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Jochen Pagenberg voted for the second time Germany’s leading lawyer for patent and trademarklegal expertise, in “The International Who’s Who of Business Lawyers 2008” ........................................... 2

Patent Law

1. German Federal Supreme Court on validly claiming the priority for claim with a limiting featurewhich was not disclosed in the priority documents (Decision of January 30, 2008– Case X ZR 107/04 – “Betonstraßenfertiger”/”Machine for producing concrete roads”) .................... 2

2. European Patent Office: Amendments in opposition proceedings and objections to lack of clarity(Technical Board of Appeal 3.2.03, decision of February 21, 2008 – Case T 1459/05, not foreseenfor publication) ........................................................................................................................................... 3

3. Düsseldorf Appeal Court: In a pharmaceutical case, the Court granted a preliminary injunctionagainst the offer and sale of drugs containing the active ingredient “Olanzapine” (Decision ofMay 29, 2008 – Case 2 W 47/07 – “Olanzapine”) ................................................................................... 5

Trademark Law

4. European Court of Justice on comparative advertising and trade-mark infringement (Decision ofJune 12, 2008 – Case C-533/06 – O2 Holdings Ltd v Hutchison 3G UK Ltd – “O2”) .......................... 7

5. European Court of Justice on likelihood of confusion, complex trademarks, inherent and increaseddistinctiveness (Decision of July 17, 2008 – Case C-488/06 P – L & D SA v OHIM –Julius Sämann Ltd – “Aire Limpio”) ......................................................................................................... 8

6. EFTA Court abandons rule of international exhaustion in trademark cases (Decision of July 8, 2008Joint Cases E-9/07 and E-10/07 – L’Oréal Norge AS & L’Oréal SA v Per Aarskog AS [Case E-9/07],Nille AS [Case E-9/07] and Smart Club AS [Case E-10/07] – “REDKEN”) .......................................... 10

77. German Federal Supreme Court: Genuine use of a service mark requires that the consumers or end users will recognise that the mark does not only identify the company, but also specific services (Decision of October 18, 2007 – Case I ZR 162/04 – “AKZENTA”) ....................................... 11

8. German Federal Supreme Court on “smell-alikes” (Decision of December 6, 2007 – Case I ZR 184/05 – “Duftvergleich mit Markenparfum”/”comparative lists of perfumes” – anddecision of June 6, 2008 – Case I ZR 169/05 – “Imitationswerbung”/“Imitative Advertising”) ............12

9. German Federal Patent Court: The designation “Bio Bär” (“Bio Bear”) for gummy bears serves todesignate the kind of goods, i.e., biologically manufactured gummy bears and is devoid of anydistinctive character (Decision of April 2, 2008 – Case 28 W [pat] 187/07 – “Bio Bär”/“Bio Bear”) ...14

10.German Federal Supreme Court applies agent’s marks rules on business relationship which goesbeyond mere exchange agreements, and clarifies other limits for applying agent’s marks rules(Decision of April 10, 2008 – Case I ZR 164/05 – “audison”) ............................................................... 16

11.German Federal Supreme Court: Injunctive relief may be claimed against online-auctioneers if vendors offer forgeries on the internet platform (Decision of April 30, 2008 – Case I ZR 73/05 –“Internetversteigerung III”/”online-auctioneering III”) ............................................................................ 16

Design Law1122.Alicante Commercial Court: Joint action against Community trademark and Community design in-

fringement (Decision of Dec. 4, 2007 – Case 152/2007 – L’ORÉAL SA v YESENSY ESPAÑA SL) .......... 17

»The Bardehle Pagenberg IP Report«2008/ III – www.bardehle.com

Jochen Pagenberg voted for thesecond time Germany’s leading lawyerfor patent and trademark legal expertisein “The International Who’s Who ofBusiness Lawyers 2008”

“Jochen Pagenberg of Bardehle Pagen-berg Dost Altenburg Geissler is the highest ranking German lawyer for patentexpertise and a member of our elite groupof practitioners. An 'outstanding andhighly-respected' lawyer, acknowledgedfor his experience coordinating multi-ling-ual, multi-jurisdictional patent cases, butalso for his expertise counselling clientson licensing matters. He is chairman ofthe special committee of the AIPPI on liti-gation concerning European patents.

Reinhardt Schuster was also mentionedto researchers as 'technically astute' and'active in various industries'. He receivedparticular praise for his work concerningplasma sources, semiconductor techno-logy and chip architecture, enzymes,pacemakers, vascular stents and medicalimplants.

Specialist firms such as BardehlePagenberg continue to produce the coun-try’s highest nominated lawyers. Namepartner, the ‘very strong’ JochenPagenberg received the most recommen-dations in the country in this year’sresearch. A “big player”, he specialises inlitigation and licensing.

His colleague, the ‘seasoned and wellregarded’ Peter Munzinger also perfor-med well in the research.

The 2008 edition of 'The InternationalWho's Who of Trademark Lawyers' is aresult of months of independent researchincorporating feedback from lawyers andin-house counsel, and covers 520 lawyersin 63 separate jurisdictions. 'TheInternational Who's Who of PatentLawyers' is the result of a similar researchprocess and lists 303 experts in 39 juris-dictions. It is impossible to buy entry intoThe International Who's Who of BusinessLawyers."

Dr Jochen Pagenberg

1. German Federal Supreme Court: Onvalidly claiming the priority for a patentclaim with a limiting feature which wasnot disclosed in the priority documents(Decision of January 30, 2008 – Case XZR 107/04 – “Betonstraßenfertiger”/“Machine for producing concreteroads”).

A patent can validly claim a priority -even if a technical effect is claimedwhich is not literally disclosed in thepriority documents if it is self-evidentfor the average person skilled in the artthat said technical effect is achievedwhen the invention is carried out.

In the decided case, the plaintiff request-ed the nullification of the German part ofa European Patent in a German nullitylawsuit. The patent-in-suit claimed thepriority of a Belgian patent applicationfiled on April 19, 1994. The nullity com-plaint was based on written prior art anda prior public use of a machine for pro-ducing concrete roads of the type “DPaver 2500”. This machine was exhibitedby the defendant on a trade fair in Parisfrom April 19-24, 1994. It was undisputedthat the exhibited “D Paver 2500”machine disclosed all features of theclaimed invention. The German PatentCourt therefore nullified the patent-in-suitin its full extent. In the nullity appeal pro-ceedings, the defendant defended thepatent auxiliary by means of additionallimitations, wherein it was in disputewhether the priority of the Belgian patentapplication can be validly claimed in viewof the limited claims.

In the present decision, the GermanFederal Supreme Court further specifiedits permanent case law on priority claims.The general rule is that a priority can bevalidly claimed if the priority applicationand the priority claiming application relateto the same invention. This “same inven-tion” requirement is given if the combina-tion of the features of the independentclaim of the priority claiming application isdisclosed in its entirety as belonging tothe invention in the priority application.The subject matter of the priority claimingapplication is determined by its claims;the content of the priority application isdetermined by the entirety of the applica-tion documents. In general, the principlesof a novelty test are applicable for thisdetermination.

Munich .Düsseldorf .Paris . Alicante . Barcelona

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In addition, the decided case shows that,according to the Federal Supreme Court,the required identity may also be given ifa technical effect or explanation is addedas a limitation to the independent claim ofthe priority claiming application, even ifsaid technical effect or explanation is notliterally disclosed in the priority applica-tion. However, this requires that the tech-nical effect or explanation is alsoachieved in the priority application, even ifit is not literally mentioned, further, thatthis is self-evident for the average personskilled in the art, and that the technicaleffect of the proposed solution is deriv-able from the overall disclosure of the pri-ority application. In the present case, thetechnical effect was found to be derivablefrom the figures of the priority application,and consequently the Federal SupremeCourt arrived at the result that the prioritywas validly claimed.

