sued for trade dress infringement:

• a direct infringer (Defendant in an infringement action is, in the first place, the person who commits the infringement, or in the case of several persons acting jointly, each and any of them. Companies act through their representatives. The representatives, e.g., board members, may be liable in addition to the companies they work for.);



D. Forum • A court proceeding for trade dress may be brought in the following court or courts: District Court

(Landgericht) where the wrongdoing occurred or where the defendant has its place of business. Within the District Court, it is primarily the commercial court (Kammer für Handelssachen). All 16 German federal states (Länder) have selected certain District Courts that have specific trademark competence and that are, within the rules set before, exclusive venues (according to Sec. 140(2) of the TMA).


• The time limit (or statute of limitations) for initiating a proceeding for trade dress infringement in each court is as follows: As a general rule, the statute of limitations runs three years as of the end of the year in which the claim arose and the plaintiff obtained knowledge of the circumstances giving rise to the claim or should have known had he or she not acted grossly negligent (Sec. 20 TMA; Secs. 195, 199 Civil Code). The statute is subject to many exceptions.

The three-year statute of limitations rule pertains to all claims under Secs. 14-19c of the TMA, including cease-and-desist claims, damage claims, claims for destruction and recall of infringing products, claims for information. For damage claims, there is an absolute time limitation irrespective of the plaintiff's knowledge (10 years from the date the claim arose) according to Sec. 199(3) No. 1 of the Civil Code and irrespective of the plaintiff's knowledge and the arising of the claim (30 years from the date of the infringement action) according to Sec. 199(3) No. 2 of the Civil Code.

E. Remedies• The remedies available to a successful plaintiff in a trade dress infringement case are:

• injunctive relief in the form of a prohibitory injunction, with special requirements, or limitations, as follows: (Permanent) injunctive relief will be granted if and to the extent requested by plaintiff. The court is not authorized to give anything not asked for or otherwise "granted" under the law (see below).

• injunctive relief in the form of a mandatory injunction (e.g. corrective advertising, product destruction, etc.), with special requirements, or limitations, as follows: A "mandatory injunction" (this term as such is not known in German law) is possible. Recall or destruction of products, publication of judgment, etc., is recognized by Secs. 18 and 19 of the TMA, but will be granted only if requested by plaintiff and is not unreasonable considering the overall circumstances in a given case.

• injunctive relief in the form of a temporary (or interlocutory) injunction pending trial, with special requirements, or limitations, as follows: A temporary or interlocutory injunction may precede and

42

eventually may be followed by an action on the merits with a permanent injunction (unless defendant accepts the preliminary injunction as final and binding on the merits). Preliminary injunctions will be granted only where the matter is considered "urgent." In view of its "temporary" character, it may not have final effects (e.g., damages cannot be granted in a preliminary proceeding).

• monetary relief compensating for plaintiff's lost profits, with special requirements, or limitations, as follows: Damages are recognized in Sec. 14(6) of the TMA. There are three ways to calculate damages: plaintiff's lost profits, royalities or profits of defendant. In order to enable plaintiff to calculate the damages, plaintiff may request defendant to render account (Sec. 19 TMA; Sec. 242 Civil Code). The term "calculation" is not to be taken literally, but every request made by plaintiff must be mirrored by the figures of accounting and is at the risk of plaintiff. Lost profits of plaintiff are rarely requrested because they are very difficult to prove.






• Delay in initiating a court proceeding for trade dress infringement can affect the scope of remedies in the following ways: Delay may deprive the rights owner of its right to seek a temporary restraining order/preliminary injunction; preliminary relief is available only if the matter is "urgent." Urgency of a decision may, however, be denied (the court has to examine and rule ex officio on the urgency) if too much time has passed at the time the rights owner files the action. Generally speaking, and depending on local case law (courts in Germany quite often take different positions) and the complexity of a case, the period between learning of an infringement and taking preliminary action may vary between four weeks and three months before the matter is no longer considered urgent, leaving "only" a regular action on the merits to the plaintiff. Additionally, the statute of limitations may run. Recent leading cases take the position that, given the short period before the statute of limitations is triggered, claims may only very rarely be estopped before the statute of limitations runs. Available cases do not fit the trade dress scenario.

F. Invalidity Attack Defenses• An invalidity attack based on non-distinctiveness is not a defense to trade dress infringement.

Infringement actions and invalidity claims are subject to different procedures," i.e., infringement actions are attended by the District Court, invalidity actions primarily by the GPTO. An infringement court is bound by the registration; it may, however, stay the case if an invalidity action is pending outside infringement. However, the court is competent to examine all four grounds for revocation of a trademark (Sec. 49(1), (2) TMA).

Moreoever, there are two things to note. First, where an action is based on an unregistered right (rarely as this may happen), the court must analyze the quality of the trademark and, therefore, must consider the non-distinctiveness defense. Second, the court must consider the defendant's defense that the distinctiveness of the trade dress is so weak that the distance between the (registered) right and the defendant's sign is wide enough to avoid a likelihood of confusion.

• An invalidity attack based on utilitarian functionality is not a defense to trade dress infringement. See above.

• An invalidity attack based on ornamental/aesthetic functionality is not a defense to trade dress infringement. A defendant who has misappropriated particular elements (and not the entirety of a trade dress) can assert that those elements alone are not subject to protection because of ornamental functionality.

• An invalidity attack based on functionality (no distinction between utilitarian and ornamental/aesthetic functionality) is not a defense to trade dress infringement. See above.

G. Competitive Use Defenses

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• A competitive use defense based on fair use or fair dealing is a permitted defense to trade dress infringement. The term "competitive use" or an equivalent translation is not known in this jurisdiction, though principles to that effect, subject to restrictions, do partly apply. In particular, the use of an unprotected sign or trade dress does not grant "grandfathering rights" against a younger protected right. There is no pre-use right in trademark law.

"Fair use" defenses against an infringement would include the following: (1) Use of an older trademark, including a trade dress, does not qualify as trademark use. This would be the case only if a consumer assumed that the use served the purpose to distinguish the (infringing) good from the same or similar goods. Accordingly, the use of the shape of a piece of chocolate protected under the TMA was not regarded as trademark use since consumers were not used to linking the form/shape of a sweet to its origin (BGH GRUR 2005, 414 - Russisches Schaumgebäck). (2) Descriptive use of a trademark is hardly relevant in trade dress cases (ECJ GRUR 2004, 234 - Gerolsteiner). (3) An infringement might also be excused if the infringer's name is used or if the use is to indicate characteristics of the good or service such as the kind, quality, quantity, value or geographic origin or was necessary as a reference to the purpose of a good/service and did not violate decent practices (Sec. 23 TMA).

• Requirements for, or limitations to, a competitive use defense based on fair use or fair dealing are: See above.


• The leading cases discussing a competitive use defenses based on fair use or fair dealing are:BGH GRUR 2005, 414 - Russisches Schaumgebäck; ECJ GRUR 2004, 234 - Gerolsteiner; ECJ GRUR 2007, 271 - Celine.

