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The Preparatory Committee of the Unified Patent Court is updating its Roadmap
In September 2014, the Preparatory Committee has updated its Roadmap () giving an overview over the already work completed, the status of several drafts among others concerning the Rules of Procedure, the Court fees and the Litigation Certificate for patent attorneys, the financial aspects, the facilities of the Court as well as human resources and training.
The German Federal Supreme Court decides on the Scope of Protection of a Color Trademark
In a decision of September 18, 2014 (I ZR 228/12 “Yellow Dictionaries”) the German Federal Supreme Court concluded that a defendant who distributed language learning software for 33 languages in a yellow packaging together with its own logo infringes the color mark “YELLOW” for bilingual dictionaries in print form of the plaintiff. The color trademark “YELLOW” was registered due to acquired distinctiveness since the plaintiff distributes dictionaries since 1956 in a yellow cover. The Supreme Court concluded that the defendant used the yellow color as a trademark. Usually, the use of a color on a packaging is understood by the consumer as a design feature and only in exceptional cases as a trademark. On the market for bilingual dictionaries, however, colors have a distinguishing function. This also affects the neighboring market of language learning software.
The German Federal Supreme Court sends a case back to the Higher Regional Court
In a decision of May 6, 2014 (X ZR 36/13) the German Federal Supreme Court concluded that the Higher Regional Court has not properly dealt with the question of patent infringement under the doctrine of equivalence. This line of argumentation, however, was brought forward by the plaintiff in the first and second instance. The German Federal Supreme Court concluded that the constitutional right of the plaintiff to be heard before the Court was violated, and has sent the case back to the second instance so that the case can be reviewed under the aspects of infringement under the doctrine of equivalence.
A Board of Appeal of the EPO decides on the admissibility of patent claims in the second instance
In a decision from July 15, 2014 (T 0036/12) a Board of Appeal had to deal with a main request and an auxiliary request having a scope broader than those considered in the appealed decision. The Board of Appeal did not accept these claim requests based on the argument that they have not been the object of the decision under appeal, since during the first instance opposition proceedings only claim requests have been considered which had a more limited scope. The Board of Appeal noted that former Board of Appeal decisions were not that strict in this regard, which allowed the patentee to defend his patent in the second instance in a broader manner than it was defended in the first instance. However, the Board of Appeal reasoned that meanwhile the Rules of Procedure of the Boards of Appeal in particular, Article 12 (4) RPBA have changed which justifies a different approach. Admitting the broader requests in the second instance would not only be contrary to the main purpose of the appeal proceedings, which is a review of the decision of the first instance, but also grant the possibility to shift the case as it pleases to the appeal in a kind of forum shopping. Remitting the requests back to the first instance is not an alternative either, because it would be unacceptable from the procedural economy’s point of view, since it would substantially and unnecessarily delay the proceedings.
The German Federal Supreme Court decides on transit of patent infringing items
In a decision of June 25, 2014 (X ZR 72/13) the German Federal Supreme Court confirmed its view that the mere transit of patent infringing items does not constitute patent infringement because it is not an import for marketing purposes in the Federal Republic of Germany. Even questions of import taxation are of no relevance in that context. A patent infringing activity is only in place as soon as there is a sale in Germany or the item has been imported to that purpose; whether or not this is the case must be decided on a case by case basis.
The European Court of Justice had to decide regarding the registration of a Trademark showing the Apple “flagship store”
In a decision of July 10, 2014 (C – 421/13) the European Court of Justice had to deal with a three-dimensional mark showing the Apple “flagship store”. The background was that the German Federal Patent Court has addressed several questions in this context to the European Court of Justice. The critical issue was for which kind of services the three-dimensional mark could – if at all – be registered. Hereto the European Court of Justice concluded that the representation of a design alone without indicating the size or the proportions of the layout of a retail store may be registered as a Trademark for services. However, the services may be related to the offered goods but do must not form an integral part of the offer for sale thereof. Furthermore, the sign must be capable of distinguishing the services of the applicant for registration from those of other undertakings.
The UK High Court of Justice grants a declaration of non-infringement (DNI) with cross-border effect
In a decision of May 15, 2014, the High Court of Justice has granted a DNI not only with effect to the UK, but also with effect to France, Italy and Spain. The Court concluded that the law applicable to the question whether the plaintiff is entitled to a DNI is English law. However, even if French, Italian and Spanish law is applicable, the Court concluded that the plaintiff was entitled to a DNI in respect of the French, Italian and Spanish designations of the European Patent in question. As to the question whether the respective designations of the European Patent are in fact infringed or not, the Court applied the respective laws of the different European Patent Convention Member States in question. The decision provides an excellent overview on the different concepts about claim construction and claim interpretation. Note that the District Court Düsseldorf came to a different conclusion and found infringement under the doctrine of equivalence.
A Board of Appeal of the European Patent Office refuses to transfer oral proceedings from The Hague to Munich
In a decision of April 8, 2014 (T 1142/12), the Board of Appeal ruled that the EPO is organized whereby in the case that the Examining Division is located in The Hague, oral proceedings are to be held in The Hague and when the Examining Division is located in Munich, oral proceedings are to be held in Munich. This rule is based on a management decision on the organization of work within the EPO finally made by its president. Neither the Examining Division nor the Boards of Appeal have the competence to challenge this rule. Furthermore, the Board of Appeal refused to refer the question to the Enlarged Board of Appeal.