Although the German Federal SupremeCourt generally chooses a rather strictapproach with respect to the requirementof the identity of the inventions of the pri-ority application and the priority claimingapplication, the reported decision showsthat it is not, in any event, necessary to beable to refer to a literal disclosure of allclaimed features to validly claim priority.As in similar examples, e.g. with respectto the interpretation of patent claims, theGerman Federal Supreme Court attachesmuch importance to the functional under-standing of the invention by the averageperson skilled in the art in view of itsobject and advantages. Applicants willcertainly approve this in practice.

Reported by Alexander Wunsch

2. European Patent Office: Amend-ments in opposition proceedings andobjections to lack of clarity (TechnicalBoard of Appeal 3.2.03, decision of ofFebruary 21, 2008 – Case T 1459/05,not foreseen for publication).

In its landmark decisions G 9/91 and G10/91, the Enlarged Board of Appealdrew consequences from the fact thatopposition under the EPC is an inde-pendent procedure following the grantprocedure. The Board limited the prin-ciple of examination ex officio by hold-ing that the requirements for the state-ment of grounds for opposition had thefunction of establishing the legal andfactual framework within which thesubstantive examination of the opposi-tion was to be conducted in principle(OJ EPO 1993, 408, 420, Reasons pt. 6).

The ensuing case law of the TechnicalBoards of Appeal interpreted this to meanthat objections to formal deficiencies inamended claims were restricted if theydid not arise from the amendments made,e.g. if the respective claim resulted insubstance from the combination of grant-ed claims. Objections to inadmissibleextension were treated as a new groundfor opposition under Article 100 c) EPCand objections to lack of clarity were notallowed at all, Article 84 EPC not being aground for opposition.

As reported in decision T 913/05 (see pre-ceding IP Report 2008-II), extending theexamination of new grounds for opposi-tion to situations in which the amendmentof the claims by combining claims asgranted amounted to a “fresh case”.

In the meantime, greater significance hasalso been attributed to the examination ofclarity. In the case underlying decision T1459/05, the proprietor filed an appealagainst the decision of the oppositiondivision revoking his patent for a devicefor the ventilation of a baking stove withmuffle. In appeal proceedings, the propri-etor filed an independent claim with theadditional limiting feature “whereby thefan wheels are adapted to a relation of thecooling air and vapour discharge air flowsof 20:1” which was the characterizing partof granted claim 4, depending on grantedclaim 1. In its decision, Technical Boardof Appeal 3.2.03 accepts that, accordingto predominant case law, clarity is not an


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issue if a claim is the result of the combi-nation of an independent claim with aclaim depending on it.

However, the Board – as an exception –does not follow this case law in decidingon the appeal. According to the Board,there is an exceptional situation: Only theadded feature might result in a distinctionfrom the cited state of the art, but themeaning of the feature is so unclear thatthe distinction cannot be recognized ordefined with a degree of certainty whichthe skilled person could reasonablyexpect. An operation condition which isnot even mandatory is defined by thefunctional feature as a parameter fordimensioning the fan wheels. The Boardexplains in detail why the feature does notgive an immediate general teaching howto design the respective fan wheel.

The Board explains that the previous caselaw started from the assumption that ingrant proceedings all claims individuallyand in respect of their dependencies hadbeen systematically examined in respectof the requirements of Article 84 EPC. TheBoard notes that the basis on which thiscase law was developed has substantial-ly changed during the last years, not leastbecause the number of claims has steadi-ly and in part rapidly increased.

The Board in principle acknowledges thepractice not to examine clarity in respectof amendments by combining grantedclaims, but it sees the need to exercise itsdiscretion and to deviate from the estab-lished practice in individual and excep-tional cases. Such an exceptional casearises if the further examination of theamended claims in respect of novelty orinventive step were considerably aggra-vated or not leading to reasonable results.

The Board concludes that such a situa-tion is given in the case at hand. Thefunctional feature was so vague andunclear that it could not define a substan-tial, clear distinction from the state of theart which was necessary for the furtherexamination of novelty and inventive step.Thus, the respective request did not meetthe requirements of Article 84 and theappeal was dismissed.

This decision will please those who are ofthe opinion that Article 84 EPC should bea ground for opposition anyway, an idea

which was rejected by the legislator of theConvention because it would unneces-sarily complicate proceedings and wouldopen the door to dilatory oppositions.Indeed, lack of clarity as a ground foropposition would open a new battlefieldfor formal objections in opposition pro-ceedings and detract from examination ofthe substantive requirements forpatentability. Therefore, attempts to intro-duce Article 84 EPC into the grounds ofopposition by amending Article 100 EPCturned out to be unsuccessful.

The reported decision remains within theframework of Article 100 EPC. However, itputs an end to limiting amendments inopposition proceedings, the limits ofwhich remain in the dark, but which areintended to delimit the claim from thecited state of the art, thereby conveyingnovelty or inventive step to the claimedinvention. In the past, the only remedyagainst such an amendment was to givethe unclear feature the broadest possibleinterpretation with the consequence thatsubstantive objections under Article 54,56 or 83 could be made more easily. If theapproach of T 1459/05 becomes general-ly accepted, the introduction of unclearfeatures from dependent claims will bediscouraged because such an amend-ment might not take the hurdle of admis-sion into the proceedings.

Reported by Dr. Rudolf Teschemacher


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3. Düsseldorf Appeal Court: In a phar-maceutical case, the Court granted apreliminary injunction against the offerand sale of drugs containing the activeingredient “Olanzapine” (Decision ofMay 29, 2008 – Case 2 W 47/07 –“Olanzapine”).

In an unprecedented and highly con-troversial move in Germany’s dual sys-tem of separate courts for infringementand validity, the Court ruled in favour ofthe patent holder against a producer ofgeneric medicinal products, on thebasis of a patent which before hadbeen nullified by the Federal PatentCourt due to lack of novelty over theprior art, in a first instance decisionwhich is presently on appeal.

For over twelve years, the plaintiff hasbeen distributing via its German sub-sidiary a very successful drug for thetreatment of schizophrenia and other dis-orders of the central nervous system,comprising the active substance “olanza-pine”. This active substance is the subjectmatter of EP 0 454 436, the patent-in-suit.

The patent-in-suit was revoked by theGerman Federal Patent Court with effectfor the territory of the Federal Republic ofGermany (see IP Report 2007-III). Thereasoning by the Federal Patent Courtwas that olanzapine was not novel over apre-published document, which hadalready been considered in the grantingprocedure. According to the FederalPatent Court, even though the compoundolanzapine was not explicitly mentionedtherein, the average person skilled in theart was reading it as a self-evidence andwithout any difficulty. The Plaintiffappealed against the decision of theFederal Patent Court at the GermanFederal Supreme Court. The appeal hasnot been decided yet.

The defendants intend to place a genericdrug containing the active substanceolanzapine on the market, obviously trust-ing that the decision by the FederalPatent Court will be confirmed. For pre-venting the defendants from marketingdrugs containing olanzapine, the plaintifffiled an action for a preliminary injunctionwith the Düsseldorf District Court. Theaction was rejected by the DüsseldorfDistrict Court for the reason that the courthad doubts regarding the validity of the

patent-in-suit. The plaintiff instantly filedan appeal against this decision.