• A competitive use defense based on a functional feature or element embodied in the trade dress is not a permitted defense to trade dress infringement. See above.

• There are no other competitive use defenses to trade dress infringement. See above.

H. Other Defenses• The following other defenses to trade dress infringement in a case involving trade dress are permitted: (1)


• Requirements for, or limitations to these defenses are: 1) Statute of limitations of three years; (2) Acceptance by owner of trade dress of infringing use for five years; general principles, though, might permit a much shorter period to pass in order to allow an estoppel defense; (3) Exhaustion of rights (Sec. 24 (1) TMA); (4) If the owner of a trade dress did not properly use the trademark for the registered goods/services for the last five years (provided that the trademark has been registered for at least five years), trademark rights may not be enforced against the infringer.


• The leading cases for these defenses are: There are countless cases. Among them: (1) statute of limitations: Leading cases have held that the statute of limitations pertaining to a trademark owner's cease-and-desist claims does not run before the infringer has stopped permanent infringement (see BGH GRUR 2003, 448 - gemeinnützige Wohnungsgesellschaft (nonprofit accommodation company)); (2) estoppel: Where the parties deal on a regular basis with each other, a trademark owner can be expected to notify the infringer of the infringement much quicker than the statutory five-year period (BGH GRUR 2000, 605, 607 - comtes/ComTel); (3) estoppel: Three years after an unsuccessful trademark opposition may be sufficient to bar a trademark owner from filing an infringement action (BGH GRUR 1963, 478, 481); (4) exhaustion of rights (OLG Stuttgart GRUR-RR 2004, 8, 14 - BOSS; BGH GRUR 2006, 56, 59 -BOSS Club).

I. Domestic Liability • Trade dress infringement activities that take place outside the country give rise to domestic liability in the

following circumstances: Since the TMA covers only the infringement of German trademarks in Germany, outside activities are relevant only if they have a feasible effect in Germany. Such effect may cover preparatory activities (OLG Hamburg GRUR 1987, 403 - Informationsschreiben (informatory letter)) but also, and in particular, the use via the Internet. Since the Internet is accessible all over Germany, every District Court is theoretically competent (Sec. 140 TMA) for an infringement action.

• The following remedies are available when domestic liability arises from unfair competition -- trade dress infringement activities that take place outside the country: the same as in a "true" domestic case.

XXV. ENFORCING TRADEMARK RIGHTS IN TRADE DRESS: NON-STATUTORY PASSING OFF

• Not applicable.

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XXVI. ENFORCING DESIGN RIGHTS IN TRADE DRESS

A. General • If industrial design/design patent rights have been acquired in trade dress, it may be possible to enforce

such rights in a court proceeding based on the following causes of action:• design infringement;• Sec. 4 No. 9 of the UCA (indirectly).

• The relevant statutory or regulatory prohibiting infringement of an industrial design/design patent provision(s) is/are: Sec. 42 DA; Arts. 19, 89 CDR.

• To assert design infringement as a cause of action in a trade dress case:• the trade dress must be registered as a design. A design created under the DA is always a

registered design as German law does not know an unregistered design. By contrast, a Community design may also come into existence as an unregistered design and is, via Art. 89 of the CDR, also protected and enforceable in Germany.

• The key elements of a design infringement cause of action in a trade dress case are: the use of a product (i.e., for any purpose, including manufacture, offer, distribution, import, export, possession) incorporating the features of a (protected) design without permission of the owner. The protection of the design extends to designs that do not create a different overall impression in the eyes of an attentive user. As a design is an unexamined right, i.e., it will be registered by the GPTO without examination if certain formal requirements are met, the quality of the design, i.e., novelty and individual character, has to be proven by plaintiff as part of an infringement litigation.

• Special concerns/issues about asserting trade dress rights via design law are: The defendant in an infringement action may raise the defense of invalidity of the design for lack of novelty and/or lack of individuality in view of other designs around.

B. Standing• In a design infringement case involving trade dress, the following party or parties have standing to sue:

• owner (the owner of the design right under the express provision of Sec. 38(1) of the DA);• exclusive licensee (Exclusive licensees have standing to file an action even without express

approval of the owner unless the license provides for a different rule.);• sole licensee (same as for exclusive licensee, a sole license being a special breed of the exclusive

license);• non-exclusive licensee (only with the express permission of the registered owner of the design);• exclusive distributor (same as for exclusive licensee); • non-exclusive distributor (same as for non-exclusive licensee).

• Not applicable.

C. Who May Be Sued• The following party or parties may be sued for design infringement in a trade dress case:

• a direct infringer (See Sec. 42(1) DA and, in addition, Section XXI, referring to the (same) rules under the TMA.);

• a party who induces another party to infringe; • a party who in concert with another party infringes.

D. Forum • A court proceeding for design infringement in a trade dress case may be brought in the following court or

courts: An action may be brought in the District Court where the defendant resides/has its place of business or in the District Court where the infringement occurred. In line with Sec. 52 DA, most German states have opted for combining several districts with one designated "design court" to handle matters. Infringement cases involving Community designs need to be handled by the Community Design Courts (cf. Arts. 80, 82 CDR), which, by and large, are identical to those courts having specially desgnated competence under the DA.


• The time limit (or statute of limitations) for initiating a proceeding for design infringement in a trade dress case in each court is as follows: The time limit is three years starting at the end of the year in which infringement occurred and plaintiff first obtained knowledge of the circumstances giving rise to the claim or should have known had he or she not acted grossly negligently (Sec. 49 DA; Art. 89 CDR).

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E. Remedies• The remedies available to a successful plaintiff in a design infringement case involving trade dress are:

• Injunctive relief in the form of a prohibitory injunction, with special requirements, or limitations, as follows: (Permanent) injunctive relief will be granted if and to the extent requested by plaintiff. The court is not authorized to give anything not asked for or otherwise "granted" under the law (see below).

• Injunctive relief in the form of a mandatory injunction (e.g. corrective advertising, product destruction, etc.), with special requirements, or limitations, as follows: A "mandatory injunction" (this term as such is not known in German law) is possible. Recall or destruction of products, publication of judgment, etc., are recognized by Sec. 43 of the DA but will be granted only if requested by plaintiff and are not unreasonable considering the overall circumstances in a given case.

• Injunctive relief in the form of a temporary (or interlocutory) injunction pending trial, with special requirements, or limitations, as follows: A temporary or interlocutory injunction may precede and eventually may be followed by an action on the merits with a permanent injunction (unless defendant accepts the preliminary injunction as final and binding on the merits). Preliminary injunctions will be granted only where the matter is considered "urgent." In view of its "temporary" character, it may not have final effects (e.g., damages cannot be granted in a preliminary proceeding).

• Monetary relief compensating for plaintiff's lost profits, with special requirements, or limitations, as follows: Damages are recognized in Sec. 42(2) of the DA. There are three ways to calculate damages: plaintiff's lost profits, royalities or profits of the defendant. In order to enable the plaintiff to calculate damages, the plaintiff may request that the defendant render an accounting (Sec. 46 DA; Sec. 242 Civil Code). The term "calculation" is not to be taken literally, but every request made by plaintiff must be mirrored by the figures of accounting and is at the risk of the plaintiff. Plaintiff's lost profits are rarely requested because they are very difficult to prove.

