Trademark Law

TESTAROSSA –judgment of 22^th October, 2020, CJEU C‑720/18 and C‑721/18
In a ground-breaking decision, the Court of Justice answers questions on genuine use of a trademark in preliminary ruling proceedings. A trademark registered for a group of goods and their component parts is, in principle, put to genuine use for all the goods and component parts belonging to that group if it has been used only for certain goods (such as high-priced luxury sports cars) or only for component parts or accessories of some of those goods, unless the consumer regards them as an independent sub-group. A trademark may also be put to genuine use by its proprietor by marketing used goods put on the market under the trademark or by offering services under the trademark. The use of a trademark in Switzerland may be considered as genuine use of a German trademark on the basis of the German-Swiss Agreement of 1892.

CORNEREYE – judgment of 5^th March, 2020, GC T‑688/18
The General Court annuls a decision of the EUIPO Board of Appeal concerning the likelihood of confusion in relation to trade marks with a weak distinctive character. The fact that the signs CORNEREYE and BACKEYE are identical in the last descriptive element ​‘EYE’ is not sufficient for there to be visual and phonetic or conceptual similarity between the signs, which are dissimilar in their initial elements. The General Court did not address the question of whether any enhanced distinctiveness in the United Kingdom can be taken into account at all in view of Brexit.

BretarisGenuair – BGH 2017 GRUR 1160
In an important judgment, the Federal Supreme Court clarifies the limits of a permissible parallel import. The trade mark proprietor may prohibit the parallel distribution of a medicinal product authorised throughout the European Union for infringement of the labelling provisions of the German Medicines Law, even if the parallel distribution has been notified to the European Medicines Agency (EMA). The notification certificates issued by the EMA are no administrative acts authorising parallel distribution under the notified labelling. The parallel importer cannot invoke exhaustion.

acopat – judgment of 23^rd September, 2009, GC T‑409/07
In this ruling, the General Court of the European Union provides some interesting guidelines for proving that serious use is being made of a trade mark. 

audison – BGH 2009 GRUR Int. 257
The Federal Supreme Court answers a number of open questions in relation to the unlawful agent trade mark. He notes, inter alia, that the claims based on Art. 11, 17 Trade Mark Law also exist if the principal, as yet, has only applied for a foreign trade mark at the time of the agent’s national application. Any marketing intermediary who has at least a secondary obligation vis-à-vis the principal to regard his interests can be regarded as an agent in the sense of these provisions.

The Colour of Elegance – BGH 2005 GRUR 581
The BGH deals for the first time with bad faith as a ground for invalidity pursuant to Art. 51 (1) (b) CTMR (now Art. 52 (1b) UMV). It notes that there is no intention to obstruct as long as the focus is on promoting the applicant’s own competition. The latter is to be presumed where the mark applied for extends an existing sign right within the meaning of a ​‘family of marks’. Obstruction as a side effect is not tolerated.

Das Prinzip der Bequemlichkeit (The Principle of Comfort) – CJEU 2005 GRUR Int 224
For the first time the European Court of Justice deals with the matter of the registrability and distinctiveness of advertising slogans. The Court of First Instance upheld the applicant‘s suit for registration (2002 IIC 970) and found that no stricter criteria were called for in the case of slogans than in relation to other marks. The European Court of Justice dismissed the appeal of the Office for Harmonization in the Internal Market and confirmed in principle the registration of advertising slogans as trademarks.

stüssy/​stüssy II – BGH 2000 GRUR 879 and 2004 GRUR 156 = 2004 IIC 699
In this dispute the trademark holder sued to block the sale of original merchandise which, as he represented, had been imported into the EU or EEA without authorization. After a submission decision by the European Court of Justice (2003 GRUR 512 = 2003 IIC 654), Germany’s Federal Supreme Court laid down new principles for the distribution of the burden of proof in such cases.

Companyline – CJEU GRUR 2003, 58
With this second decision on the distinctiveness of community trademarks, the European Court of Justice gives up its generous line from the ​“Baby-Dry” decision of 2001. In so doing, it makes it clear that the appreciation of facts is open to review by the European Court of Justice only in the exceptional event that the lower court’s appreciation distorts the presentation of the facts.

1, 2, 3 im Sauseschritt (“Quick as a wink”) – BGH 2002 GRUR 1083
Germany‘s Federal Supreme Court initially finds that the distinctiveness of registered dictums as a trademark should not be judged differently from the distinctiveness of other identifiers. At the same time, a specific semantic content associated with the dictum can eliminate any danger of confusion if the semantic content of the attacked identifier differs from it.

Tiffany II – BGH 2002 GRUR 1079
Germany‘s Federal Supreme Court substantiates the merchandise likeness / similarity of jewelry on the one hand and ophthalmic products (eyeglasses frames) on the other. The ruling is one of a series of decisions which, after the ​“Canon” decision of the European Court of Justice, marks a move by the Federal Supreme Court toward an absolute similarity concept for goods and services.

Fabergé – BGH 2002 GRUR 340
Following the Chevy decision by the ECJ, the BGH (Federal Court of Justice) does not require, for a mark to be known, that the mark should be familiar to a particular percentage of the relevant public. Instead, all the relevant circumstances of the individual case (market share, use and investments) must be taken into consideration when weighing up the overall merits.

EuroHealth – CGEU 2001 GRUR 835 = 2002 IIC 216
The Court of First Instance recognizes the registration of the mark ​“EuroHealth” as a community trademark for financial services. It thus opposes the view that combining a descriptive word or phrase with the mark ​“Euro” renders the combination unprotectable as a trademark.

Drei-Streifen-Kennzeichnung (Three-Stripe Mark) – BGH 2001 GRUR 158 =2002 IIC 770
Germany‘s Federal Supreme Court broadens the scope of protection of the adidas stripes to include a 2‑stripe design. It takes the position that, because the adidas stripes are so well-known, the consumer will recognize the trademark even in such differing versions. The ​“adidas/​Fitnessworld” decision of the European Court of Justice of 2003 (2004 IIC 65) is along the same lines.

Aral/​Blue I – BPatG 1999 GRUR 61 = 1999 IIC 812
Several senates of Germany‘s Federal Patent Court had initially rejected the registration of abstract-color trademarks. This decision modified those prior rulings. Meanwhile in its ​“Libertel” decision (2004 IIC 56) the European Court of Justice confirmed the registrability of color trademarks and thereby clarified one of the most contentious issues in trademark law.