These are the reasons against and forgranting the preliminary injunction:

The reasoning of the decision of theDüsseldorf District Court (the firstinstance before the appeal) had beenthat, in litigation, ordering the desired pre-liminary injunction would imply that theinfringement court considers the patent-in-suit as being patentable and thus putsits own considerations in place of thosemade by the technical experts at theFederal Patent Court. An exception whichmight justify such an order would be pos-sible if there were no reasons mentionedfor the re-vocation of the patent, but not ifthe cited prior art was discussed by thenullity court in detail, as in the presentcase. The District Court held that it is atthe sole discretion of the FederalSupreme Court to revise decisions ren-dered by the Federal Patent Court. Evenwhen assuming that the decision of theFederal Patent Court was based on anincorrect understanding of novelty, therewere no grounds at hand that the assert-ed patent claims are not based on aninventive step. According to theDüsseldorf District Court, a well-foundedevaluation of these questions was notpossible without consulting experts – andthus not appropriate in preliminary injunc-tion proceedings.

The plaintiff, however, considered theDistrict Court to be very well able to evaluate novelty and inventive step sincethese are legal questions. The necessaryhelp of experts is already given in theform of various expert opinions. Since thenullity decision of the Federal PatentCourt is not yet legally binding, thepatent-in-suit continues to be in force.Even though the nullification of the patentusually induces such doubts with regardto the validity of the patent-in-suit, if thereasons for nullification are obviouslywrong the patent proprietor should not bein a worse position than before a decisionin the nullity proceedings.

The Düsseldorf Appeal Court agreed withthe argumentation of the plaintiff. TheCourt generally assumed priority of a firstinstance decision rendered by the expertsof the Federal Patent Court regardingvalidity. However, in a case in which the


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revocation or nullification is evidentlywrong, and in which even the non-expertsof the infringement court are able to reliably recognize this, an exception tothis rule would be mandatory. TheDüsseldorf Appeal Court clarified that thetechnical questions raised in view of thefactual submissions by the parties areaccessible and can be answered conclu-sively by the court on the basis of itsexperience in evaluating technical andlegal facts concerned with intellectualproperty rights.

The Court further considered the fact that,just shortly before the expiration of anintellectual property right, an unjustifieddecision to revoke the patent notably pro-vokes competitors to commit infringingacts, since they can count on the patent-ed technology to be in the public domainanyway until an appeal decision will berendered in the nullity proceedings. Inview of such a constellation, the infringe-ment court may override, even in prelimi-nary injunction proceedings, the obvious-ly incorrect decision rendered by the nul-lity instance.

The Düsseldorf Appeal Court further heldthat it was possible for an average personskilled in the art to arrive at the compoundolanzapine only by means of an inventivestep. In particular, the Court opposed thevery broad understanding of the FederalPatent Court regarding novelty. Althoughin the present case, the compound olan-zapine was not mentioned explicitly in theprior art, in the opinion of the FederalPatent Court, according to the principlesof the decision by the Federal SupremeCourt in the decision “ElektrischeSteckverbindung” (Electrical Connector),olanzapine was, however, rendered obvi-ous by a prior publication in such a waythat it was disclosed implicitly to the per-son skilled in the art without any difficultywhen reading it attentively and puttinghis/her attention less to the words butrather to the evident meaning.

The reasons stated by the Federal PatentCourt already showed that there are manysteps which would have to be taken bythe average person skilled in the art inorder to arrive at olanzapine as a possiblealternative of the compound explicitlymentioned in the prior art. According tothe Düsseldorf Appeal Court, this wouldnot be possible without an inadmissible

retrospective consideration, being awareof the invention with a high inventive rank,for which the court provides detailed rea-soning. Ultimately, the Court concludedthat the invalidity decision by the FederalPatent Court was unjustified and it grant-ed the requested preliminary injunction.

Reported by Clemens Rübel


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4. European Court of Justice on com-parative advertising and trademarkinfringement (Judgment of June 12,2008 – Case C-533/06, O2 Holdings Ltdv. Hutchison 3G UK Ltd – “O2”)

The ECJ judgment arose from a referencemade by the Court of Appeal for Englandand Wales in litigation between O2, one ofthe major telecommunications companiesin the UK, and Hutchison, a newcomer inthe market. In television advertisements,Hutchison had compared its prices tothose of O2, and used the name and the“O2” mark and a figurative mark – risingbubbles – which was similar to a regis-tered device mark held by O2. Theremaining issues in the case involved onlythe use of the device mark and concernedthe interpretation of the TrademarkDirective (Directive 89/104) and of theMisleading and Comparative AdvertisingDirective (Directive 84/450 as amended,now codified as Directive 2006/114), andspecifically the question of the relation-ship between trademark protection andcomparative advertising. The questionsreferred were the following:

1. Where a trader, in an advertisement forhis own goods or services, uses a regis-tered trade mark owned by a competitorfor the purpose of comparing the charac-teristics (and in particular the price) ofgoods or services marketed by him withthe characteristics (and in particular theprice) of the goods or services marketedby the competitor under that mark in sucha way that it does not cause confusion orotherwise jeopardise the essential funct-ion of the trade mark as an indication oforigin, does his use fall within either (a) or(b) of Article 5 (1) of Directive 89/104?

2. Where a trader uses, in a comparativeadvertisement, the registered trade markof a competitor, in order to comply withArticle 3a (1) of Directive 84/450 … mustthat use be “indispensable” and if so whatare the criteria by which indispensability isto be judged?

3. In particular, if there is a requirement ofindispensability, does the requirementpreclude any use of a sign which is notidentical to the registered trade mark butis closely similar to it?

The Advocate General, in his Opinion ofJanuary 31, 2008, concluded that the

case should be judged under theMisleading and Comparative AdvertisingDirective only. This caused major concernin the trademark community, because itwould have left trademark owners withouta trademark remedy even in cases wherethe comparative advertising would notcomply with the conditions imposed bythe Directive.

The ECJ did not follow the AdvocateGeneral. The Court held that an interpre-tation of the provisions of the twoDirectives should not permit inherent con-flicts to result. Where comparative adver-tising is permissible under Directive450/84, no trademark infringement claimmay be brought. However, when the com-parative advertising does not comply withthe Directive, trademark infringementactions may be brought under Directive89/104, provided that the requirementsfor a finding of trademark infringement aremet. The ECJ proceeded on the assumpt-ion that acts prohibited under trademarklaw are (only) those acts where theinfringer uses the protected mark or signin relation to his own goods (para. 33).The ECJ did not explain why this is thecase, but, rather, merely referred to itsearlier Opel decision (see IP Report issue2007-I). The ECJ then held that evenwhere the trademark is used in compara-tive advertising in order to identify and fora comparison with the goods or servicesof the advertiser’s competitor, it is ulti-mately used for (“in relation to”) theadvertiser’s own goods and services(para. 35 and 36). Thus, in principle, theTrademark Directive applies.

As for the case before the Court, it wasfirst held that even the use of a mark orsign, which is merely similar to the markor sign of the competitor, falls under theMisleading and Comparative AdvertisingDirective. In case there was likelihood ofconfusion, the comparative advertise-ment would be unlawful pursuant toArticle 3a (1) lit h of the Directive (nowArticle 4 lit h in the codified version). Asthe referring court had expressly foundthat there was no likelihood of confusion,the comparative advertisement could notbe enjoined as trademark infringementunder Directive 89/104, whether or not itwas lawful under the Directive 84/450.The Court therefore found it unnecessaryto deal with the second and third ques-tions, namely the issue of “indispensabili-


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ty”, considering that these questions wereasked only in case the answer to the firstquestion would have been different. Theanswer given by the Court was as follows:

1. Article 5 (1) and (2) of First CouncilDirective 89/104/EEC of 21 December1988 to approximate the laws of theMember States relating to trade marksand Article 3a (1) of Council Directive84/450/EEC of 10 September 1984 con-cerning misleading and comparativeadvertising, as amended by Directive97/55/EC of the European Parliament andof the Council of 6 October 1997, must beinterpreted to the effect that the proprietorof a registered trade mark is not entitledto prevent the use by a third party of a signidentical with, or similar to, his mark, in acomparative advertisement which sat sat-isfies all the conditions, laid down in Article3a (1) of Directive 84/450, under whichcomparative advertising is permitted.