• Monetary relief to compensate for past or future corrective action taken by plaintiff, with special requirements, or limitations, as follows: It is generally accepted that the plaintiff may ask for monetary relief compensating for actions necessary to mitigate or even undo the consequences of a market confusion created by the use of the infringing trademark. A "rule of thumb" is that costs for a reasonable marketing campaign of the plaintiff are acceptable in this respect.

• Monetary relief compensating for damage to goodwill, reputation or the value of the trade dress rights, with special requirements, or limitations, as follows: See above.

• Monetary relief in the form of a royalty, with special requirements, or limitations, as follows: See above.

• Monetary relief disgorging the defendant's profits, with special requirements, or limitations, as follows: See above. The right to disgorge defendant's profits has become quite popular since the Federal Court (Bundesgerichtshof) and the courts of appeal have grossly limited the defendant's rights to deduct costs incurred.

• Recovery of legal fees, expert fees or other costs incurred to bring an action, with special requirements, or limitations, as follows: Generally speaking, all costs triggered in conducting a litigation will have to be borne by the party who has been defeated. Limitations are set by the relevant statutes, e.g., only statutory fees, which are just a fraction of the time-based fees generally applied by parties, may be recovered. Contingency fees are for all practical purposes prohibited or, in any event, have no relevance in practice.

• Delay in initiating a court proceeding for design infringement in a trade dress case can affect the scope of remedies in the following ways: The statute of limitations may run or, in extraordinary cases, claims may become barred by estoppel even if the statute of limitations has not yet started to run.

F. Invalidity Attack Defenses• An invalidity attack based on lack of newness, novelty or originality is a defense to design infringement in

a case involving trade dress. Even the mere claim in an action that the (German) design is invalid will be sufficient. If the court finds the design to be invalid and, therefore, the infringement action unfounded, this will affect only the relationship between plaintiff and defendant. Yet, defendant may file a counteraction for cancellation of the design (Sec. 33 DA). In Community design cases, invalidity is not a defense. Instead, defendant must file an action with OHIM, in which case the infringement court may, in some cases, stay the case. Or the defendant may file a counteraction resulting in the invalidation of the design.

• Requirements for, or limitations to, an invalidity attack based on lack of newness, novelty or originality are:See below.

• The burden of proof for an invalidity attack based on lack of newness, novelty or originality is: For the plaintiff in an invalidity action or the defendant in an infringement action, the burden of proof principles are the same as in any other action: anyone who claims rights in his favor must prove the facts to enjoy the rights; i.e., in an invalidity attack it is the lack of novelty and originality, etc.

46

• The leading cases discussing invalidity attacks based on lack of newness, novelty or originality are: There are countless cases. Two examples are: (1) novelty (BGH GRUR 1996, 767 - Holzstühle (wooden chairs)); (2) originality (BGH GRUR 2001, 503 - Sitz-Liegemöbel).

• An invalidity attack based on utilitarian functionality is a defense to design infringement in a case involving trade dress.

• Requirements for, or limitations to, an invalidity attack based on utilitarian functionality are: According to Sec. (3) No. 1 of the DA (Art. 8 of the CDR), a design may not subsist in features of appearance that are dictated solely by its technical function or in designs of interconnections (for the latter cf. BPatG GRUR 2007, 786 and OHIM GRUR Int. 2007, 59 - LEGO).

• The burden of proof for an invalidity attack based on utilitarian functionality is: For the plaintiff in an invalidity action or the defendant in an infringement action, the burden of proof principles are the same as in any other action: anyone who claims rights in his favor must prove the facts to enjoy the rights; i.e., in an invalidity attack it is the lack of novelty and originality, etc.

• The leading cases discussing invalidity attacks based on utilitarian functionality are: BGH GRUR 2008, 790 - Baugruppe; BGH GRUR 2005, 600 - Handtuchklemmen.

• An invalidity attack based on prior public disclosure of a design by its owner is a defense to design infringement in a case involving trade dress. In order to be a "valid" defense, the prior public disclosure by owner must have occurred 12 months prior to application.

• Requirements for, or limitations to, an invalidity attack based on prior public disclosure of a design by its owner are: In order for the owner of the design to enjoy "safe-harbour protection" under Sec. 6 of the DA and therefore limit the invalidity attack, the disclosure must not be public or, if public (unlimited circle of addressees); it must be effected by the designer (the person who would file the aplication) or, in limited cases, a third party, and the published design and the design filed for registration must be identical. Similiar principles apply under Art. 7 of the CDR.

• The burden of proof for an invalidity attack based on prior public disclosure of a design by its owner is:See above.

• The leading cases discussing invalidity attacks based on prior public disclosure of a design by its owner are: BGH GRUR 1969, 271 - Zugseilführung; BGH GRUR 1994,104 - Akteneinsicht.

G. Competitive Use Defenses • A competitive use defense based on fair use or fair dealing is a permitted defense to to design

infringement in a case involving trade dress. The term or its literal translation is not known in this jurisdiction. Yet, Sec. 40 of the DA privileges, inter alia, private use, use for test purposes and use for quotations. In addition, Sec. 41 grants a pre-use right to a third party that, prior to the date of application in Germany by the design owner, uses or is about to use in good faith a design independently developed. In this case, the owner of the registered design may not prohibit the use by that third party. Generally speaking, these rights to use may not be transferred.

• Requirements for, or limitations to, a competitive use defense based on fair use or fair dealing are: see above.

• The burden of proof for a competitive use defense based on fair use or fair dealing is: For the plaintiff in an invalidity action or the defendant in an infringement action, the burden of proof principles are the same as in any other action: anyone who claims rights in his favor must prove the facts to enjoy the rights; i.e., in an invalidity attack it is the lack of novelty and originality, etc.

• The leading cases discussing a competitive use defenses based on fair use or fair dealing are: among the few cases published, BGH GRUR 2003, 507 - Enalapril; BGH GRUR 2009, 871 - Ohrclips.

• A competitive use defense based on a functional feature or element embodied in the trade dress is not a permitted defense to design infringement in a case involving trade dress.

• No other competitive use defenses that are defenses to design infringement in a case involving trade dress are permitted.

H. Other Defenses• The following other common defenses to design infringement in a case involving trade dress are

permitted: exhaustion of the design (Sec. 48 DA; Art. 21 CDR).• Requirements for, or limitations to, these other common defenses are: The protection does not extend to

acts relating to a product in which a design is incorporated or to which it is applied when the product has been put on the market in the Community by its owner or with his consent.

• The burden of proof for these other common defenses is: With certain exceptions, for the plaintiff in an invalidity action or the defendant in an infringement action, the burden of proof principles are the same as in any other action: anyone who claims rights in his favor must prove the facts to enjoy the rights; i.e., in an invalidity attack it is the lack of novelty and originality, etc.

