BGH decides in eis.de/Bananabay "AdWords" case

While we are still digesting the ECJ’s guidance concerning AdWords in eBay v L’Oreal (C-324/09, see the IPKat's post here) the German Federal Supreme Court (Bundesgerichtshof) has today finally published its eagerly and long awaited decision in Eis.de (otherwise known as the Bananabay case: see our earlier reports here, here and here).

The decision was already handed down in January 2011 but was only published today, with impeccable timing by Germany’s highest court in civil matters. By way of reminder, Eis.de was based on the following facts: the claimant and the defendant both sold adult entertainment products. The claimant, who owned a trade mark registration for "bananabay", sought to stop its competitor's use of that trade mark as an 'AdWord' claiming trade mark infringement and seeking damages.

The Bundesgerichtshof had referred the following question to the ECJ:

"Is there use for the purposes of Article 5(1)(a) of Directive 89/104/EEC where a third party provides as a keyword to a search engine operator a sign which is identical with a trade mark, without the consent of the proprietor of that trade mark, so that, on inputting the sign identical with the trade mark as a search term into the search engine, an electronic promotional link to the third party's website advertising identical goods or services appears in an advertising block set apart from the list of search results, that link is marked as a sponsored link and the advertisement itself does not comprise the sign nor contain any reference to the trade mark proprietor or to the products it is offering for sale?"

Here is the IPKat's translation of the German version of the ECJ's response in eis.de (Case C-91/09) -- this Kat has checked: Curia still does not offer an English translation and probably never will... :

"Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or by an undertaking which is economically connected to it or, on the contrary, originate from a third party."

Please find this Kat’s translation of the court’s head note (Leitsatz) in Bananabay II (case reference I ZR 125/07) set out below:

“Where a third party provides a sign as a keyword to a search engine operator which is identical with a trade mark, without the consent of the proprietor of that trade mark, so that, on inputting the sign identical with the trade mark as a search term into the search engine, an electronic promotional link to the third party's website advertising identical goods or services appears in a specially marked advertising block set apart from the list of search results (AdWords advertisement), then this will not be use of that trade mark in the sense of Article 5(1)(a) of Directive 89/104/EEC, § 14 (2) No. 1 German Trade Mark Act where the advertisement itself does not comprise the sign nor contain any reference to the trade mark proprietor or to the products it is offering for sale and as long as the stated domain name indicates a different economic origin.”

In other words, the Bundesgerichtshof has thus confirmed that users can book a third party trade mark as a keyword, for example as a Google Adword, as long as the resulting ad (or sponsored link) is shown in a specially marked advertising block that is visually set apart from the list of natural (organic) search results. What is not allowed is any reference in that ad to the trade mark itself, the trade mark proprietor or the trade mark proprietor’s products and the URL shown in the ad must also indicate a different economic origin. Internet users looking at the ad must be able to realise that this is not the trade mark proprietor offering its goods or services but a third party. The Bundesgerichtshof has now helpfully told us how the ECJ’s guidance in Google France (no “vague” ads) should be applied by German courts.

Some German observers say that this decision equates to the Bundesgerichtshof giving its blessing to the AdWords business model. This Kat thinks that this (in her view) clear decision finally creates some legal certainty, which surely must be applauded.

Please click here to read the court's 17 pages decision (in German).

Bundesgerichtshof on the "lawfulness of a press report"

The German Federal Supreme Court (Bundesgerichtshof) this week had to decide on the lawfulness of a press report about a book presentation by former news reader, journalist and author Eva Herrman (shown to the left), in particular whether this report was an infringement of Ms Herrman’s general personality right under the German constitution (case reference VI ZR 262/09 of 21 June 2011).

Eva Herrmann used to present the main news show Tagesschau on German television and is a somewhat controversial person with decisive views on various topics. While presenting her book “The Noah’s arc principle - why we have to save the family” (Das Prinzip Arche Noah - warum wir die Familie retten müssen) to journalists in 2007, Ms Herrman elaborated that traditional family values were again needed today, such as those that supported a higher regard for the role of the mother. Unfortunately, these family values had been abolished with the German student movement of 1968. She also referred to the Nazi time and said while most things had been dreadful during and Adolf Hitler had been a “totally crazy and highly dangerous politician”, the regard for families had been one of the very few good things during that time.

For those who are interested in what exactly Ms Herrman had to say, the Bundesgerichtshof’s press release includes a transcript of Ms Herrman’s actual comments as well as the wording of the press report (see here , in German).

