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April 2013
German Federal Patent Court Refers Question Regarding a Color Mark to the European Court of Justice
In two proceedings 33 W (PAT) 103/9 and 33 W (PAT) 33/12 (decision) the validity of the color mark “Red”, which has been registered as a color since 2007 on behalf of German Savings Bank and Giro Association and which has been used starting from the last century, namely during the 1960s and 1970s, is at issue. Two banks, which are competitors, have failed with the attempt to cancel this trademark at the German Patent and Trademark Office. Now the German Federal Patent Court has asked the European Court of Justice for a decision as to how large the share of the consumers must be, who associate the color with a certain company and how the interests of competitors in a free use of said color has to be taken into consideration. Furthermore, it shall be clarified, which point in time is relevant for this assessment, the date of the application of the trademark (in this case, 2002) or its registration (in this case, 2007). Finally, it shall be clarified as to who has the burden of proof and to the disadvantage of which party the case has to be decided if the view of the consumer at the relevant point in time cannot be determined anymore.
April 2013
European Court of Justice Rejects Spain’s and Italy’s Actions against the Unitary Patent System
The council of the European Union has allowed in total 25 European member states to create a Unitary Patent System based on the so-called enhanced cooperation which is possible under the TFEU. The attempt of Italy and Spain to challenge this decision has now been rejected by the European Court of Justice in a decision of April 16, 2013 Cases C-274/11 and C-295/11. The European Court of Justice had to answer several rather basic questions such as whether EU member states are competent at all for an enhanced cooperation in the field of patents or whether the European Union has exclusive competence and whether the enhanced cooperation which must be adopted as a last resort is permissible in the present case. In summary, the united patent system has taken an important hurdle.
March 2013
The Board of Appeal of the European Patent Office refuses new arguments in appeal pro-ceedings
In a decision of March 7, 2013 (T 0494/11) a board of appeal of the EPO has not admitted the amendment of a parties case during appeal proceedings. An opponent has introduced one month before the scheduled oral proceedings a patent application to show that the claimed prior-ity was not the first application in the sense of Article 87 (1) EPC. Consequently the opponent raised further objections relating to lack of novelty and lack of inventive step. Independently of this priority issue further objections with regards to an inventive step were raised, objections which the reasons of appeal of this opponent did not contain. The Board of Appeal concluded that the introduction of these objections at such late state of the proceedings would be contrary to the spirit of the appeal proceedings as for seen in the Rules of Procedure which prescribes that the statement of grounds and the reply to it must contain a parties complete case. Conse-quently all late filed arguments were not admitted to the proceedings.
March 2013
The District Court of Dusseldorf refers a case to the European Court of Justice
In a decision of March 21, 2013 (4b O 104/12), the District Court of Dusseldorf has referred several questions relating to standard essential patents to the European Court of Justice. The background is that the German Federal Supreme Court has defined in a landmark decision (KZR 39/6) “Orange – Book – Standard” rather harsh pre-conditions, under which an infringer of a standard relevant patent is entitled to a license and can defend himself accordingly. Basically, the infringer has to offer to enter into a license agreement, the refusal of which offer by the patentee would be discriminatory. Furthermore, the infringer has to render an accounting and to pay for past infringement in order to have this defense argument. In a press release of December 21, 2012, the European Commission arguably has defined less strict pre-conditions of this defense, namely that the competitor declares to be willing to negotiate a license agreement. Now the District Court of Dusseldorf has asked the European Court of Justice for a clarification.
March 2013
Signing of the Unified Patent Court Agreement
On February 19, 2013, the International Agreement for Establishing a Unified Patent Court was signed. To come into force, the Unified Patent Court Agreement must be ratified by at least 13 of the contracting European Union member states including France, Germany and the United Kingdom. The Court of the First Instance has a central division which will be located in Paris and which has specialized sections in London and Munich. If all necessary decisions are adopted in a timely manner, the first registration of a European patent with the unitary effect may take place in spring 2014.
March 2013
The German Federal Supreme Court decides about reimbursement of costs in patent nullity proceedings
At the German Federal Patent Court, different chambers have rendered in the past contradicting decisions as to the question of reimbursable costs in patent nullity proceedings. Now, the German Federal Supreme Court has clarified this issue in two decisions dated December 18, 2012 (X ZB 6/12 and X ZB 11/12): If there is a parallel patent infringement action pending which is an action between the same or affiliated parties, then the costs which are caused by the representation in the proceedings by a patent attorney and an attorney-at-law are reimbursable.
January 2013
The European Court of Justice Decides about International Jurisdiction for Negative Declaratory Actions
In a decision of October 25, 2012, (C-133/11), the European Court of Justice has answered questions of the German Federal Supreme Court regarding the international jurisdiction for negative declaratory actions: the place of jurisdiction in case of a tortuous act is defined by that place where the damaging event has occurred or is likely to occur. This is the place where the damage is realized as well as the place of the event which is causal for the damage. At both places, a negative declaratory action can be brought which aims at a declaratory judgement saying that the preconditions of liability resulting in a damage claim are not fulfilled. A court which cannot assume one of these connecting points has to deny its jurisdiction.
January 2013
The District Court of Cologne Decides about the Infringement of a Word-mark by a Chocolate Teddy Bear
In a decision of December 28, 2012 (33 O 803/11) Gold Bears, the District Court of Cologne concluded that marketing a chocolate teddy bear wrapped in gold foil infringes the renowned word-mark “Gold Bears” of the plaintiff. The decision is of importance because so far there is no Supreme Court case law regarding the infringement of a word-mark with a three-dimensional design. The District Court of Cologne sees it as a similarity, which causes the trademark violation that the trademark “Gold Bears” represents the same meaning as the three-dimensional design. A further reason is, according to the District Court, the fact that the chocolate teddy bear wrapped in gold foil has the outer form of a gummy bear for which products the trademark “Gold Bears” of the plaintiff has an outstandingly high profile.
January 2013
The German Federal Supreme Court Decides about a Novelty of a Substance Composition
In a decision of October 23, 2012 (X ZR 120/11) the German Federal Supreme Court decided that a substance composition which is available on the market is not new if it can be analyzed by the skilled person and reproduced without undue effort. If the composition is complex and cannot be easily identified, it is nevertheless novelty destroying if the skilled person can develop a limited number of plausible hypotheses about the possible composition and if he/she can verify these hypotheses by means of available tools for analysis.
January 2013
The German Federal Supreme Court Decides about Keyword-Advertising
In a decision of December 13, 2012 (I ZR 217/10), the German Federal Supreme Court did not see it as a trademark infringement that a competitor has used the trademark “MOST” as a keyword. According to the German Federal Supreme Court, there is in general no confusion about the origin of goods if, after using a keyword, the advertisement which pops up is clearly separated from the hit-list and only shown in an advertisement block which neither shows the trademark nor a hint to the trademark owner or the goods offered under that trademark.
January 2013
EU Parliament and EU Competitiveness Council vote in favour of the unitary patent
On December 10 and 11, 2012, the European Competitiveness Council as well as the European Parliament voted in favour of the current unitary patent package. The following day, the Advocate General proposed that the Court of Justice of the EU should reject the corresponding pleas put forward by Spain and Italy and, consequently, dismiss both actions. In view of this, the unitary patent, finally, seems to be in reach. Read more about the unitary patent package. (more)