• The leading cases for these other common defenses are: ECJ GRUR 2003, 512 - Van Doren; ECJ GRUR 2002, 156 - Davidoff.

Exhibit 30

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I. Domestic Liability• Design infringement activities that take place outside the country give rise to domestic liability in the

following circumstances: import of a product protected by design (Sec. 38(1) DA).• The following remedies are available when domestic liability arises from design infringement activities that

take place outside the country: See Section XXVI.

XXVII. ENFORCING COPYRIGHT RIGHTS IN TRADE DRESS

A. General • If copyright has been acquired in trade dress, it may be possible to enforce such rights in a court

proceeding based on the following causes of action:• copyright infringement;• Sec. 42 DA (registered design); Art. 11 CDR (unregistered design).

• To assert copyright infringement as a cause of action in a trade dress case:• the trade dress need not be registered as a copyright. There is no copyright registration in this

jurisdiction.• The key elements of a copyright infringement cause of action in a trade dress case are: The use of a

product (i.e., manufacture, offer, distribution, import, export, possession for any of these purposes) incorporating the creative features of the original design without permission of the owner. However, it has to be noted that designs are protected under copyright law only if the design incorporates a distinctive creative quality that is of a certain artistic value. Therefore, courts are reluctant in granting design protection under the CA and require a certain amount of creative quality beyond normal creative skills and not triggered by mere functionalities.

• Special concerns/issues about asserting trade dress rights via copyright law are: In claims based on copyright law, the plaintiff has to show and prove that the creative and artistic qualities of the design at issue are beyond the normal skills of a designer and are inspired by creative skill. Since copyright law protects only artistic expressions, all design elements that serve a concrete function are not taken into account by the court. Courts tend to be reluctant in granting copyright protection to designs and trade dress. The burden of proof is high and not easy to meet.

B. Standing• In a copyright infringement case involving trade dress, the following party or parties have standing to sue:

• owner (In the case of a joint authorship, each author has standing to get an injunction, whereas with regard to damages all joint authors have to sue together (Sec. 8 CA).);

• exclusive licensee (Copyrights cannot be transferred under German copyright law, but the author can grant exclusive and/or non-exclusive licenses to third parties. The exclusive licensee has standing to sue, not the non-exclusive licensee. Standing may be granted to non-exclusive licensees or distributors in licensing contracts.);

• sole licensee.• For an exclusive licensee to have standing, the license need not be recorded. Registration is not a

requirement for protection under copyright law.• For a sole licensee to have standing, the license need not be recorded. Registration is not a requirement

for protection under copyright law.

C. Who May Be Sued• The following party or parties may be sued for copyright infringement in a trade dress case:

• a direct infringer (Defendant in an infringement action is, in the first place, the person who commits the infringement, or in the case of several persons acting jointly, each and any of them. Companies act through their representatives. The representatives, e.g., board members, may be liable in addition to the companies they work for. See Sec. 99 of the CA.);



D. Forum

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• A court proceeding for copyright infringement in a trade dress case may be brought in the following court or courts: An action may be brought in the District Court where the defendant resides/has its place of business or any District Court where the infringement occurred. In line with Sec. 105 of the CA, most German states have opted for the possibility of combining several districts with one designated "copyright court" to handle matters.


• The time limit (or statute of limitations) for initiating a proceeding for copyright infringement in a trade dress case in each court is as follows: The time limit is three years starting at the end of the year in which infringement occurred and plaintiff plaintiff obtained knowledge of the circumstances giving rise to the claim or should have known had he or she not acted grossly negligent (Sec. 102 CA; Sec. 199 Civil Code).

E. Remedies• The remedies available to a successful plaintiff in a copyright infringement case involving trade dress are:

• Injunctive relief in the form of a prohibitory injunction, with special requirements, or limitations, as follows: (Permanent) injunctive relief will be granted if and to the extent requested by the plaintiff. The court is not authorized to give anything not asked for or otherwise "granted" under the law (see below).

• Injunctive relief in the form of a mandatory injunction (e.g. corrective advertising, product destruction, etc.), with special requirements, or limitations, as follows: A "mandatory injunction" (this term as such is not known in German law) is possible. Recall or destruction of products (Sec. 98 CA), publication of judgment (Sec. 103 CA), etc., are recognized, but will be granted only if requested by the plaintiff and are not unreasonable considering the overall circumstances in a given case.

• Injunctive relief in the form of a temporary (or interlocutory) injunction pending trial, with special requirements, or limitations, as follows: A temporary or interlocutory injunction may precede and eventually may be followed by an action on the merits with a permanent injunction (unless defendant accepts the preliminary injunction as final and binding on the merits). Preliminary injunctions will be granted only where the matter is considered "urgent." In view of its "temporary" character, it may not have final effects (e.g., damages cannot be granted in a preliminary proceeding).

• Monetary relief compensating for plaintiff's lost profits, with special requirements, or limitations, as follows: Damages are recognized in Sec. 97(2) of the CA. There are three ways to calculate damages: plaintiff's lost profits, royalities or profits of defendant. In order to enable the plaintiff to calculate damages, the plaintiff may request that the defendant render an accounting (Sec. 101 CA; Sec. 242 Civil Code). The term "calculation" is not to be taken literally, but every request made by plaintiff must be mirrored by the figures of accounting and is at the risk of plaintiff. Plaintiff's lost profits are rarely requested because they are very difficult to prove.




• Monetary relief disgorging the defendant's profits, with special requirements, or limitations, as follows: See above. The right to disgorge the defendant's profits has become quite popular since the Federal Court (Bundesgerichtshof) and the courts of appeal have grossly limited the defendant's rights to deduct costs incurred.


• Delay in initiating a court proceeding for copyright infringement in a trade dress case can affect the scope of remedies in the following ways: Delay may deprive the rights owner of its right to seek a temporary restraining order/preliminary injunction; preliminary relief is available only if the matter is "urgent." Urgency of a decision may, however, be denied (the court has to examine and rule ex officio on the urgency) if too much time has passed at the time the right owner files the action. Generally speaking, and depending on local case law (courts in Germany quite often take different positions) and the complexity of a case, the period between learning of an infringement and taking preliminary action may vary between four weeks and three months before the matter is no longer considered urgent, leaving only a regular action on the merits to the plaintiff. Additionally, the statute of limitations may run. Recent leading cases take the position that, given the short period before the statute of limitations is triggered, claims may only very

49

rarely be estopped before the statute of limitations runs. Available cases do not fit the trade dress scenario.

F. Invalidity Attack Defenses• An invalidity attack based on lack of originality is a defense to copyright infringement in a case involving

trade dress. As previously mentioned, this jurisdiction does not know the concept of copyright registration. Accordingly, the only way to test the quality of copyright protection claimed by the owner of the trade dress would be to attack the requirements leading to copyright protection, including originality.

• Requirements for, or limitations to, an invalidity attack based on lack of originality are: Since copyrights do not require registration in Germany, an independent invalidity attack against a copyright is not possible and/or necessary. However, lack of originality is often used as defense by defendant in a copyright infringement case.