The press report in dispute summarised Ms. Herrman’s various musings albeit in an ironic way, inter alia, referring to the fact that she was already married for the fourth time. The report also mentioned her comments on the Third Reich and ended with the words, that "thankfully" the book launch presentation ended after her comments on this topic. Ms Herrman objected to the report. She felt that its tone wrongly alluded that she was a supporter of the Nazi ideology. She further argued that the she was incorrectly quoted, which amounted to an infringement of her general personality right as protected under Articles 1(1) and 2(1) of the German constitution.

The lower courts, the Regional and Higher Regional Courts of Cologne, agreed with Ms. Herrman. The Bundesgerichtshof however agreed with the view of the defendants who had argued that Ms Herrman’s general personality right had not been infringed. In its press release of 21 June 2011 the Bundesgerichtshof clarified that the general personality right not only provides protection against being wrongly quoted (Fehlzitat), but also protects against other incorrect or falsified or distorted representations of statements. More particularly, the court stressed that the general personality right included the right to “one’s own word” and protected the individual from having statements attributed to them which have not made and which may compromise their self-defined claim to social respect (“selbst definierter sozialer Geltungsanspruch”). Upon a review of the press report in question, the court then found that Ms Herrman’s comments and theses had been correctly reflected as regards to the “choice of words, context, the thought process and general purport (Stoßrichtung)”.

The Bundesgerichtshof's press release can be found here (in German).

Merpel thinks that the court got it right and is pleased with this victory for free speech. This Kat however has some sympathy for Ms Herrman. Noone wants to be seen as having views that even remotely resemble those of the Nazi ideology and this Kat can understand why she took the matter to the courts to set the record straight.

Smell-alike perfumes - the Bundesgerichtshof's view

On 5 May 2011, the First Civil Senate of the German Federal Supreme Court (Bundesgerichtshof) which is, inter alia, responsible for competition law matters decided that trading with smell-alike perfumes, that are imitations of perfume products that are bearing a protected trade mark does not qualify as unlawful (unlauter) comparative advertising in the sense of Article 6 (2) No. 6 German Unfair Competition Act (UWG) if there is no clear and obvious imitation of the original perfume but where the smell-alike perfume merely evokes an allusion of the original products (case reference: I ZR 157/09 - Creation Lamis).

By way of background: Article 6 UWG is based on Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising, in particular its Article 2 (c) and its Article 4.

The facts: the defendants were offering low priced perfumes on the Internet under the mark "Creation Lamis". These low priced perfumes had similar smells to those of expensive perfume brands. The defendants initially also used ‘comparison charts’ which compared the defendants' smell-alike perfumes with the respective high priced original perfume brand. The defendants had, however, ceased using the comparison charts in recent years.


The claimant, who is a distributor of high priced luxury perfumes brands, took objection to this in its view unfair business practice. The claimant argued that the defendants’ offering, advertising and distribution of the smell-alike perfumes amounted to unfair competition since the smell-alikes were recognisable as imitations of the claimant's high priced original perfume brands all of which where registered as trade marks. The claimant had been unsuccessful in the lower instance courts insofar as it had tried to prevent the defendants' trade with the smell-alikes without the use of comparison charts. In this regard the Bundesgerichtshof allowed the claimant's appeal and sent the case back to the court of appeal, the Kammergericht Berlin.



The Bundesgerichtshof explained that Article 6 (2) No. 6 UWG does not prohibit to imitate an original product. Furthermore, it will not amount to unfair comparative advertising in the sense of Article 6 (2) No. 6 UWG where the original product is recognisable due to the get-up and labelling of the respective imitation (here the smell-alike) even if its advertising evokes certain allusions. What is prohibited under Article 6 (2) No. 6 UWG is a clear and definite imitation statement (Imitationsbehauptung) which makes it clear by itself - and without the need to consider any additional circumstances - that the advertised product is advertised as a copy of a certain and specific original product.


The court of appeal had assessed the question as to whether there was a clear and obvious imitation statement by looking at the end user's perspective and decided that there was no imitiation in the sense of Article 6 (2) No. 6 UWG in this case. The Bundesgerichtshof confirmed that the court of appeal had determined the facts correctly with regard to the end-user perspective.