However, where the conditions required inArticle 5 (1) lit b of Directive 89/104 to pre-vent the use of a sign identical with, orsimilar to, a registered trade mark aremet, a comparative advertisement inwhich that sign is used cannot satisfy thecondition, laid down in Article 3a (1) lit dof Directive 84/450, as amended byDirective 97/55, under which comparativeadvertising is permitted.

2. Article 5 (1) lit b of Directive 89/104is to be interpreted as meaning that theproprietor of a registered trade mark isnot entitled to prevent the use by a thirdparty, in a comparative advertisement, ofa sign similar to that mark in relation togoods or services identical with, or similarto, those for which that mark was regis-tered where such use does not give riseto a likelihood of confusion on the part ofthe public, and that is so irrespective ofwhether or not the comparative advertise-ment satisfies all the conditions laid downin Article 3a of Directive 84/450, asamended by Directive 97/55, under whichcomparative advertising is permitted.

The result is comforting for those whohad feared that the ECJ would follow theAdvocate General who had come out infavour of an approach which would haveled to the exclusion of trade mark reme-dies even in cases of unlawful compara-tive advertising. The judgment is disap-pointing for those who had hoped for

more guidance on the use of trade marksin comparative advertising. More guid-ance may be expected from the similarlyfamous “Bellure” case, again a referencefrom the Court of Appeal for England andWales (Case C-487/07), where a judg-ment cannot be expected before sometime next year.

Reported by Dr. Alexander von Mühlendahl

5. European Court of Justice: on likeli-hood of confusion, complex trade-marks, inherent and increased distinc-tiveness (ECJ judgment of July 17,2008 – Case C-488/06 P – L & D SA v.OHIM – Julius Sämann Ltd – “AireLimpio”)

In an opposition case before OHIM, theapplication for a device mark withword elements was opposed on thebasis of a device mark and severalcomposite marks containing verbalelements. The conflicting marks werethe following:

OHIM’s Board of Appeal had found infavour of the opponent (contrary to theOpposition Division), and the applicant’sappeal to the Court of First Instance wasdismissed by judgment of September 7,2006 (Case T-168/04). The outcome ofthe further appeal to the ECJ was awaitedwith some apprehension, because the


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Earlier marks Contested CTM

Advocate General Sharpston, in herOpinion of March 13, 2008, had come tothe conclusion that the judgment shouldbe reversed, because the CFI had notclearly separated the various marks.

The ECJ fully accepted the reasoning ofthe CFI and confirmed. In so concluding,the ECJ made a number of statementswhich are of great significance for deter-mining trademark conflicts:

As regards the appellant’s claim that theCFI had erroneously attributed theenhanced degree of distinctivenessacquired through use of the ARBREMAGIQUE complex mark to the figurativesilhouette mark, the ECJ accepted thatthe use of a complex mark may conferdistinctiveness on an element of such amark. The ECJ, referring to its earlierHave a Break … judgment (Nestlé, CaseC-353/03), explained that the reasoning inthat case, involving acquired distinctive-ness through use of a sign as part of acomposite sign, equally applied to casesof enhanced distinctiveness through use:

[49] As the Court of First Instance recalledin paragraph 73 of the judgment underappeal, the Court of Justice has alreadyheld that the acquisition of the distinctivecharacter of a mark may also be as aresult of its use as part of another regis-tered trade mark. It is sufficient that, inconsequence of such use, the relevantclass of persons actually perceives theproduct or service, designated by themark, as originating from a given under-taking (see, to that effect, Nestlé, para-graphs 30 and 32).

[50] Although the facts in Nestlé differedfrom those in the present case, that doesnot necessarily mean, contrary to what L& D submits, that that finding of generalapplication does not apply also to a fac-tual and procedural context such as thatat issue in the present case.

[51] In particular, the fact that Nestlé con-cerned the acquisition of distinctive char-acter by a mark which it was sought toregister, whereas the present case con-cerns establishing whether an earliermark has a particularly distinctive charac-ter in order to ascertain whether there is alikelihood of confusion within the meaningof Article 8 (1) lit b of Regulation No 40/94,

does not, as the Advocate General point-ed out in point 51 of her Opinion, justifyany difference of approach.

[52] The Court of First Instance was, con-sequently, justified in observing in para-graph 75 of the judgment under appealthat, if mark No 91 991 could be regardedas part of the ARBRE MAGIQUE mark, itwas possible to establish the particularlydistinctive character of the former on thebasis of evidence relating to the use andwell-known nature of the latter. In this con-text it is significant to note that the en-hanced degree of distinctiveness wasshown only for Italy. The CFI had acceptedthis, and it was not challenged on appeal.

An enhanced degree of distinctivenessacquired through use may also be shownwhen the mark originally had only a veryweak inherent degree of distinctiveness(which the ECJ accepted in the presentcase only for the sake of the argument):

[67] In those circumstances, even if L & Dcould rely on the argument that mark No91 991 possesses merely a very weakinherent distinctive character, since itconsists of the shape of the productwhich is sold under that mark and thatshape is necessary to obtain the desiredtechnical result, the fact remains thatsuch an argument, even if it were wellfounded, could not, in any event, castdoubt on the finding made by the Court ofFirst Instance that that mark has acquireda particularly distinctive character in Italybecause it is well known in that MemberState. As regards the evidence presentedto show enhanced distinctiveness, theCFI had accepted such evidence from adate subsequent to the filing date of thecontested CTM, because it allowed con-clusions to be drawn for the earlier peri-ods as well. The ECJ accepted thisapproach:

[71] In fact, as the Court of First Instancecorrectly recalled in paragraph 81 of thejudgment under appeal, the case-law ofthe Court of Justice shows that accountmay be taken of evidence which,although subsequent to the date of filingthe application, enables the drawing ofconclusions on the situation as it was onthat date (see order in Case C-192/03 PAlcon v OHIM [2004] ECR I-8993, para-graph 41).


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[72] As a result, the Court of First Instancewas fully justified in holding, in para-graphs 82 to 84 of the judgment underappeal, that the fact that the data in ques-tion relate to a period subsequent to thedate of filing the application for registra-tion of the Aire Limpio mark is not suffi-cient to deprive those data of their evi-dential force as regards the finding thatmark No 91 991 is well known, since theyenable conclusions to be drawn on thesituation as it was on the date when thatapplication for registration was filed.

The ECJ expressly endorses the findingof the Board and of the CFI that in orderto show enhanced distinctiveness, thelength of use may be taken into account:

[75] In fact, as the Court of First Instancecorrectly found, the Board of Appeal, inorder to establish whether the ARBREMAGIQUE mark was well known, tookinto account not only indications con-cerning the sales figures and volume ofadvertising, but also the prolonged use ofthat trade mark.