• The burden of proof for an invalidity attack based on lack of originality is: Usually, lack of originality is used as defense against a copyright infringement claim. The plaintiff who bases its claims on copyright law has to prove that the work in question qualifies as a work under copyright law and shows a certain amount of creative expression and originality.

• The leading cases discussing invalidity attacks based on lack of originality are: not applicable. • An invalidity attack based on utilitarian functionality is a defense to copyright infringement in a case

involving trade dress. See above.• Requirements for, or limitations to, an invalidity attack based on utilitarian functionality are: See above.• The burden of proof for an invalidity attack based on utilitarian functionality is: See above.• The leading cases discussing invalidity attacks based on utilitarian functionality are: not applicable. • An invalidity attack based on failure to qualify as a protected work, such as an artistic work, literary work,

dramatic work, musical work, etc., is a defense to copyright infringement in a case involving trade dress. Product label trade dress may be protectible if it meets the requirements of Secs. 1 and 2 of the CA. Protection is not dependent on formalities or payment of fees and provides the advantage of a much longer period of protection than under the DA, i.e., the lifetime of the creator plus 70 years as opposed to a maximum of 25 years for protection of a design. Contrary to trademark protection, though, it may not be extended at will. The CA sets much higher standards and only protects personal intellectual creations. By virtue of that requirement, most "industrial" creations, including in most cases product label trade dress, do not qualify for protection under the CA.

• Requirements for, or limitations to, an invalidity attack based on failure to qualify as a protected work, such as an artistic work, literary work, dramatic work, musical work, etc., are: Since copyrights do not require registration in Germany, an independent invalidity attack against a copyright is not possible and/or necessary. However, lack of originality is often used as a defense by a defendant in a copyright infringement case.

• The burden of proof for an invalidity attack based on failure to qualify as a protected work, such as an artistic work, literary work, dramatic work, musical work, etc., is:Usually, lack of originality is used as defense against a copyright infringement claim. The plaintiff who bases its claims on copyright law has to prove that the work in question qualifies as a work under copyright law and shows a certain amount of creative expression and originality.

• The leading cases discussing invalidity attacks based on failure to qualify as a protected work, such as an artistic work, literary work, dramatic work, musical work, etc., are: BGH GRUR 1985, 1041, 1047 - Inkasso-Programm; OLG München 29 U 4346 (Mar. 15, 1990), GRUR 1990, 674 - Forsthaus Falkenau; BGH I ZR 227/02 (June 23, 2005), GRUR 2005, 854 - Kartengrundsubstanz (maps).

G. Competitive Use Defenses • A competitive use defense based on fair use or fair dealing is a permitted defense to copyright

infringement in a case involving trade dress. There exist numerous competitive use defenses under Chapter 6 ("Limitations of Copy Rights") of the CA. Examples include the following:

- Sec. 49 of the CA - Newspaper Articles and Broadcast Commentaries

It is permissible to reproduce and distribute individual broadcast commentaries and individual articles from newspapers and other information journals devoted solely to issues of the day in other newspapers or journals of like kind and to communicate such commentaries and articles to the public, if they concern political, economic or religious issues of the day and do not contain a statement reserving rights (Sec. 49(1) CA).

It is also permissible to reproduce, distribute and publicly communicate miscellaneous information relating to facts or news of the day that has been publicly disseminated by the press or by broadcasting (Sec. 49(2) CA).

- Sec. 51 of the CA - Quotations

Reproduction, distribution and communication to the public shall be permitted, to the extent justified by the

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purpose, where

- individual works are included after their publication in an independent scientific work to illustrate its contents;

- passages from a work are quoted after its publication in an independent work of language;

- individual passages from a published musical work are quoted in an independent musical work.

- Sec. 52 of the CA - Public Communication

The public communication of a published work is permissible if the communication serves a gainful purpose on the part of the organizer, spectators are admitted free of charge; and, in the case of recitation or performance of the work, none of the performers receive special remuneration.

- Sec. 53 of the CA - Reproduction for Private and Other Personal Uses

It is permissible to make or to cause to be made single copies of a work for private use.• Requirements for, or limitations to, a competitive use defense based on fair use or fair dealing are: See

above.• The burden of proof for a competitive use defense based on fair use or fair dealing is: always upon the

person or entity invoking a right in his, her or its favor.• The leading cases discussing competitive use defenses based on fair use or fair dealing are: none.• A competitive use defense based on a functional feature or element embodied in the trade dress is not a

permitted defense to copyright infringement in a case involving trade dress. Mere functional features or element embodied in the work are not protected under copyright law.

• No other competitive use defenses to copyright infringement in a case involving trade dress are permitted.

H. Other Defenses• The following other common defenses to copyright infringement in a case involving trade dress are

permitted: (1) statute of limitations (Sec. 102 CA); (2) expiry of copyright (Sec. 64 CA); (3) license defense; (4) non-infringement.

• Requirements for, or limitations to these other common defenses are: Statute of limitations of three years and copyright expires 70 years after the author's death.

• The burden of proof for these other common defenses are: always upon the person or entity invoking a right in his, her or its favor.

• The leading cases for these other common defenses are: none.

I. Domestic Liability• Copyright infringement activities that take place outside the country do not give rise to domestic

liability.German copyright law is applicable only if the infringement takes place in Germany. If an infringing work is produced and sold outside Germany, there is no domestic liability in Germany. Domestic liability may rise if the infringing product is imported into Germany and offered in Germany.

XXVIII. ENFORCING PATENT RIGHTS IN TRADE DRESS

A. General • If utilitarian patent rights or a lesser form of patent rights have been acquired in trade dress, it may be

possible to enforce such rights in a court proceeding based on the following causes of action: • patent infringement.

• The relevant statutory or regulatory provision(s) prohibiting patent infringement or prohibiting infringement of a lesser form of patent is/are: Secs. 9, 10 of the PA , Sec. 11 of the GebrMG.

• To assert patent infringement as a cause of action in a trade dress case:• the trade dress must be registered as a patent. See above.

• The key elements of a patent infringement cause of action in a trade dress case are: The key elements are the unauthorized use of a product that is the subject matter of a patent; further, the unauthorized use of a process if the infringer knew or had reason to know that the use without permission of the patent owner is prohibited. In addition, the offer or delivery of means that are essential elements of an invention it the infringer knew or had reason to know that these means are suitable and intended to be used together with the invention (indirect infringement). Again, the Gebrauchsmustergesetz does not protect processes.

• Special concerns/issues about asserting trade dress rights via patent law are: See above.

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B. Standing• In a patent infringement case involving trade dress, the following party or parties have standing to sue:

• owner (Sec. 139(1) PA; Sec. 24(1) GebrMG);• exclusive licensee (An exclusive licensee may invoke the rights under Sec. 139 PA independently if

his own right to use the patent is affected.); • sole licensee;• non-exclusive licensee (The non-exclusive licensee has generally no standing to file a patent

infringement action. Only an action for the owner or based on assigned rights is possible.);• exclusive distributor (See exclusive licensee.);• non-exclusive distributor (See non-exclusive licensee.).