However, the Bundesgerichtshof found that the court of appeal's decision had not discussed the claimant's argument that the defendant had also targeted retailers with its smell-alike perfumes and not only end users. The claimants had argued that retailers, who had a more specialised knowledge, would have recognised the defendants' smell-alike perfumes as clear imitations of the original luxury perfumes due their 'get-up' (Ausstattung) and their allusive names. In this regard the Bundesgerichts stressed that where an advertisement was targeting different groups of consumers, it was enough to render such an advertisement "unfair" if the conditions of Article 6 (2) No. 6 UWG where met for only one group of the consumers targeted (here: the retailers). As such, the Bundesgerichtshof decided to overturn the court of appeal's decision and send the case back to the court of appeal. The Bundesgerichtshof also held the court of appeal should examine whether the defendants' advertising towards retailers amounted to an exploitation of the reputation of the claimant's trade marks.


While some German observers have already stated that the court has made it easier to trade with smell-alike perfumes due to the relatively high threshold for the application of Article 6 (2) No. 6 UWG, it should be kept in mind that the court of appeal might find that retailers would easily recognise the smell-alikes as imitations of one particular perfume. This Kat will be interested to read the Bundesgerichtshof's decision in its entirety once it becomes available, as well as the Kammergericht Berlin's actual decision in this particular case. Perfumes clearly make for interesting trade mark cases.


The court's press release can be retrieved by clicking here (in German)
Perfume for cats - here.

BGH on the use of a well-known car maker’s trade mark in advertisements for a garage business

The German Federal Supreme Court’s (Bundesgerichsthof, “BGH") First Civil Senate on 14 April 2011 (case reference: I ZR 33/10) had to decide on a case concerning the use of a well-known car maker’s device mark in advertisements for an independent garage business. The facts of this case are reminiscent of the facts in the ECJ’s famous BMW/Deenik decision of 1999 (case-63/97). Please find this Kat's translation and summary of the BGH’s press release of 19 April 2011 below.

The claimant, the well-known German manufacturer Volkswagen AG („VW“), is the proprietor of a device trade mark which depicts the VW logo in a circle and which covers, inter alia, “cars” and “car repair and maintenance”. The defendant, ATU Auto-Teile-Unger Handels GmbH & Co. KG (“ATU”), owns several hundred independent (as in: unrelated to a specific car brand) garages.

VW took objection to the defendant’s use of the VW device mark in ATU’s advertisements for ATU’s maintenance and repair services in relation VW motor cars. The first instance court, the Regional court of Hamburg (LG Hamburg, decision of 21 February 2008, case reference: 315 O 768/07) and on appeal the Higher Regional court of Hamburg (OLG Hamburg, decision of 16. December 2009, case reference: 5 U 47/08) both decided in VW’s favour.

 The BGH confirmed the lower courts' decisions on ATU’s further appeal. The BGH took the view that ATU’s use was infringing use of the claimant’s registered device trade mark. In its advertisements for repair works of VW cars, the defendant had used a device trade mark that was identical to the claimant’s device mark for identical services. By doing so the defendant had infringed the claimant’s trade mark since the use of the well-known logo resulted in an image transfer which weakened VW’s trade mark.

Are you now wondering 'but what about the ECJ’s guidance in BMW/Deenik?', since the ECJ appeared to have taken a perhaps more liberal view back in 1999? While BMW/Deenik is not expressly mentioned in the BGH’s press release, the VW/ATU decision is clearly an interpretation of the former and this Kat hence holds any bet that BMW/Deenik is discussed in much detail in the grounds of VW/ATU which are yet unavailable. In the meantime, however, the BGH’s press release tells us the following: while trade mark law provides that a trade mark proprietor cannot prohibit a third party from using the trade mark where it is necessary to indicate the intended purpose of a service provided the third party uses the trade mark in accordance with honest practices in industrial or commercial matters. The BGH decided that in this particular case these requirements were not met in the case of ATU’s use of the VW logo since ATU could have just as well (“ohne weiteres”) used the claimant’s word marks “VW” or “Volkswagen” to describe its services and was not dependant on the to use the device mark.

Merpel now muses whether this decision implies that the advertising function of a device mark could be more worthy of protection than the advertising function of a mere word mark? Also, what would happen if the claimant had only owned a device mark without a word element or vice versa? The answers to these (and other) questions will (hopefully) be in the grounds of the decision and this Kat is very keen to see the BGH’s interpretation of “where it is necessary to indicate the intended purpose of a product or service”, (see also Article 6 TM Directive). For the purposes of informing consumers in an advertisement, use of the word mark itself will in most cases suffice and it will not be “necessary” to use the device mark. Most notably the BGH’s press release states that “in this particular case” use of the device mark was not necessary. It does not state that use of a device mark in advertisement can never be necessary. Some German observers have already criticised that this decision appears to favour brand-associated/authorised garages over independent garages. We will be able to judge once the full decision is out...