[76] Since that finding in itself justifies theconclusion reached by the Court of FirstInstance in paragraph 85 of the judgmentunder appeal, the Court finds that thesecond ground given in that paragraph,according to which the case law relied onby L & D concerns the acquisition of thedistinctive character of a mark which isthe subject of an application for registra-tion and not the assessment of whether aregistered mark is well known, was includ-ed merely for the sake of completeness. Asregards the appellant’s claim that theword element of the complex mark wasdominant, the ECJ pointed out that thereis no rule of law according to which anarbitrary word in a complex mark is thedistinctive or dominant element, nor isthere a rule that a word element is sys-tematically dominant:

[82] By this second branch, L & D challen-ges the analysis made by the Court ofFirst Instance in paragraphs 91 to 96 ofthe judgment under appeal of the similar-ities between mark No 91 991 and theAire Limpio mark. The appellant submits,inter alia, that the Court was wrong inholding that the graphic element of theAire Limpio mark has a clearly dominantcharacter in the overall impression, whichnoticeably prevails over the word element.

[83] However, the fact remains that theCourt of First Instance made in that context an assessment of the facts which,unless the appellant claims those factswere distorted, cannot be reviewed by theCourt of Justice on appeal.

[84] Furthermore, it must be added that,contrary to what L & D maintains, there isno rule to the effect that the name used ina trade mark must be regarded as distinc-tive and fanciful where it is devoid of anyspecific meaning. Moreover, as observedin paragraph 55 above, nor does theCourt’s case law show that the word ele-ment of a complex mark is systematicallydominant in the overall impression givenby that mark.


6. EFTA Court abandons rule of interna-tional exhaustion in trademark casesDecision of July 8, 2008 – Joint Cases E-9/07 and E-10/07 – L’Oréal Norge AS &L’Oréal SA v Per Aarskog AS [Case E-9/07], Nille AS [Case E-9/07] and SmartClub AS [Case E-10/07] – “REDKEN”)

Judgments of the EFTA Court rarelyattract attention of the IP community. Thisis, however, different when issues oftrademark law or other IP law issues areinvolved. As background information, thefollowing (taken from the EFTA Court’swebsite) may be helpful: The EFTA Courthas jurisdiction with regard to EFTAStates which are parties to the EEAAgreement (at present Iceland,Liechtenstein and Norway). The Court ismainly competent to deal with infringe-ment actions brought by the EFTASurveillance Authority against an EFTAState with regard to the implementation,application or interpretation of an EEArule, for the settlement of disputesbetween two or more EFTA States, forappeals concerning decisions taken bythe EFTA Surveillance Authority and forgiving advisory opinions to courts in EFTAStates on the interpretation of EEA rules.Thus the jurisdiction of the EFTA Courtmainly corresponds to the jurisdiction ofthe Court of Justice of the EuropeanCommunities over EC States.


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The references to the EFTA Court arosefrom litigation between L’Oréal and vari-ous retail establishments in Norway thatwere selling original REDKEN productsimported from the United States.

The issue raised was whether the EFTAcountries belonging to the EEA(Liechtenstein, Island, and Norway) wereentitled to maintain the principle of inter-national exhaustion or should follow theECJ, which had decided that Article 7 ofthe Trademark Directive 89/104 must beinterpreted as precluding internationalexhaustion (Judgment of July 16, 1998,Case C-355/96, Silhouette InternationalSchmied v. Hartlauer Handelsgesellschaft– “Silhouette”). In an earlier judgment pre-ceding the “Silhouette” decision of theECJ, the EFTA Court had concluded thatthe EFTA countries were free to apply thedoctrine of international exhaustion(Judgment of December 3, 1997, Case E-2/97, Mag Instruments Inc. v. CaliforniaTrading Company Norway (“MAGLITE”).The questions referred were in both casesthe same:

1. Is Article 7 (1) of Council Directive89/104/EEC to be understood to theeffect that a trade mark proprietor has theright to prevent imports from third coun-tries outside the EEA when such importstake place without the consent of thetrade mark proprietor?

2. Is Article 7 (1) of Council Directive89/104/EEC to be understood to theeffect that international exhaustion is per-mitted?

The EFTA Court decided to follow theECJ. Its answer to the questions was asfollows:

Article 7 (1) of First Council Directive of 21December 1988 to approximate the lawsof the Member States relating to trademarks (89/104/EEC) is to be interpreted tothe effect that it precludes the unilateralintroduction or maintenance of interna-tional exhaustion of rights conferred by atrade mark regardless of the origin of thegoods in question.

As a consequence of this judgment,trademark proprietors are now (finally)able to plug one the few remaining loop-holes for getting “grey” or unauthorized

genuine goods legitimately on the Euro-pean (including the EFTA states) market.


7. German Federal Supreme Courtholds, in a just published decision, thatgenuine use of a service mark requiresthat the consumers or end users willrecognise that the mark does not onlyidentify the company but also specificservices (Decision of of October 18,2007 – Case I ZR 162/04 – AKZENTA ).

In this regard, the consumers or endusers are aware that, generally, a com-pany name may also be used for serv-ices, rather than for goods. Use of athird party will be assigned to thetrademark owner if the third party usesthe mark knowing that the trademarkhas a different owner.

The defendant, an insurance company, isthe owner of the word mark “AKZENTA”,registered for “insurance underwriting”,including “insurance brokerage”. Theplaintiff, owner of trademarks that includethe designation “AKZENTA” claimed forcompliance of the defendant to cancella-tion of the word mark “AKZENTA” fornon-use. The defendant rejected theplaintiff’s claim, arguing that the trade-mark “AKZENTA” had been used by hislicensee.

According to the Federal Supreme Court,genuine use of a trademark requires thatthe specific way the mark is used com-plies with the essential function of atrademark, i.e., to guarantee the identityof the origin of goods or services to theconsumer by enabling him, without anypossibility of confusion, to distinguish theproducts or services from other productsand services which have another origin.Therefore, it is adequate – but also neces-sary – that the trade mark is used in a waythat is common practice in the relevantfields of trade and that it is economicallyreasonable for the registered products.


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Consequently, genuine use has to bedenied if a trademark is being used onlyas reference to a company without anyreference to specific services. The criticalpoint is whether the consumer or enduser, by taking the specific circum-stances of use as presented to the con-sumer or end user into account, willunderstand the way the trademark hasbeen used, as a sign to distinguish thegoods and services of the trademarkowner from others’ goods and services.Although a trademark generally has to beused in the logo design it has been regis-tered, use in a different design will beaccepted as genuine use in terms ofSection 26 (3) Trademark Act, if the con-sumer or end user will recognise the reg-istered trademark and the sign in use asthe same sign and, therefore, will notattribute any significant impact on theadded or omitted parts of the sign in use.

As far as service marks are concerned,consumers or end users are used to thefact that trademarks do not only identifythe company, but also specific services,because – different to trademarks regis-tered for goods – a physical connectionbetween the trademark and the productsis not possible. In this respect, con-sumers are also aware that services aremarked with the company name more fre-quently than goods. Such understandingrequires that the consumer or end userwill recognise that the sign is not onlyused as a reference to the company butalso for services offered by that company.Furthermore, the trademark has to beused for specific services. Reference touse of the trademark by a third party toprove genuine use of the trademark isadmissible if the third party knows thatthe trademark has a different owner.Generally, this is the case if the trademarkowner and the third party concluded alicense agreement concerning use of thetrademark.

The present decision of the FederalSupreme Court stresses the importancefor trademark owners to take care that atrademark is in genuine use if it is also thecompany name of the trademark owner.Although the decision includes somehelpful assumptions for the owners ofservice marks, it emphasizes that notevery way a trademark is used fulfils therequirements of genuine use.