• For an exclusive licensee to have standing, the license need not be recorded.• For a sole licensee to have standing, the license need not be recorded.• For a non-exclusive licensee to have standing, the license need not be recorded. See above.

C. Who May Be Sued• The following party or parties may be sued for patent infringement in a trade dress case:

• a direct infringer (The defendant in an infringement action is, in the first place, the person who commits the infringement, or in the case of several persons acting jointly, each and any of them. Companies act through their representatives. The representatives, e.g., board members, may be liable in addition to the companies they work for.);

• a party who induces another party to infringe (A party inducing another party to infringe is treated as a joint infringer provided that he caused the damage by a jointly committed infringement and did not only induce the other party without acting himself. He is responsible, however, if it cannot be established which of several persons involved caused the damage by this act (Sec. 830(2) Civil Code.).);


D. Forum • A court proceeding for patent infringement in a trade dress case may be brought in the following court or

courts: A court action may be brought in the District Court where the infringer resides/has its place of business or the infringement occurred. All German states have selected certain District Courts that have specific patent competence (Patentstreitkammern) and that are, within the rules set before, exclusive venues.


• The time limit (or statute of limitations) for initiating a proceeding for patent infringement in a trade dress case in each court is as follows: three years (Sec. 141 PA; Secs. 195, 199 Civil Code).

E. Remedies• The remedies available to a successful plaintiff in a patent infringement case involving trade dress are:

• Injunctive relief in the form of a prohibitory injunction, with special requirements, or limitations, as follows: (Permanent) injunctive relief will be granted if and to the extent requested by plaintiff. The court is not authorized to give anything not asked for or otherwise "granted" under the law (see below).

• Injunctive relief in the form of a mandatory injunction (e.g. corrective advertising, product destruction, etc.), with special requirements, or limitations, as follows: A "mandatory injunction" (this term as such is not known in German law) is possible. Recall or destruction of products (Sec. 140a PA), publication of judgment (Sec. 140e PA), etc., are recognized, but will be granted only if requested by plaintiff and are not unreasonable considering the overall circumstances in a given case.

• Injunctive relief in the form of a temporary (or interlocutory) injunction pending trial, with special requirements, or limitations, as follows: A temporary or interlocutory injunction may precede and eventually may be followed by an action on the merits with a permanent injunction (unless defendant accepts the preliminary injunction as final and binding on the merits). Preliminary injunctions will be granted only where the matter is considered urgent. In view of its temporary character, it may not have final effects (e.g., damages cannot be granted in a preliminary proceeding).

52

• Monetary relief compensating for plaintiff's lost profits, with special requirements, or limitations, as follows: Damages are recognized in Sec. 139(2) of the PA. There are three ways to calculate damages: plaintiff's lost profits, royalities or profits of defendant. In order to enable the plaintiff to calculate the damages, the plaintiff may request that defendant render an accounting (Sec. 140b PA; Sec. 242 Civil Code). The term "calculation" is not to be taken literally but, every request made by the plaintiff must be mirrored by the figures of accounting and is at the risk of the plaintiff. Plaintiff's lost profits are rarely requested because they are very difficult to prove.




• Monetary relief disgorging the defendant's profits, with special requirements, or limitations, as follows: See above. The right to disgorge the defendant's profits has become quite popular since the Federal Court (Bundesgerichtshof) and the courts of appeal have grossly limited the defendant's rights to deduct costs incurred (Sec. 139(2) PA).


• Delay in initiating a court proceeding for patent infringement in a trade dress case can affect the scope of remedies in the following ways: not applicable.

F. Invalidity Attack Defenses• An invalidity attack based on lack of patentable subject matter is not a defense to patent infringement in a

case involving trade dress. An invalidity attack is never a defense in a German patent infringement action (only in a utility model action as utility models are registered without examination proceedings; their quality becomes evident only in an infringement case or an independent invalidity action). Invalidity attacks need to be filed in a separate action with the Federal Patent Court. The infringement court is bound by the registration and will only stay the infringement case in its discretion if the invalidity action has a very good chance to succeed.

• An invalidity attack based on lack of novelty is not a defense to patent infringement in a case involving trade dress.

• An invalidity attack based on lack of inventiveness is not a defense to patent infringement in a case involving trade dress.

• An invalidity attack based on lack of usefulness is not a defense to patent infringement in a case involving trade dress.

• An invalidity attack based on the prior public disclosure of patented subject matter by its owner is not a defense to patent infringement in a case involving trade dress. The infringement judge in a patent case has to take the patent as registered. Only in a utility model case is the prior disclosure defense available if the patented subject matter was disclosed by the owner (or by any third party) more than six months prior to application (Sec. 3(1) GebrMG).

G. Competitive Use Defenses • A competitive use defense based on fair use or fair dealing is a permitted defense to patent infringement

in a case involving trade dress. Sec. 12 of the PA provides for a so-called private pre-use right of infringer. An infringer who, at the time of the patent's priority had already started to use the invention in Germany, or was about to use the invention, may continue to use the invention for the purposes of his own profession (BGH Xa ZR 18/08 (Sept. 20, 2009), GRUR 2010, 47 - Füllstoff).

• Requirements for, or limitations to, an invalidity attack based on competitive use defense based on fair use or fair dealing are: not applicable.

• The burden of proof for an invalidity attack based on a competitive use defense based on fair use or fair dealing is: Defendant has to prove that the requirements of the pre-use right are met. Standards are very strict. In turn, it is upon the plaintiff to prove unfair use.

• The leading cases discussing invalidity attacks based on competitive use defenses based on fair use or fair dealing are: various decisions of the Oberlandesgericht Düsseldorf (Court of Appeals of Düsseldorf), including I-2U 65/05) (OLG Düsseldorf Jan. 11, 2007).

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• A competitive use defense based on functional feature or element embodied in the trade dress is not a permitted defense to patent infringement in a case involving trade dress. This defense is not known and is also incompatible with patent protection.

• No other competitive use defenses are available on which an invalidity attack can be based in a patent infringement in a case involving trade dress. An invalidity attack is never a defense in a German patent infringement action (only in a utility model action as utiilty models are registered without examination proceedings; their quality only becomes evident in an infringement case or an independent invalidity action). Invalidity attacks need to be filed in a separate action with the Federal Patent Court. The infringement court is bound by the registration and will only stay the infringement case in its discretion if the invalidity action has a very good chance to succeed.

H. Other Defenses• No other invalidity attacks based on other defenses are permitted in a patent infringement case involving

trade dress.

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FN No.

