In this section we inform briefly about recent developments and changes in the field of Intellectual Property in Germany and Europe.
The EU-Enforcement Directive 2004/48/EG and the elimination of the translation requirement by the London Protocol have both been implemented into German law by the "Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums" ("Law on the enhanced enforcement of intellectual property rights"), promulgated on July 11, 2008.
With promulgation of the law, the translation requirement for European Patents has been abolished retroactively as of May 1, 2008. European Patents for which the mention of the grant of patent was published on or after May 1, 2008, do not have to be translated into the German language anymore.
The provisions implementing the EU-Enforcement Directive that was meant to harmonize essential measures, procedures and remedies concerning the infringement of intellectual property rights, will not enter into force until September 1, 2008. This is particularly true for the amendments of the German patent, trademark and design acts.
With its decision re: adidas/Marca Mode et al. of April 10, 2008 in Case C-102/07, the European Court of Justice (ECJ) has again brought the interpretation of trademark law in Europe significantly forward in a number of important aspects. In several cases of trademark conflicts with adidas, Marca Mode and other companies had claimed that stripe motifs other than that registered for adidas must remain available for all economic operators, and that stripe motifs on garments were moreover purely decorative in nature. The ECJ held that the availability criterion was not a relevant factor neither when assessing a likelihood of confusion nor within the context of the enhanced protection of trademarks with a reputation. Furthermore, the competitors of adidas could not rely on the mere decorative character of stripe motifs within the context of Article 6 (1) (b) of the Harmonization Directive (Limitations of the effects of a trademark), because “decorative nature” was not a descriptive indication as provided in Article 6 (1) (b). As a result, other companies cannot rely vis-à-vis adidas on the requirement of free availability or on the purely decorative nature of stripe signs, provided that a likelihood of confusion or a conflict with a trademark with a reputation exists.
Pursuant to Article 4 CDR a design can only be protected as a community design to the extent that it is new and has individual character. A design shall not be considered new if an identical design has been made available to the public (disclosed) before.
A recent decision of the Third Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) confirms the general view that also disclosure outside the European Union, for example in China, can be detrimental to novelty of an European design. OHIM argues that in such a case it is not necessary that the design in question has actually been placed on the market in Europe or elsewhere, but that it can be sufficient if the design has e.g. been exhibited at an important trade fair in China or has been promoted in the Chinese specialized press. The only requirement is that the design in question could have become known to the specialized trade circles within the European Community in the normal course of business. In view of the increased volume of trade between Europe and China, the Board of Appeal assumed in the present case that EU designers, manufacturers, importers and distributors of kitchen appliances are well aware of kitchen products disclosed in China.
Although the decision only refers to the design of kitchen appliances, it can be assumed that this legal practice will be extended to other product groups. The Chinese market in particular is an important place of production for many technical devices and thus is thoroughly observed by the specialized circles operating within the European Union. For this reason it is increasingly important especially for international companies to protect their designs at an early stage and to keep good record of their first publication in order to guarantee that a subsequent application is in any case filed within the 12-months grace period.
At 6.30 pm on 16 January 2008, after the oral proceedings in the Opposition Proceedings, the European Patent Office revoked patent EP-B1 0 639 228 with the title “DNA Typing with short tandem repeat polymorphisms and identification of polymorphic short tandem repeats”, which was filed by the Baylor College of Medicine in 1992 and is exclusively licensed to Promega USA.
The revoked EP patent was to protect a PCR-based profiling assay during which so-called short tandem repeats (STR) are amplified. The STRs according to the invention were repetitive DNA sequences with the repeat unit consisting of four nucleotides. These nucleotides are located in specific loci in the genome of every human being. Every human being has two copies of one locus. When examining several loci, the common origin of two samples of an individual can be tested with an extremely high statistical significance. The test is used by the FBI and the German Federal Criminal Police Office, amongst others, for the so-called genetic finger printing. A further area of use is paternity diagnostics.
In 2006, opposition was filed against the patent EP-B1 0 639 228 based on lack of novelty and lack of inventive step. With intermediate notice before the oral proceedings, the Opposition Division stated that the granted patent was not considered new. The exclusive licensee, Promega, USA, filed more than six auxiliary requests. In the written proceedings and in the oral proceedings, the patent attorneys Hans-Rainer Jaenichen and Christian Kilger succeeded in convincing the Opposition Division that none of the requests is patentable.
Thus, the patent has been revoked in its entirety.
France has deposited the instrument of ratification with the German Ministry of Justice on January 29, 2008.
The London Agreement will thus enter into force on May 1, 2008.
For more information please visit the EPO homepage or feel free to contact us.
On January 1, 2008, the accession by the European Community to the Hague International Design System became effective. The European Community had submitted its instrument of accession to WIPO on September 24, 2007.
Applicants and designers from the European Union will now be able to obtain design protection by one single application not only for the European Union, but for all the member states of the Geneva Act of the Hague Agreement, in a simple, effective and economic way.