The court’s press release of 19 April 2011 can be retrieved by clicking here.

BGH: hyperlinks, freedom of expression and copyright infringing software

Already decided on 14 October 2010, even though only published in its entirety now, has been a decision (case reference: I ZR 191/08; 'AnyDVD') by the German Federal Supreme Court (Bundesgerichtshof) concerning a lawsuit brought by several music companies against Heise Verlag, an online publisher specializing in IT and computer news. The claimaint's took objection to reports published on Heise’s website which included links to a third party website (SlySoft) that offered software that allowed circumventing copy protection for DVDs.

While the lower courts, the Regional and Higher Courts of Munich I, had held that Heise's online reports were itself copyright infringing, the First Civil Senate of the Bundesgerichtshof took the view that adding the links on Heise's website which linked to SlySoft's website (where SlySoft offered copyright right infringing software) was covered by the constitutional right of freedom of press and freedom of opinion under Article 5(1) German Constitution (Grundgesetz). Further, in cases where the actual text of a report was protected by freedom of expression and freedom of press, the included links would also be afforded equal protection. The judges stressed that the purpose of the links on Heise's website was not only to technically facilitate to access the SlySoft's website but the links were to be regarded as part of Heise's reporting because they were complementing and 'backing up' what was reported with additional information. The fact that the Heise was aware that the software offered on SlySoft's website was copyright infringing did not change this and so could not be blamed on Heise since the information interest of the general public was of higher importance.

The judges also argued that reports on illegal conduct (here: that SlySoft offering copyright infringing software) could be of particular public information interest. It was also important that Heise had clearly indicated in its report that SlySoft's software was copyright infringing. In this context the Bundesgerichtshof explained that protection of Article 5(1) Grundgesetz encompassed freedom of expression and freedom of media in all its aspects and was thus not limited to the content of the report, but it also included the (outer) form of this reporting. As such, it was up to Heise itself, as the subject entitled to the fundamental right under Article 5(1) Grundgesetz, to decide which form of presentation it chose for its reporting. This also encompassed the decision whether additional information about a company and its products (here: SlySoft) should be expressly used in the report and it could include the decision to publish links to SlySoft's website.

The court, inter alia, based its decision on Article 95 a German Copyright Act which is based on Article 6 of the Copyright Directive (Directive 2001/29/EC) (“Obligations as to technological measures”). Intriguingly, the Bundesgerichtshof interpreted Article 95 a German Copyright Act not only in the light of Article 5(1) Grundgesetz but also in light of Article 11 (1) of the Charter of Fundamental Rights of the European Union which stipulates as follows “(e)veryone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers.” Article 11 (2) provides that “(t)he freedom and pluralism of the media shall be respected.” Referring to the ECJ's precedent in Connolly/Commission (C-274/99 P), the Bundesgerichtshof also stressed that content and quality of a report are irrelevant when it comes to the application of Article 11 of the Charter of Fundamental Rights of the European Union.

This interesting decision can be retrieved from the Bundesgerichtshof's website here (in German).

ICE, ICE.... - the BGH and the citation of a design

Those of our readers that have been travelling by train in Germany may be familiar with the Intercity-Express or ICE high speed trains. The German Federal Supreme Court (Bundesgerichtshof) last week had to decide on a design right case relating to the depiction of an ICE type 3 (see left) train in a marketing brochure. On 7 April 2011 the Bundesgerichtshof held that depictions of designs are not permissible under § 40 (3) of the German Design Act (GeschMG) if they are merely used for advertising purposes (case reference I ZR 56/09). The claimant, Fraunhofer-Gesellschaft, had been seeking a declaratory judgement that German railway company Deutsche Bahn AG had no claims against it for having used photographs of ICE trains in an advertising brochure published by Fraunhofer-Gesellschaft. The relevant provision in the German Design Act § 40 (3) of the German Design Act (GeschMG) relating to the right of citation provides as follows: the rights conferred by a design right can not be exercised in respect of acts of reproduction for the purposes of making citations or for teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that the source is mentioned. By way of background: § 40 (3) GeschMG is shaped according to Article 13 (1)(c) of the Design Directive 98/71/EC and an equivalent provision can also be found in Article 20 (1) (c) of the Design Regulation (EC) 6/2002 as regards to Community Designs.