Image Description

1 Form of IP: Trademark (Registration Number: 30411620)

Brand Name / Trademark:

Exquisa

Case Name: N/A

Jurisdiction: Germany

Region: Europe: European Union

Type of Product: Food, fresh cheese

Trade Dress Element:

Packaging: Label

2 Form of IP: Trademark (Registration Number: n/i)


n/i

Case Name: Etiketten

Case Citation: BGH - I ZB 12/96

Court: Final Appeal (Highest Court): Bundesgerichtshof (BGH)

Party: Plaintiff / Applicant: n/i



Type of Product: Paper and Stationery


Packaging: Label

3 Form of IP: Trademark (Registration Number: CTM No. 1698885)


Lindt

Case Name: Goldhase

Case Citation: BGH - I ZR 37/04





Type of Product: chocolate and goods of chocolate


Packaging: Wrapper, Shape/configuration

55

3 Form of IP: Trademark (Registration Number: DE39746213)


FERRERO

Case Name: N/A



Type of Product: Food


Packaging: Wrapper



August Storck

Case Name: N/A





Packaging: Wrapper



Nestlé Choclait Chips

Case Name: N/A





Packaging: Wrapper

56



Underberg

Case Name: N/A



Type of Product: Glassware


Shape/configuration



Underberg bottle

Case Name: N/A



Type of Product: Beverages (Alcoholic), Beverages (Non-alcoholic)


Packaging: Container

57



Underberg bottle

Case Name: N/A






58



Underberg bottle

Case Name: N/A






5 Form of IP: Trademark (Registration Number: n/i not registered)


Develey

Case Name: Develey

Case Citation: ECJ - C?238/06

Court: Final Appeal (Highest Court): European Court of Justice (ECJ)

Party: Plaintiff / Applicant: Develey Holding GmbH & Co. Beteiligungs KG, Unterhaching, Germany



Type of Product: Food, Beverages (Non-alcoholic)


Shape/configuration

59

5 Form of IP: Trademark (Registration Number: CTM No. 922179)


Vittel

Case Name: Nestlé Bottle

Case Citation: EC - T-305/02

Court: Appellate (Intermediate): European Court of First Instance (EC)

Party: Plaintiff / Applicant: Nestlé Waters France, Issy-les-Moulineaux, France



Type of Product: Beverages (Non-alcoholic)


Shape/configuration

5 Form of IP: Trademark (Registration Number: EM00573048)


n/i

Case Name: Standbeutel

Case Citation: C-173/04

Court: Final Appeal (Highest Court): Eurpean Court of Justice

Party: Plaintiff / Applicant: Deutsche SiSi-werke GmbH & Co. Betriebs KG/Harmonisierungsamt für den Binnenmarkt





Shape/configuration

5 Form of IP: Trademark (Registration Number: n/a)


Dimple

Case Name: Dimple

Case Citation: BPatG - 26 W (pat) 77/97

Court: Appellate (Intermediate): Bundespatentgericht (BPatG)




Type of Product: Beverages (Alcoholic)



60



Henkel

Case Name: N/A



Type of Product: Consumer Household Goods


Shape/configuration



FERRERO

Case Name: N/A





Shape/configuration



Ritter

Case Name: N/A





Shape/configuration



Storck

Case Name: Form eines Bonbons II (form of a candy)

Case Citation: ECJ - C?24/05


Party: Plaintiff / Applicant: August Storck KG, Berlin, Germany



Type of Product: candy


Shape/configuration

61



Winward

Case Name: Winward flashlight

Case Citation: ECJ - C-136/02


Party: Plaintiff / Applicant: Mag Instrument Inc., Ontario, CA, USA



Type of Product: illumination apparatus, particularly flashlights


Shape/configuration

7 Form of IP: Trademark (Registration Number: IR No. 587 254)


n/i

Case Name: Rasierer mit 3 Scherköpfen (razor with 3 razor heads)






Type of Product: rasor


Shape/configuration

7 Form of IP: Trademark (Registration Number: IR No. 640 196 )


Rado

Case Name: Rado-Uhr III (Rado watch)






Type of Product: watches


Shape/configuration

62

7 Form of IP: Trademark (Registration Number: DE No. 39503037)


LEGO

Case Name: LEGO






Type of Product: toys, namely toy bricks


Shape/configuration



BMW

Case Name: Fronthaube (hood)






Type of Product: components for motor vehicles


Shape/configuration



Porsche

Case Name: Porsche Boxter






Type of Product: motor vehicles and components thereof


Shape/configuration

63



n/i

Case Name: Henkel

Case Citation: ECJ - C-218/01


Party: Plaintiff / Applicant: Henkel KGaA



Type of Product: liquid detergent


Shape/configuration

7 Form of IP: Trademark (Registration Number: IR00587254)


n/i

Case Name: Rasierer mit drei Scherköpfen

Case Citation: I ZB 12/04

Court: Final Appeal (Highest Court): Federal Court of Justice

Party: Plaintiff / Applicant: Koninklijke Philips Electronics N.V./n.a.



Type of Product: Razor


3 D Shape

7 Form of IP: Trademark (Registration Number: IR No 640 196)


Rado

Case Name: Rado-Uhr III (Radio watch)






Type of Product: watch


Shape/configuration

64

7 Form of IP: Trademark (Registration Number: 397 35 468)


ROCHER

Case Name: ROCHER-Kugel

Case Citation: BGH I ZB 88/07 (BPatG)

Court: Final Appeal (Highest Court): BGH

Party: Plaintiff / Applicant: FERRERO Deutschland GmbH





Shape/configuration

7 Form of IP: Trademark (Registration Number: n/a)


n/a

Case Name: Hefteinband

Case Citation: BGH I ZB 68/09 (BPatG)







Shape/configuration



Freixenet

Case Name: Freixenet

Case Citation: ECJ C-345/10P

Court: Final Appeal (Highest Court): European Court of Justice

Party: Plaintiff / Applicant: Freixenet SA





Shape/configuration

65



Freixenet

Case Name: Freixenet

Case Citation: ECJ C-344/10P


Party: Plaintiff / Applicant: Freixenet SA





Shape/configuration

8 Form of IP: Trademark (Registration Number: DE No. 30631881)


Beck

Case Name: Farbmarke Rot (Color Mark Red)