Meanwhile also the accession of the U.S.A. is drawing nearer: On December 7, 2007 the US Senate approved the ratification of the Hague Agreement so that President Bush is expected to sign the instrument of ratification in the near future.
In its decision in Case C-234/06 P – Il Ponte Finanziaria (Bainbridge) of September 13, 2007, the European Court of Justice (ECJ) clarified some important questions concerning direct as well as indirect likelihood of confusion (trademark series) between trademarks. Where direct likelihood of confusion is concerned, the Court held that the assessment of any aural similarity was but one of the relevant factors for the purpose of global assessment. If, when making a purchase, the relevant public usually perceived visually the mark designating the goods (in this case: clothing and leather articles) the degree of aural similarity between the marks could be of less importance. Where mere phonetic similarity between two signs was established there was not necessarily a likelihood of confusion (para. 35 and 36). As regards an indirect likelihood of confusion, the ECJ stated that the opponent could successfully claim a series or family of marks only if a sufficient number of trademarks capable of constituting a family or a series was actually in use, and that the competent court was entitled to require the necessary proof (para. 64 and 65). Both findings should lead to an adjustment of the German case-law.
OHIM recently announced a number of changes of Office practice, aimed at simplifying and accelerating the opposition proceedings.
Admissibility check: (1) In future, oppositions will be considered admissible if the admissibility criteria are complied with at least for one of the earlier rights on which the opposition is based. (2) In order to indicate the goods and services of the earlier rights on which the opposition is based, it will be sufficient for admissibility purposes to state the relevant class number(s). By these amendments, the Office intends to process oppositions more quickly in the early stages of the proceedings.
Adversarial proceedings: (1) In case an opposition or CTM application is withdrawn during the adversarial part of the opposition proceedings, OHIM will in future issue the cost decision together with the confirmation of withdrawal, to avoid the necessity of awaiting a separate cost decision. (2) Joint requests for suspension of the opposition proceedings during negotiations will be granted on similar lines as joint applications to extend the cooling off period, i.e. the second request for suspension will be granted for the period of one year, with the possibility of opting out.
The changes entered into force on September 17, 2007.
In two landmark and final decisions of September 20, 2007, the German Federal Supreme Court (FSC) rejected infringement claims the chocolate manufacturer Ferrero had brought, based on several “Kinder” trademarks which were registered together with additional graphical elements and/or in colour, against its competitors Haribo (for use of the trademark “Kinder Kram”) and Zott (for use of the sign “Kinderzeit”). In both cases the reason for refusing Ferrero’s claims was the same: The word element “Kinder” (“kids”) was not per se registrable for chocolate, since it merely designated the customers, namely kids. When taking into consideration the graphical elements of the plaintiff’s marks, there was no similarity between those trademarks and the competitor’s marks. It seems that Ferrero was not able to successfully claim that the “Kinder” trademarks are well-known in Germany. The two decisions, which have not yet been published in full, could have considerable impact on pending or future cases with a similar background. In particular it is to be expected that registrability aspects will receive more emphasis in future in trademark opposition and infringement cases. Case numbers of the FSC: I ZR 6/05 and I ZR 94/04. Further information can be found under www.bundesgerichtshof.de, Pressemitteilung (press release) No. 132/2007.
On August 7, 2007 the Technical Board of Appeal 3.3.05 of the European Patent Office revoked the patent EP 1 013 342 B1 in full for lack of novelty in opposition-appeal proceedings (T 0868/06) in which the Attorneys Christian Kilger and Dieter Heunemann from the Berlin Office of Vossius & Partner represented three clients which had previously been sued under this patent for patent infringement before the Düsseldorf District Court. These clients intervened during the appeal which had been launched be another party.
In the mid nineties, motorized PCR-machines were first developed in order to cope with the necessity of automating processes such as the polymerase chain reaction and sequencing, techniques which were used for determining the human genome sequence. Thereafter, these automated machines were indispensable for all high throughput applications.
The patent claimed a thermocycler apparatus for chemical and/or biological reactions with a cover for closing a base body, a locking mechanism and an electrically activatable positioner, arranged so that the cover may be urged against reaction vessels. Numerous companies in Germany and Europe had been sued for patent infringement. The revocation of the European patent allows the companies concerned to offer automated high pressure lids for PCR devices again and to revive the competition in this market. It is more than likely that Applera Corporation USA will now withdraw all pending patent infringement suits based on this patent.
On June 28, 2007, the Enlarged Board of Appeal of the EPO finally decided on the various questions referred to it with respect to the filing and content of Divisional applications. In brief, the established practice of the EPO is confirmed and the recent deviating decisions of various Technical Boards of Appeal are disapproved.
The Australian High Court has given its first detailed consideration to the issue of inventive step under the "new" Patents Act 1990.