The German Federal Supreme Court decides on claim interpretation
In a decision of April 1, 2014, the German Federal Supreme Court has revoked a first instance decision of the German Federal Patent Court in an invalidity case (X ZR 31/11). Crucial was the interpretation of a claim concerning a “tyre removal machine … comprising a device in accordance with claims 1 to 12”. The first instance has come to the conclusion that subject matter of this claim is a tire removal machine comprising a device which needs to show cumulative all features of all claims from 1 to 12. The German Federal Supreme Court ruled to the contrary that the subject matter of the claim is a tyre removal machine comprising a device which can show alternatively the features of claims 1 to 12 or combinations thereof. The German Federal Supreme Court based its claim interpretation on the understanding of the skilled person regarding the patent description and the drawings which approach is in line with Article 69 EPC.
The European Patent Office decides on staying the granting proceedings
In a decision of November 14, 2013 which has just been published, a Board of Appeal of the European Patent Office (J 0014/11) had to decide on an appeal against the decision of an Examining Division to continue the patent prosecution despite the fact that there was at a German Court an action pending concerning the inventorship and the right to the patent. The Board of Appeal concluded that the Examining Division has discretionary authority to decide on the question of how long the proceedings should be stayed. The application of this discretion by the Examining Division can only be controlled in a limited way by the Board of Appeal. However, new facts namely new developments in the national court proceedings concerning inventorship have to be taken into consideration even at Appeal Board level.
The European Commission decides on competition rules in the context of standard essential patents
In two decisions of April 29, 2014, the European Commission has clarified its understanding of how standard essential patents shall be used within the European Community by complying with EU anti-trust rules. In one case(Samsung), the Commission has accepted legally binding commitments on standard essential patents to the extent that Samsung will not seek injunctions and has offered a license under so-called “FRAND” (“fair, reasonable and non-discriminatory”) terms. In another case (Motorola), the Commission has ordered Motorola to eliminate the negative effects resulting from the enforcement of a standard essential patent. More details are explained in the press releases under.
The European Court of Justice decides on the liability of an Internet access provider
In a decision of March 27, 2014 (C-314/12), the European Court of Justice had to decide on the admissibility of specific court orders rendered by national courts against Internet access providers. National courts are allowed to grant an injunction prohibiting an Internet access provider from allowing its customers access to a website placing protected subject-matter online without the agreement of the right holder. However, there must be a certain degree of freedom for the Internet access provider when choosing the right measures to respect the court order. Furthermore, only reasonable measures must be taken. In this context, it has to be taken into account whether the measure is effective in preventing unauthorized access to the protected subject-matter or, at least, of making it difficult to achieve and that the measures do not unnecessarily deprive Internet users of the possibility of lawfully accessing the information available.
German Federal Supreme Court decides on statute of limitations in employed inventors matters
In a decision of November 26, 2013 (X ZR 3/13) the German Federal Supreme Court had to decide about the statute of limitation regarding claims raised by an employed inventor. According to the German Employees Inventor Act the inventor and the employer have the option to contact an arbitration body established at the German Patent and Trademark Office before bringing suit. The German Federal Supreme Court now has decided that approaching this arbitration body leads to suspension of the period of limitation which is applicable regarding the claims of an employed inventor at issue.
Germany will have four local chambers in the Unified Patent System
The four patent chambers in the European Unified Patent System in Germany will be in Düsseldorf, Mannheim, Munich and Hamburg. These Unified Patent Courts will start their work in Germany together with the implementation of the EU-Patent. The member states of the European Union can build local or regional chambers usually one chamber per member state. Because of the high number of patent cases, Germany is allowed to build four chambers which will be implemented at the above-mentioned courts.
The European Court of Justice decides about Hyperlinks and Copyright
In the decision of February 13, 2014 (C-466/12) the European Court of Justice came to the conclusion that the owner of an Internet page is allowed to refer to copyright protected works which are accessible through a third party’s Internet page via a hyperlink and without the permission of the copyright owner. The European Court of Justice stated in fact that setting of a hyperlink which leads to a copyright protected work is an act of public reproduction within the meaning of the laws of the European Union; but because the copyright protected work is freely accessible at another Internet page, there is no copyright infringement. The reproduction is, according to the Court, not directed to a new audience, which means an audience which the copyright owner did not want to reach when he allowed the original reproduction. In that respect, it does not play a role whether an Internet user, clicking onto that link, has or does not have the impression that the work is directly accessible via the webpage he is visiting and which contains the link.
German Federal Supreme Court decides about „Typo Domain Names”
In a decision of January 22, 2014 (I ZR 164/12 the First Division of the German Federal Supreme Court which is competent for unfair competition has rendered a judgement on “Typo Domain Names”. The plaintiff provides weather forecast services under the domain name “www.wetteronline.de”. The defendant offers private health insurances under the domain name “wetteronlin.de”. A user making a typing error comes to the internet homepage of the defendant which gets a reward for any click on its homepage. The German Federal Supreme Court found the use of this “Typo Domain” to violate the Unfair Competition Act under aspect of an unfair hampering. The Court, however, denied a violation of name rights because the domain “wetteronline.de” is lacking the required distinctiveness for a name. Moreover, the Court rejected a request for deletion of the domain name “wetteronlin.de” because one can think of a legal use of this domain name and the mere registration does not hamper the plaintiff in an unfair manner.
The General Court of the European Union denies trademark protection for the “Button in the Ear”
In a decision of January 16, 2014 the 5th Chamber of the General Court of the European Union has rejected in the legal matter T-433/12 the action of a trademark applicant for registration of a position mark for a shining or dim round metal button in the ear of a plush toy. According to the Court this trademark lacks distinction. First of all, this mark inevitably is fused with the appearance of the plush toy itself and usually would not be understood by the consumer as a hint to the indication to the origin from a certain enterprise. A distinctive sign could only then be seen in if it is considerably different from a usual configuration in the relevant sector. This is, according to the Court, not the case because buttons for plush toys are usual configurations within a wide variety the consumer is used to.