Reported by Philipe Kutschke

8. German Federal Supreme Court on“smell-alikes” (Decision of December 6,2007 – Case I ZR 184/05 – “Duftvergleichmit Markenparfum”/”comparative listsof perfumes” – and decision of June 6,2008 – Case I ZR 169/05 – “ Imi ta t ionswerbung”/“ Imi ta t i veAdvertising”)

There is a growing number of infringerswho do not offer perfumes with theidentical packaging and the identicalname (“knock offs”) but who imitatethe scent of the perfume, but then cre-ate names which are linguistic or con-ceptional associations, i.e. they are notidentical but come very close to theoriginal names of the perfumes.

Thus, the best seller among men’s per-fumes, Armani’s “Acqua di Gio”becomes “Acqua di Giorno”, Cerruti’s“1881” becomes “1999”, Lancôme’s“Miracle”, “Poême”, “Mania” and“Trésor” are offered as “Pink Wonder”,“Le Peintre“, “Phobia” and “La Valeur”.Those imitations, in the broader sense,are partly advertised as cheap smell-alikes (“La Valeur smells like Trésor”),partly without such express allegation,using lists only for the dealers at salespoints which those will happily trans-late to the end-consumers.

It is not a coincidence but proves the sizeof this problem that after its first decisionfour years ago (BGH GRUR 2004, 697 –Genealogie), the German Supreme Courthad accepted two further cases for legalreview which have just been published.The cases concerned different perfumeswhich were imitations of perfumes ofDavidoff, Joop and Jil Sander. Among therespective pairs of perfumes comparedwere: Cool/Blue, Water/Ocean,Sculpture/Statue, Water/Icy Cold,Sun/Sunset Boulevard.

The Supreme Court decided that the dis-missals of the request for an injunction bythe two different courts of appeal(Cologne and Frankfurt) lacked sufficientreasoning. It sent both cases back to thelower courts and instructed them toexamine whether the reference to thecompetitor’s product can be regarded as“sufficiently explicit” under the Germanrules on unfair competition which corre-spond to Article 3 a (1) lit h of the ECComparative Advertisement Directive97/55 which forbids a reference to a com- M

unich .Düsseldorf .Paris . Alicante . Barcelona

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petitors mark if the products are present-ed as imitations of the original products. The Court added that it is not sufficient toaffirm the intended association with thefamous product if consumers recognizethe original product (only) due to criteriawhich are outside the challenged adver-tisement or due to their own knowledge. Itappears that the Court is of the opinionthat, while the above-cited advertisementslogan (“smells like…”) together with theuse of trademarks which are conception-ally similar in the trademark sense wouldbe regarded as inadmissible comparativeadvertisement, however, if the claim“smells like..” is missing, the mere use ofsimilar signs or trademarks might not beregarded as explicit enough.

In the appeal the judges will have toexamine the full picture. It is obvious thatthe imitator will always choose the mostfamous marks which create exactly whatthe Supreme Court calls the “own knowl-edge of the consumer”. The top sellingperfumes mentioned above are known atleast to an overwhelming part of femaleconsumers. This famous character ofthese marks, however, can clearly beattributed to the promotion and invest-ment of the rights owner and is exploitedby the infringer who needs less explana-tion and verbal association the morefamous the infringed trademark is.

Some of the signs chosen might need aminimum of linguistic understandingwhere synonyms or allusions are beingused. The Supreme Court assumes, how-ever, that at least the dealers understandthe “code” and are able to choose theimitation if a consumer asks for the“smell-alike” of Water and Ocean. Thefact that smell-alikes have been on themarket since years and continuouslyemerge after a new perfume has gained acertain success has to be taken into con-sideration by the courts when evaluatingthe situation: a number of consumers willalready know the imitation by name,another percentage will recognize theconceptual similarity of the imitation andthe original when they see the imitation ata sales point or on the Internet, while thesmaller percentage might need the adviceby the seller.

Did the German Supreme Court feelobliged, on the basis of the case law ofthe ECJ, to come to the conclusion that

comparative advertisement is only inad-missible where the imitator expresslyannounces that his product constitutesan imitation of the original? (“By the way,it not only smells like Trésor, this is also animitation of Trésor”). What is the level ofawareness of consumers in this field?First of all, who are the average con-sumers? In the great majority women,since if men wanted to make a present toa woman, they might feel ashamed to buyan imitation. But women who want tosave money and know their favorite per-fume might ask for the imitation. So thelarge majority of buyers do not need anyfurther information, since they know thatexpensive perfumes with famous trade-marks are imitated. They will understandwhat the Supreme Court calls the “code”,namely the use of conceptually closesubstitute marks. If consumers are uncer-tain which of the fakes “matches” theoriginal, they will simply ask the dealer. Inconsequence potential buyers reach thelast conclusion: If it smells like the origi-nal, this is because it is an imitation.

At least the two groups of consumers – those who already have identified theequivalent of the famous original and, inaddition, those who recognize it whenthey see it in a shop because they under-stand the linguistic allusion – should beenough for affirming the inadmissibility ofthe use of “telling” signs for imitatedproducts.

Opinion

If it was required that more information isneeded before the pirate can be stopped:would this still be the image of the edu-cated, attentive and observing consumerwhich the ECJ has described in a numberof decisions? And would such lenienttreatment of imitators satisfy the goal ofthe Lisbon Agenda of combating piracyand enhance the value and protection ofIP rights? Each year innovative industrylooses 200 billion dollars of sales world-wide to pirates. If the courts feel obligedto open a new door for clever infringers,they will immediately use it. To say itbluntly: can imitators and pirates only befound liable if they publicly announce “Iam a pirate”, and not if they act as one?A pirate is a person who saves the costsfor his own development of a product,watches the right owner investing in thepromotion and distribution of a new prod-


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uct, then chooses the most successfulones, makes a chemical analysis and thenputs the product on the market.

From French cases it has become knownthat mere individual sellers, not to speakof the manufacturers, easily reach salesfigures above 100,000 Euros per year.Should all these well-organized counter-feiters who often belong to the samesales network really be allowed to hidebehind the rules of comparative adver-tisement which were meant to protect thehonest busi-nessman and not the pirate?

The ECJ will soon have the opportunity tointerpret the law on the basis of the Com-parative Advertisement Directive, sincethe UK Court of Appeals has referred a“smell-alike” case to Luxembourg by pre-liminary reference (L’Oréal v Bellure, caseC-1487/07). That case may be regardedas an easy one in view of the fact that theimi-tator used the same smell as advertis-ing slogan so that the consumer canmake a quick conclusion: if it smells likethe original, it must be an imitation. If,however, the ECJ comes to an interpreta-tion of the Directive 97/55 that perfumeimitators who of-fer smell-alikes act law-fully, then there is only one solution: thelaw must be changed or the perfumeindustry will continue losing hundredsmillions of Euros to the pirates.

Reported by Dr. Jochen Pagenberg

9. German Federal Patent Court: Thedesignation “Bio Bär” (“Bio Bear”) forgummy bears, constituting a mereproduct-related information, serves todesignate the kind of goods, i.e., bio-logically manufactured gummy bears,and is devoid of any distinctive char-acter (Decision of April 2, 2008 – Case28 W [pat] 187/07 – “Bio Bär”/“BioBear”).

Such absolute grounds for refusalwhich led to the cancellation of theGerman trademark registration “BioBär” have been present both at thetime of registration in 1996 and at thetime of declaration of invalidity by theGPTO in April 2007. Attorneys of thelaw firm Bardehle Pagenberg success-fully represented the applicant in theproceedings before the GPTO, whichwere concluded by the confirming andfinal decision of the Federal PatentCourt.