In what is arguably the most important patent case to come out of Australia for many years, the High Court adopted a firmly pro-patent position which will shape Australian patent law for many years to come. A detailed discussion of the case provided by our colleague Bill Bennett of Pizzeys, Patent & Trade Mark Attorneys, Australia, is attached in pdf format.
The Norwegian parliament decided to accede to the European Patent Convention as of January 1, 2008
On May 21, 2007, the EU Council chaired by German Federal Minister of Justice Brigitte Zypries adopted a decision to reduce the fees of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) as soon as possible. Considering the ten-year success story of the Community trademark system far exceeding expectations and leading to a substantial revenue surplus, the European Commission was called upon to immediately propose a reduction of the fees charged by OHIM, in particular of the fees for the application, registration and renewal of Community trademarks.
News on further progress in this matter will be placed at this site when available.
In 2000 Lindt, the well-known Swiss manufacturer of high-quality chocolate products, registered the form of a sitting chocolate Easter bunny as a 3-D Community trademark. The bunny was wrapped in golden foil with the imprint “Lindt GOLDHASE” and wearing a red collar with a ribbon and a little golden bell.
When Riegelein, a German producer of confectionery, also manufactured and distributed a sitting chocolate Easter bunny wrapped in golden foil with the imprint “RIEGELEIN CONFISERIE” and wearing an imprinted brown-red ribbon, Lindt claimed that this bunny infringed its 3-D Community trademark.
The Regional Court as well as the Appeal Instance, the Higher Regional Court however, rejected Lindt’s claims, arguing that there was no likelihood of confusion. Both Courts claimed that the word element “Lindt GOLDHASE” dominated the overall impression of the 3-D trademark so that the differing word element “RIEGELEIN CONFISERIE” would lead to a sufficient distance between the marks, allowing the relevant consumers to distinguish between the golden Easter bunnies.
Upon Lindt`s further appeal the decision was reversed by the Federal Supreme Court and the matter was referred back to the Higher Regional Court.
The Federal Supreme Court objected to the findings of the Higher Regional Court and argued that it could not be assumed that the pictorial overall impression of the Lindt bunny was dominated by the word element “Lindt GOLDHASE” alone. The Court held that also the shape and colour had to be taken into account when examining the overall impression conveyed by a 3-D trademark – unless such features were of no relevance in comparison to existing word elements.
In the present case the Federal Supreme Court held that the “sitting rabbit” shape and golden colour of the bunny had not sufficiently been taken into consideration. Furthermore, it had been neglected that the features of the red collar with ribbon and golden bell provided a high degree of distinctiveness to the 3-D trademark, thus influencing the figurative overall impression conveyed by the “Lindt” Easter bunny.
Now it will remain to be seen whether the Lindt Easter bunny will continue to be the only golden chocolate rabbit being hidden at Easter time…
Decision of October 26, 2006 – I ZR 37/04
On 1 December 2006, the Government of the Republic of Malta (MT) deposited its instrument of accession to the European Patent Convention (EPC) and to the Act revising the EPC of 29 November 2000 (Revision Act).
On 1 December 2006, Malta deposited its instrument of accession to the PCT which will enter into force for Malta on 1 March 2007.
On August 30, 2006, the Technical Board of Appeal 3.2.04 of the EPO revoked the Patent EP 0 904 717 in full for lack of inventive step in opposition-appeal proceedings (T 0452/05) in which Vossius & Partner represented one of the Opponents. Ever since the launch of the well known "Senseo"-machine of Philips and Sara Lee on the market in 2002, millions of this machine have been sold. The machine uses "coffee pouches", that is to say coffee-filled pads in pre-portioned amounts and individually packaged in filter paper. Sara Lee tried to monopolize this "coffee pouch" market by its European Patent EP 0 904 717. The Patent claimed an "assembly" comprising a filter container and a matching "coffee pouch". In previous proceedings, the Regional Court of Düsseldorf had completely prohibited numerous coffee roasting companies from marketing any kind of these allegedly matching "coffee pouches", finding for contributory patent infringement. Vossius & Partner succeeded in subsequent appeal and preliminary injunction proceedings in having this total prohibition lifted for a renowned well-established company to the effect that the "coffee pouches" could be sold for alternative uses (for instance for applications in machines with sieves). The revocation of the European Patent allows the companies concerned to offer their coffee pouches again and to revive the competition on this market. Sara Lee has now also withdrawn its patent infringement suit.
The ECJ decided that Art. 6 (1) Council Regulation (EC) No. 44/2001 does not apply in European patent infringement proceedings.
The ECJ decision will bring an end to cross border patent infringement proceedings because as soon as the invalidity of the patent is invoked within an infringement case the infringement court would have to declare of its own motion not to have jurisdiction with regard to infringement/validity of a foreign patent.
The recent Case Law of the EPO shows substantial uncertainties in connection with the validity and the contents of Divisional Applications. Vossius & Partner explains.
by Dr. Paul Tauchner and Dr. Niels Hölder