The Bundesgerichtshof took the view that § 40 (3) GeschMG required that there was a connection between the depicted design and the operations of Fraunhofer-Gesellschaft and that the photographs of the ICE trains that were used in the brochure had served as a quotation for statements made by Fraunhofer-Gesellschaft. Pure marketing however did not meet the requirements of a citation in the sense of § 40 (3) GeschMG. The information provided by the claimant in its brochure referred to the ICE train type 1 but a photograph of an ICE train type 3 was used. Consequently, the Bundesgerichtshof found that the depiction of the ICE train type 3 had only served marketing purposes and could not be seen as a permissible citation that served to illustrate the operations of the claimant.


The court’s press release relating to this case can be found here (in German). The moral of this story according to Merpel is rather more simplistic: use a photo of ICE type 1 when you are writing about ICE type 1. Use a photo of ICE type 3 when writing about ICE type 3, otherwise, do not try to invoke § 40 (3) GeschMG.

German Federal Patent Court decides in Neuschwanstein castle trade mark dispute

News in the trade mark dispute surrounding the German castle Neuschwanstein (see the IPKat's report here) .

By way of reminder: the Bavarian Castle Department (which is part of the Bavarian state government)has the task of regulating the souvenir trade connected to the famous Bavarian fairy tale castle and its surrounding area and registered the word mark "Neuschwanstein" in 2005. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE) - which describes itself as "a network of producers, wholesalers, exporters, retailers and trade representatives from the souvenir, sports clubs, trophy and festive items (industry)" - objected to this. Arguing that the Bavarian Castle Department's trade mark registration was akin to "censorship" of the Neuschwanstein souvenir trade, the BSGE filed for an invalidity of this mark at the DPMA. The DPMA (see IPKat report here) decided in the BSGE's favour and invalidated the mark, according to media reports, the DPMA found that "Neuschwanstein" was an "often used", non-distinctive term" and thus not capable to indicate trade origin of the goods and services marketed under the sign.

The German Federal Patent Court has now decided this matter and issued a press release confirming that it has upheld the DPMA's decision to cancel the "Neuschwanstein" trade mark. In its press release of 8 February 2011 concerning "Neuschwanstein" (case reference 25 W (pat) 182/09 of 4 February 2011) the court has provided the following information which this Kat has translated and summarised below.

The sign "Neuschwanstein“had been registered as a trade mark in 2005 for a multitude of goods and services. On 20 November 2007 the German Patent and Trademark Office decided on an invalidity application concerning this mark holding that the mark should be invalidated because it fell foul of § 8 (2) No. 1 German Trademarks Act (MarkenG) since it had lacked distinctiveness at the time of registration and still lacked distinctiveness now.

Upon appeal, the 25th Senate of the German Federal Patent Court upheld this decision and, inter alia, decided that the term "Neuschwanstein" described the castle Neuschwanstein which was commissioned by Kind Ludwig II in the municipality of Schwangau in the state of Bavaria with the castle being a world famous landmark of high (cultural-)historical importance.

As regards to services such as "travel services; catering/hospitality services and accommodation services", the term "Neuschwanstein" does not qualify for trade mark registration since the term could be seen as describing the characteristics of the services in the sense of § 8 (2) No. 2 MarkenG, that is their intended purpose or the geographical origin of rendering the services.

Designations of well-known tourist attractions such as "Neuschwanstein" furthermore lack the necessary distinctiveness under § 8 (2) No. 1 MarkenG concerning such goods that are usually offered in the proximity of such tourist destinations as souvenir articles or to satisfy the demands of tourist with regard to foods, drinks or further articles. This equally applies to services that are usually rendered and offered in a close proximity or in the context of such tourist attractions.

The court stressed that the term "Neuschwanstein" not only described a tourist sight but also a building that is a significant part of the national cultural heritage. The judges further held that designations of cultural sights that are of high importance and/or that are part of the national or international world cultural heritage are common property and as such cannot be monopolised or commercialised through trade mark laws. The court added that these sights usually are not distinctive enough for trade mark registration in the sense of § 8 (2) No. 1 MarkenG, even without a factual reference to claimed goods and services

Given that several aspects of this decision have fundamental importance, the Federal Patent Court allowed a further (partial) appeal to the German Federal Supreme Court (Bundesgerichtshof). On balance, this Kat believes that the court got it right but cannot help but thinking that the general idea of wanting to control the souvenir output surrounding the Neuschwanstein castle is not a bad one. How about having some kind of licensing committee when it comes to merchandise of such historical sights. Merpel, who likes her newly bought Neuschwanstein t-shirt (left), disagrees and thinks that this German Kat is nothing but a snob.... why not let the tourists decide what the want to spend their money on, rather than the Bavarian state?