The applicant applied for the declarationof invalidity of the German trademark reg-istration “Bio-Bär” for gummy bears. TheGPTO declared the trademark “Bio-Bär”for gummy bears invalid for being devoidof any distinctive character and for beinggeneric according to Section 8 (2) no. 1and 2 Trademark Act. Thereupon, theowner of the trademark registration “BioBär” appealed the decision of the GPTOto the Federal Patent Court which, in theunderlying decision, upheld the declara-tion of invalidity.

Pursuant to the findings of the court, theabbreviation “Bio”, particularly in connec-tion with foodstuffs, expresses that theproduct has been manufactured with theuse of only natural ingredients. The sameapplies to the abbreviation “Bio” at thetime of registration of the trademark in1996, which results from both the caselaw of the Federal Patent Court and thelegal literature from 1989 and 1994.Furthermore, the denotation “Bär” wascommonly known as a description of acertain kind of sweet at the time of regis-tration, which is not only demonstrated bythe list of goods of the attacked trade-mark which included the product desig-nation “gummy bears” but also by thecase law of the Federal Patent Court ren-dered from 1996 to 1998.


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Against this background, the compositetrademark “Bio Bär” has been assessedby the court – regarding both, the date ofregistration and the date of cancellation –as being unmistakeably product-relatedinformation. This results from the fact thatthe meaning of the composite sign doesnot exceed the sum of its descriptiveparts (“Bio” and “Bear”) and constitutesan unambiguously descriptive concept assuch.

Furthermore, according to German andEuropean case law, descriptive signs“regularly” (according to the ECJ“inevitably”) lack the necessary distinc-tiveness. In the case at hand, says theSupreme Court, the case law of bothcourts leads to the same result, since thedesignation “Bio-Bär” does not fulfil therequirements of the primary function of atrademark of pointing at its origin, and therelevant public will rather perceive thetrademark as a description of the product.

Since, according to the findings of thecourt, the trademark “Bio-Bär” wasalready held as being descriptive at thetime of its registration, the now toughercriteria of the registration-practice asapplied by the GPTO did not have a neg-ative effect on the trademark owner.

Furthermore, the owner’s plea that thecontested mark was a “very famous usemark” which is present in nearly everyorganic food shop was not held as beingsufficient to constitute a secondarymeaning, according to Section 8 (3)Trademark Act. The same applies,according to the Court, to the affidavitsigned by the former trademark owner,stating that his company – next to anoth-er manufacturer of sweets – was thebiggest manufacturer in this sector.Finally, the owner’s vague submissionregarding the amount of “Bio-Bär” sweetssold, did not meet the criteria set forth bythe ECJ in its “Chiemsee” judgmentregarding the issue of secondary mean-ing. According to the ECJ, it is the trade-mark owner’s obligation to provide evi-dence of any long-time use of the sign asa trademark and to submit correspondingfigures as to the concrete turnoverachieved with the mark for the goods inquestion, the advertising expenditureand, finally, the feedback of theaddressed public.

Finally, the court rejected the owner’splea, alleging that the application for dec-laration of invalidity – as a reaction on awarning letter sent by the owner of themark – was abusive, because of it havingbeen sent only a few months before theexpiration of the ten-year period for filingan application for declaration of invalidity(cf. Section 50 [2] Trademark Act).According to the findings of the court, thedescribed way of action on the part of theapplicant is a typical approach following awarning letter that is based on an unpro-tectable trademark.

Reported by Verena Wintergerst


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10. German Federal Supreme Courtapplies agent’s marks rules on busi-ness relationship which goes beyondmere exchange agreements, and clari-fies other limits for applying agent’smarks rules (Decision of April 10, 2008– Case I ZR 164/05 – “audison”)

The case involved business partners whonegotiated about establishing a joint dis-tribution company in Germany for distri-bution of the “audison” products of theplaintiff. The defendant started distribut-ing “audison” products while said negoti-ations were conducted. However, the jointcompany was ultimately not founded, andalso negotiations for a sole common dis-tributorship were not concluded.Nevertheless, following the initial negotia-tions the parties cooperated for approxi-mately eight years, without concluding aformal distribution agreement.

The court held that while the parties hadnot founded a joint company and hadalso not concluded a formal distributionagreement, they had nevertheless agreedon cooperating in such a way that thedefendant was the responsible distribu-tion partner for Germany. Although theparties had not agreed on how the coop-eration should be organized in the long-term, the business relationship wentbeyond the mere existence of a series ofpurchase agreements. This was consid-ered sufficient for applying the agent’smarks rules according to Art. 6septies ParisConvention, respectively, Section 11, 17Trademark Act.

Another clarification concerned the for-eign trademark of the plaintiff which wasnot registered at the time when the defen-dant applied for the mark in Germany. Therequirements are satisfied when the foreign trademark has been applied forbefore the agent’s mark and has beenregistered before the agent’s marks ruleshave been invoked.

Reported by Peter J.A. Munzinger

11. German Federal Supreme Court:Injunctive relief may be claimedagainst online-auctioneers if vendorsoffer forgeries on the internet platform(Decision of April 30, 2008 – Case I ZR73/05 – Internetversteigerung III/Online-auctioneering III).

In the most recent decision of theGerman Federal Supreme Court, con-firming its former case-law, the Courtheld that online-auctioneers have toreact if alerted by a trademark ownerabout an obvious case of infringement,and in consequence initiate appro-priate action to avoid trademarkinfringements in the future.

The claimants, owner of the marks-in-suit, produce and distribute watches ofthe brand “ROLEX”. On the internet plat-form “ricardo.de” – run by the defendant– vendors offered “ROLEX”-forgeries thatwhere explicitly marked as plagiarisms,which is what the claimants claimedagainst the defendant.

Earlier, the Cologne Appeal Court hadbasically granted injunctive relief, after theSupreme Court had overruled a contrarydecision of the Cologne Appeal Court ofthe year 2004 (Federal Supreme Court,Case I ZR 304/01 InternetversteigerungI/online-auctioneering I of March 11,2004; see also the decisionInternetversteigerung II/online-auction-eering II and related IP-Report 2007-II).The Federal Supreme Court confirmedthe Cologne Appeal Court’s decision,however limited to the precise point of thecomplaint.

In line with its earlier decisions in respectof the liability of online-auctioneers, theFederal Supreme Court held that the lia-bility privilege of the German TelemediaAct for host-providers only affects thecriminal liability and the liability for com-pensation but not the liability for injunc-tive relief. Thus, the defendant – althoughnot offering the forgeries personally – maybe held liable as “disturber” or “interferer”(what is known as the German legal termof “Störerhaftung”), requiring, in brief, thatthe online-auctioneer wilfully and causallyparticipated in bringing about a situationwhich re-sulted in an unlawful interfer-ence by a third party. Therefore, the thirdparty has to be acting not as a privatevendor, but – with regard to its sales


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activities – as a commercial vendor.Furthermore, the online-auctioneer musthave been alerted beforehand by a trade-mark owner about an obviously perceiv-able case of trademark infringement. If so,the online-auctioneer is not only obligedto put an end to the specific infringingauction, but also initiate adequate actionsto prevent infringing acts in the future, asfar as such actions are technically possi-ble and reasonable for the online-auctioneer. However, the Court under-lined that such actions – e.g. reviewingevery auction of a vendor – may not bedeemed reasonable if they were to put thewhole business model of online auctionsinto question.