Type of Product: Legal books


Color: Single



Kraft Foods Schweiz Holding AG

Case Name: N/A





Color: Single

66



n/i

Case Name: N/A



Type of Product: Tax journal


Color: Single



Deere & Company

Case Name: N/A



Type of Product: Cutlery, Machinery and Tools


Color: Combination



ConocoPhillips Company

Case Name: N/A



Type of Product: Services


Color: Combination



Duracell

Case Name: N/A



Type of Product: Batteries


Color: Combination

67

10 Form of IP: Trademark (Registration Number: RAL 5015/HKS 47- blau and RAL 1016/HKS 3 - gelb)


Heidelberger Bauchemie

Case Name: Heidelberger Bauchemie GmbH






Type of Product: Company Logo


Color: Single



n/i

Case Name: Farbmarke gelb/grün II


Court: Appellate (Intermediate): Federal Patent Court

Party: Plaintiff / Applicant: Deutsche BP Holding AG



Type of Product: Different products for petrol station


Color: Combination

10 Form of IP: Trademark (Registration Number: RAL 5015/HKS 47- blau and RAL 1016/HKS 3 - gelb)


Heidelberger Bauchemie

Case Name: Heidelberger Bauchemie GmbH






Type of Product: Company Logo


Color: Combination

68



Immo Poster

Case Name: Immo Poster

Case Citation: BPatG 25W (pat) 13/11

Court: Appellate (Intermediate): Bundespatentgericht






Point of Sale Materials



Immo Poster

Case Name: Immo Poster

Case Citation: BPatG 25W (pat) 13/11

Court: Appellate (Intermediate): Bundespatentgericht






Point of Sale Materials

69



DaimlerChrysler AG

Case Name: Tastmarke



Party: Plaintiff / Applicant: DaimlerChrysler AG / n/i



Type of Product: Automobiles and Motor Vehicles


Haptic Mark

13 Form of IP: Trademark (Registration Number: De30638392)


Deutsche Lufthansa AG

Case Name: N/A



Type of Product: various products


Sound



Top Radiovermarktung GmbH

Case Name: N/A



Type of Product: Radio advertisements


Sound

70

13 Form of IP: Trademark (Registration Number: De39408718)


Underberg

Case Name: N/A





Sound



Underberg KG

Case Name: N/A





Haptic Mark



DaimlerChrysler AG

Case Name: Tastmarke

Case Citation: BGH I ZB 73/05


Party: Plaintiff / Applicant: DaimlerChrysler AG





Touch and feel" mark

71

15 Form of IP: Trademark (Registration Number: B0551)


August Storck KG

Case Name: August Storck KG / Harmonisierungsamt für den Binnenmarkt [HABM]), Wicklerform)

Case Citation: C-25/05 P


Party: Plaintiff / Applicant: August Storck KG





Packaging: Wrapper



Beck

Case Name: Red (for legal books)

Case Citation: 29 W (pat) 57/07


Party: Plaintiff / Applicant: C.H.Beck ohG



Type of Product: Book


Color: Single

17 Form of IP: Trademark (Registration Number: DE 39552629)


Deutsche Telekom

Case Name: Farbmarke magenta / grau

Case Citation: BGH I ZB 23/98


Party: Plaintiff / Applicant: Deutsche Telekom AG



Type of Product: Services, telecommunication


Color: Combination

72



Maggi

Case Name: Maggi

Case Citation: Ib ZR 54/66


Party: Plaintiff / Applicant: Maggi/Knorr





Packaging: Wrapper

19 Form of IP: Trademark (Registration Number: DE200 5473)


Schwäbisch Hall

Case Name: Spee- Fuchs

Case Citation: 6 U 189/98

Court: Appellate (Intermediate): Higher Regional Court (Oberlandesgericht Frankfurt)

Party: Plaintiff / Applicant: Schwäbisch Hall / Henkel





Packaging: Label

20 Form of IP: Design (Registration Number: n/i)


n/i

Case Name: Abgewandelte Verkehrszeichen






Type of Product: Traffic signs


Lines in sign

73

20 Form of IP: Design (Registration Number: 000413125-0001)


n/i

Case Name: Packaging for foodstuffs

Case Citation: ICD 000002210

Court: Appellate (Intermediate): OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

Party: Plaintiff / Applicant: Beata Ho?drowicz PANACEUM Import-Export / Bo?ena Lewicka SZI-BO Export-Import






21 Form of IP: Design (Registration Number: 22 122)


n/i

Case Name: Bottle Lamp (Laternenflasche)

Case Citation: Ib ZR 13/64

Court: Appellate (Intermediate): Higher Regional Court (Oberlandesgericht)






Shape/configuration

21 Form of IP: Design (Registration Number: not registered)


n/i

Case Name: Perfume Bottle

Case Citation: OHIM ICD 000001576

Court: Trial (First Instance): OHIM - First Board of Appeal






Shape/configuration

74



n/i

Case Name: N/A





Design

22 Form of IP: Design (Registration Number: DM064218(15))


Nokia

Case Name: Mobile Design (Nokia)

Case Citation: 5U 135/05

Court: Appellate (Intermediate): Higher Regional Court (Oberlandesgericht Hamburg)




Type of Product: Mobile Phones


Design

22 Form of IP: Design (Registration Number: No. 8010 in volume IV of the Design Register)


Moped -Modell 'Vicky III'

Case Name: Moped -Modell

Case Citation: BGH I ZR 44/60







Shape/configuration

75



Motorroller

Case Name: Motorroller

Case Citation: OHIM ICD 000002244

Court: Trial (First Instance): OHIM - Cancellation division

Party: Defendant / Respondent: Matthias Müller





Shape/configuration

22 Form of IP: Design (Registration Number: 064576)


senator

Case Name: Schreibgeräte

Case Citation: BGH I ZR 211/08


Party: Plaintiff / Applicant: Senator





Shape/configuration



n/i

Case Name: n/i

Case Citation: n/i

Court: Trial (First Instance): OHIM - First Board of Appeal




Type of Product: building


Building: Exterior Design

76

23 Form of IP: Design (Registration Number: M 9801660.1)


Fassade des Bauwerks Friedrichstrasse 45, Berlin;

Case Name: N/A



Type of Product: Building



23 Form of IP: Design (Registration Number: 952510-0001.1)


n/a

Case Name: N/A






23 Form of IP: Design (Registration Number: 000969555-0001.1)


n/a

Case Name: N/A






24 Form of IP: Design (Registration Number: RCD 675467-0002)


n/a

Case Name: N/A



Type of Product: Furniture and Upholstery


Building: Interior Design

77



n/i

Case Name: Gebäckpresse

Case Citation: I ZR 126/06







Shape/configuration

26 Form of IP: Copyright (Registration Number: DE01120011)


Pink Elephant Production

Case Name: Rosaroter Elefant



Party: Plaintiff / Applicant: Deutsche Bahn AG



Type of Product: various products


Shape/configuration

27 Form of IP: Copyright (Registration Number: n/i)


n/i

Case Name: Vasenleuchter








Shape/configuration

78

28 Form of IP: Copyright (Registration Number: n/i)


Eileen Gray

Case Name: Eileen Gray


Court: Appellate (Intermediate): Higher Regional Court (Oberlandesgericht Karlsruhe)






Shape/configuration

29 Form of IP: Copyright (Registration Number: DE302008038170)


n/i

Case Name: Rudolstädter Vogelschießen


Court: Appellate (Intermediate): Higher Regional Court (Oberlandesgericht Jena)

Party: Plaintiff / Applicant: Stadt Rudolstadt



Type of Product: Poster


Design



n/i

Case Name: Holzstühle








Shape/configuration

79

30 Form of IP: Design (Registration Number: DM/036859)


n/i

Case Name: Sitz-Liegemöbel








Shape/configuration

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Disclaimer

All information provided by the International Trademark Association in this document is provided to the public as a source of general information on trademark and related intellectual property issues. In legal matters, no publication whether in written or electronic form can take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of the relevant country. While efforts have been made to ensure the accuracy of the information in this document, it should not be treated as the basis for formulating business decisions without professional advice. We emphasize that trademark and related intellectual property laws vary from country to country, and between jurisdictions within some countries. The information included in this document will not be relevant or accurate for all countries or states.

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