Case reference : Bundespatentgericht, 25 W (pat) 182/09, delivered on 4 February 2011.

The court's press release can be found here.
The decision can already be retrieved in its entirety (German, PDF) by clicking here.

Atari vs. RapidShare: Higher Regional Court of Düsseldorf decides

Several German websites report (here, here, here) that Swiss file- and share-hosting service RapidShare has been victiorious in a copyright infringement lawsuit brought by video game maker Atari before the Higher Regional Court of Düsseldorf concerning illegal copies of the game "Alone in the Dark" which had been shared on RapidShare's site. Case reference: OLG Düsseldorf, I-20 U 59/10 of 21 December 2010). The appeal decision comes after the Regional Court of Düsseldorf had recently decided in Atari's favour. On appeal, the Higher Regional Court of Düsseldorf has now overturned this decision holding in RapidShare's favour.

What had happened? The claimant in the proceedings, Atari, had taken objection to the distribution of the game via the RapidShare site, and argued that the hosting service had a legal responsibility to block downloads. Ataria had, inter alia, demanded that the RapidShare had a duty to automatically retrieve, filter and delete all files which included certain keywords. RapidShare responded by, inter alia, arguing that this would be taking its duties too far and could lead to a deletion of perfectly legal files which just happened to include the respective keywords.

The Higher Regional court appears to have been swayed by RapidShare's arguments. While the court agreed that there was copyright infringement under Article 97 German Copyright Act, it nonetheless found that a giving RapidShare a duty to filter the content under "disturbance liability" principles ("Störerhaftung") would be “arbitrary” since a keyword was not compelling evidence that a file included infringing material. The court apparently also found that a manual check of potentially infringing files was too work intensive to be feasible.

The court allowed a further appeal since the question as to what duties a file sharing service had to fulfil in order not to be caught by "disturbance liability" had yet to be decided by the Bundesgerichtshof.

Helpfully, openjur.de has published the court's decision here. The decision certainly warrants some closer scrutiny and it will be interesting to see whether this matter will make its way to the Bundesgerichtshof.

Merpel wonders whether other Higher Regional Courts, such as the OLG Hamburg, may have decided this case differently but has, shall we say, an inkling that the Bundesgerichtshof would uphold the Higher Regional Court's decision if Atari decided to file a further appeal.

The BGH and the photographs of Prussian castles

The IPKat almost missed these three "copyright-related" cases, which were decided by 5th Civil senate of German Bundesgerichtshof, which is the senate that is, inter alia, responsible for property law.

On 17 December 2010, the 5th Civil senate of German Bundesgerichtshof decided in three cases brought by the Prussian Palaces and Gardens Foundation Berlin-Brandenburg ("Stiftung Preußische Schlösser und Gärten Berlin-Brandenburg", "SPSG") against third parties that had taken and/or distributed pictures of the SPSG's gardens and palaces without the foundation's permission. The Bundesgerichtshof held that public foundations, such as the SPSG, which curate palaces, gardens, etc., own the exploitation rights for photographs taken of these facilities from within the property boundaries as well as for photographs which have been taken of the facilities for commercial use and exploitation.

Please click here to retrieve the court's detailed press release which the IPKat has translated and summarised below.

The first case (case reference: V ZR 45/10 of 17 December 2010) dealt with a law suit the SPSG had brought against a photo agency. The SPSG had claimed that the photo agency had commercially exploited photos of the SPSG's parks and palaces without. The court of appeal, the Higher Regional Court of Brandenburg had dismissed the SPSG's claim and taken the view that taking photographs and making films of the parks and palaces did not infringe the SPSG foundation's property right since the SPSG had allowed free access to the parks and palaces. As such, the exploitation rights for the photographs and films rested with the actual copyright owners rather than the SPSG.

On appeal, the Bundesgerichtshof saw things differently and referred the case back to the court of appeal. In its decision the curt referred to two precedents of the Bundesgerichtshof's 1st Civil Senate, which is the senate responsible for copyright matters: "Schloss Tegel" (case reference: I ZR 99/73) and "Friesenhaus (case reference: I ZR 54/87). In these decisions the Bundesgerichtshof's 1st Civil Senate had legally differentiated between pictures had been taken from outside the property boundaries and those that had been taken from within the property boundaries. The latter ones can be prohibited by the property owner since it is he who can determine the use of the land. The 5th Senate applied these precedents and took that the view that despite the fact the SPSG's legal interests were different to those of a private owner of a real estate property, since the SPSG was a public foundation and so had to pursue the common good ("Gemeinwohl") as its main interest, the SPSG nonetheless had no (public) duty to allow third parties to use the parks and palaces for their commercial purposes. The Higher Regional Court now has two decide the case again applying these legal principles to the facts of the case.