In the present case, the defendant hadbeen alerted before about commercialauctions of third parties with – obviouslyperceivable – “ROLEX”-forgeries. Underthese circumstances, the defendantwould have had the obligation to statethat adequate and reasonable countermeasures were unsuccessfully initiated,which he did not.

Reported by Philipe Kutschke

12. Alicante Commercial Court on ajoint action against Community trade-mark and Community Design infringe-ments (Decision of December 4 2007 –Case 152/2007 – L’ORÉAL SA v YESEN-SY ESPAÑA SL and YE EG)

L’ORÉAL sought a declaration of infrin-gement of both its Community trade-mark “DOUBLE EXTENSION” and itsregistered Community design for an“eye-lash curler container”, an orderprohibiting the defendant from proced-ing with the infringement as well as anaward of damages, jointly before theAlicante Commercial Court acting asthe only Community trademark anddesign court in Spain. In its decision ofDecember 4, 2007, the Court awardeddamages to the claimant and orderedthe defendant to cease and desist.

The Juzgado de Marca Communitaria,being a chamber of the Juzgado de loMercantil de Alicante (AlicanteCommercial Court), deals with exclusivejurisdiction among the Spanish Courts,with both Community trademark andCommunity Design infringements.

As regards the trademark infringement,the Court found the sign used in trade bythe defendant to be identical with the clai-mant’s trademark “DOUBLE EXTENSION”(the goods at issue were also found to beidentical). According to the Court (withsupport of the ECJ’s decision C-206/01 – Arsenal Football Club and C-291/00 – LTJ Diffusion), in case of iden-tity between the signs and the goods andservices, the protection afforded by theregistered trade mark is absolute and nolikelihood of confusion is required (Article9 [1] lit a CTMR). Irrespective of this, theCourt concluded that, even if the signswere deemed to be non-identical, likeli-hood of confusion would arise in the relevant public, thus still amounting to infringement of the registered trademark,pursuant to Article 9 (1) lit b CTMR.

In this regard, the defendant tried to chal-lenge the existence of likelihood of confu-sion with the argument that the allegedinfringing products were marketedthrough very different channels of distri-bution and at a much lower price.According to the Court, such circumstan-ces are irrelevant for the infringement andassessment of the likelihood of confusion,


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especially where the infringed trademarkenjoys a reputation and where identity ofboth goods and signs exists. The Courtissued extensive comments focusing onthe functions of the trademark and theprotection of the consumers.

Regarding the action based on the regi-stered Community design, the Court con-cluded that the product marketed by thedefendant constituted an infringement,since, due to the identical number ofparts, distribution, composition andshape of both the composing parts andthe curler itself, the overall impression itproduces on the informed user did notdiffer from the overall impression produ-ced by the registered design on such auser. The defendant’s allegation as to thedifferences between prices and channelsof distribution were again rejected by theCourt.

At this point, it still remained to be deci-ded on the sanctions to be imposed dueto the infringements. The availableactions for the owner of the infringedrights are provided by Article 98 (1) CTMRand Article 89 (1) CDR, as well as theappropriate articles of the national law(here Articles 40 et seq. Ley 17/2001 deMarcas and Articles 52 et seq. Ley20/2003 de Protección Jurídica delDiseño Industrial) by reference to it madeby Articles 14, 97 (2) and 98 (2) CTMR andArticles 88 (2) and 89 (2) CDR.

Specifically, with regard to the damagesfor the infringement and pursuant to theSpanish law, such damages shall beassessed according to one of the follo-wing criteria, at the affected party’s opti-on: i) the profits the owner would haveearned by use of the trademark/design ifno infringement had taken place, ii) theprofits earned by the infringer as a resultof the infringement, iii) the amount the inf-ringer would have had to pay the ownerfor a license that would have allowed it tomake lawful use of the trademark ordesign; furthermore, the owner of the inf-ringed right may also claim compensationfor damages to the trademark/design’sprestige caused by the infringer, in parti-cular for deficient manufacture of the inf-ringing goods or improper presentationthereof in the marketplace.

L’OREAL claimed that damages had to becalculated according to the principle of

fictitious license (criterion iii) and submit-ted an expert opinion assessing theamount of EUR 43,001.41. Since neitherevidence nor facts contesting the claimedamount were submitted by the defendant,the Court considered it to be reasonable,in line with the case law of the AlicanteAppeal Court, according to which no pre-vious licenses awarded by the proprietorof the right are required in order for theprinciple of fictitious license to be applied.

In addition to that amount, L’ORÉAL clai-med 1 % of the defendant’s turnover, limi-ted to the infringing goods, as compensa-tion for damage to the mark and thedesign’s prestige. The documentary evi-dence submitted by the plaintiff included,among other documents, a declaration ofthe Spanish Medicine and HealthProducts Agency stating that no informa-tion relating to the goods marketed by thedefendant had been provided to it (as isrequired), which was deemed to be rele-vant for the case, and again the claimant’sclaim was accepted by the Court. Thus,the total compensation awarded to theclaimant for three years of infringementamounted to EUR 43,128.07.

Even though the Court itself stated thatthe products in question infringed two dif-ferent rights, when assessing the amountof damages, it made no differentiationwhatsoever between damages arisingfrom the trademark infringement anddamages which arose from the design inf-ringement. This was consistent with therelief sought by the claimant, whoapproached this specific matter as if onlyone right had been infringed.

As a consequence of the infringement,the Court also ordered the defendant tostop using the expression “DOUBLEEXTENSION” for goods in class 3, to stopusing the eyelash curler container and torecall the infringing products.

Reported by Aitor Pomares Caballero


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The following is information requested by § 6 of theGerman Law on Teleservices: The European PatentAttorneys of BARDEHLE PAGENBERG aremembers of the European Patent Institute (epi,http://www.patentepi.com/) and as such sub-ject to its Code of Professional Conduct,(http://www.patentepi.com/english/100/120/) andthe Regulation on Discipline issued by the Admini-strative Council of the European Patent Organisa-tion (http://www.patentepi.com/english/100/120/)

Unless otherwise specified, the term "PatentAttorney" on the website www.bardehle.com refersto German Patent Attorneys. BARDEHLE PAGEN-BERG Patent Attorneys are registered at theGerman Patent and Trademark Office and membersof the German Patent Attorneys Association(http://www.patentanwalt.de/). German PatentAttorneys are subject to the professional rules laiddown in the Patentanwaltsordnung (PatanwO)[German Patent Attorney Code], which can be re-viewed in German at http://jurcom5.juris.de, and inthe Berufsordnung der Patentanwälte BOPA [Codeof Conduct for Patent Attorneys] which can bedownloaded as pdf file in German here.

BARDEHLE PAGENBERG German attorneysat law are members of the Bar Association in thedistrict of the Higher Regional Court in Munich(http://www.rechtsanwaltskammer-muenchen.de/),Germany, unless specified otherwise. They are sub-ject to the Bundesrechtsanwaltsordnung (BRAO)[German Attorney at Law Code], the Berufsordnungder Rechtsanwälte (BORA) [Code of Conduct forGerman attorneys at law] and the Rechtsanwalts-vergütungsgesetz (RVG) [Code of Lawyers' Fees].These German rules and laws can be reviewed (inGerman) at http://www.brak.de/ under "Angabengemäß § 6 TDG".

Moreover, the Code of Conduct for Lawyers in theEuropean Community issued by the CCBE (Councilof the Bars and Law Societies of the European Com-munity) http://www.ccbe.org/UK/publications.htm isapplicable to all lawyers of BARDEHLE PAGENBERG.


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IPReport - Bardehle | BARDEHLE PAGENBERG

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