A second case dealt with the SPSG's claim against a film producer who was distributing DVDs of films about the city of Potsdam (case reference: V UR 45/10 of 17 December 2010). Since the (real estate property) rights of SPSG were obvious in this case, with the films having clearly been made from within the property of the SPSG, the Bundesgerichtshof was able to decide the case in favour of the SPSG without having to refer it back to the Higher Regional Court.

As regards to the SPSG's third lawsuit (case reference: V ZR 44/10 of 17 December 2010), a claim against an Internet platform which allowed the exploitation of third party photographs by photographers and photo agencies on its virtual forum, the Bundesgerichtshof referred to its recent precedent concerning Wireless Lan networks in the "Sommer unseres Lebens" (case reference: I ZR 121/08) and held that the claimant only had a duty of care in those cases where there was an obvious infringement of third party rights. Hence, an Internet portal which publishes photos was free from liability unless it has positive knowledge of the infringement. The mere fact that someone had shared the photos on the forum was not enough to constitute knowledge since it was impossible for the forum owners to determine whether the photos had been taken with permission and/or from within our outside the property boundaries.

Merpel summarises these three cases as follows: the decisions clarify that public proprietors of real estate property enjoy the same rights as private property owners: while neither can prevent that photos are being taken from outside the property boundaries, public and private owners alike nonetheless have identical rights to control photography which takes place within the property's boundaries.

The SPSG's website (picture top left) can be found here - it does include some very beautiful photographs of the respective parks and gardens.

The BGH, the "circulation" of images and a "psychogram of a murderer"

In a decision of 7 December 2010, the German Bundesgerichtshof has decided that an image archive agency which provides images from its archives to an (external) press outlet has no duty to examine the lawfulness of a final press report which uses these images as illustration, (case references: VI ZR 30/09 and VI ZR 34/09 of 7 December 2010)

What had happened? The Bundesgerichtshof's press release of 7 December 2010 tells us as follows (summary and strictly unofficial translation by the IPKat).

The defendant in the proceedings operated a commercial image archive which press and media outlets used for sourcing images. The claimant, who had been convicted for several killings and murders, has been serving a life imprisonment sentence since 1983. German media had extensively reported about the claimant's crimes in the 1950s, 1960s and early 1980s. Upon a request by German Playboy magazine, the defendant provided the magazine with one image depicting the claimant in the 1950s and two images showing the claimant in the 1960s. Playboy magazine then used the images to illustrate a feature article about the claimant under a title which roughly translates into "The file ….psychogram of one of the murderers of the century" ("Die Akte … Psychogramm eines Jahrhundertmörders").

The claimant objected to this, stating that the defendant had circulated the images without his prior consent and as such had infringed his "right to his own image" under § 22 of the German Act on the Protection of the Copyright in Works of Art and Photographs (Kunsturhebergesetz, KUG). The claimants were of the view that their actions were protected by the human of right of freedom of the press under Article 5(1)(2) German constitution.

By way of background: The so-called ‘‘right to one’s own image’’ (Recht am eigenen Bild) under § 22 KUG is a special manifestation of the general personality right, as protected by the German constitution in its Articles 1(1) and 2(1). Under § 22 KUG, an ‘‘image’’, which includes any kind of presentation that reproduces the appearance of a person, so as to be identifiable by third parties, may only be circulated in public with the consent of the person depicted. §§ 22 and 23 KUG contain detailed provisions concerning the protection of an individual’s image.

The claimant's law suits aimed at preventing the circulation of the images. The court of first instance, the Regional Court of Frankfurt, decided in favour of the defendants (case references: LG Frankfurt am Main, 2/3 O 129/07 and 2/3 O 90/07 of 17 April 2008. On appeal, the Higher Regional Court of Frankfurt, found - partly - in favour of the claimant (case references: OLG Frankfurt am Main, 11 U 22/08 and 11 U 21/08 of 23 December 2008).

Upon further appeal, the VI Civil Senate of the Bundesgerichtshof, which is, inter alia, responsible for personality right cases, has now dismissed the claims. In its decision of 7 December 2010, the Bundesgerichtshof reiterated that the exchange/provision of lawfully archived images is protected by (the human of right of) freedom of the press as protected under Article 5(1)(2) of the German constitution. Further, in accordance with established precedents, freedom of the press not only protects the distribution of news and opinions but also protects the process of preparing the process of publication, which in particular includes the gathering of information. The court took the view that this legal background had to be taken into consideration when interpreting the terms "circulating of images" as set out in § 22 KUG. A quasi "press-internal" passing on of images by an image archive could hence not be made dependant on the owner of the image archive having to assess whether or not the press publication using of the images was lawful. It was entirely the responsibility of the actual press publisher to examine whether the use of the images was in accordance with §§ 22, 23 KUG. The depicted individual, here the claimant, did not suffer any "tangible disadvantage". The quasi "press internal" passing on of images at most affected his personality rights in a negligible way.

Merpel, who is familiar with the KUG, notes that the court of appeal, the Higher Regional Court of Frankfurt, had interpreted § 22 KUG more broadly than the Bundesgerichtshof. The Higher Regional Court had held that the defendants had a duty (akin a duty of care) by which they had to examine the lawfulness of the final publication using the images, even in cases where this was "difficult" or "unusual" . While there are good arguments to support the Frankfurt court's stricter view, this Kat feels inclined to agree with the Bundesgerichtshof's approach, which appears is little closer to reality when it interprets "circulation" as an external process, with the crucial moment being once actual publication has taken place rather than the moment when an image is sourced from an archive and passed on to another press outlet. So while this decision strengthens the scope of freedom of press it also appears to confirm that interim injunctions are the instrument of choice when it comes to potential personality right infringements.

The Bundesgerichtshof's press release of 7 December 2010 can be retrieved from the court's website by clicking here, where the lovely picture of the court top left has also been taken from.

German Federal Patent Court decides in "POST II"

A slightly delayed delivery (to our readers) of some good news for Deutsche Post, Germany's equivalent of the Royal Mail. Several German websites recently reported that the German Federal Federal Patent Court (Bundespatentgericht) decided in favour of the Deutsche Post's appeal against the cancellation of its trade mark for "POST".

The background: back in 2003 Deutsche Post had applied for a trade mark registration for the mark "POST" covering different services in connection with postal services. Several of Deutsche Post's competitors later filed for a cancellation of the mark, inter alia, citing descriptiveness objections under § 8 (2) No. 2 MarkenG (German Trade Mark Act). The German Trade Mark and Patent Office (DPMA) subsequently cancelled the mark. After the Federal Patent Court had initially confirmed the cancellation, Deutsche Post appealed this matter all the way to the German Federal Supreme Court (Bundesgerichtshof). The Bundesgerichtshof, however, decided in favour of Deutsche Post's appeal and sent the case back to the Federal Patent Court for a final decision which in turn has now decided the case in Deutsche Post's favour.

Trying to find the actual decision, this Kat has found a press release issued by the Federal Patent Court concerning this case which consists of the headnotes of "POST II" as the case has been aptly named. Please find this Kat's strictly unofficial translation of the headnotes below.

1. To prove 'use as a trade mark' for a service mark, it can suffice to apply a work mark in and on a business premise.

2. The application of the word "POST" at the entrance of a business premise and on sale counters inside a business premise does not only constitute use as a business name (firmenmäßige Benutzung) but also constitutes use as a trade mark in relation to the delivery and transport services offered [at that business premise].

3. Having regard to the Bundesgerichtshof's precedent (GRUR 2009, 669 pp., No. 28 - POST II) a degree of more than 75% attribution in a market survey to the business of the trade mark owner concerning transport and delivery services is to be regarded as sufficient for proving acquired distinctiveness of the sign POST in the sense of Article 8 (3) German Trade Mark Act, which was per se capable of being descriptive.

4. If the deciding senate is convinced that there are no legal or factual doubts concerning the correct method and content of a market survey that has been commissioned, then that survey is suitable to prove acquired distinctiveness of a trade mark in trade. In such a case there is no need - also not according to the principle of official investigation - to commission a further market survey during cancellation proceedings. Rather, the cancellation applicant has to adduce counter-evidence concerning the falsity of the market survey and, where appropriate, has to commission and submit a further market survey.

Case reference 26 W (pat) 24/06 "Post II", order of 28 October 2010. Case references of parallel proceedings 26 W (pat) 25/06, 26 W (pat) 26/06, 26 W (pat) 27/06, 26 W (pat) 29/06 and 26 W (pat) 115/06.

BGH decides in "Hartplatzhelden.de" case

The first civil senate of the German Bundesgerichtshof, which is, inter alia, responsible for competition law matters, decided yesterday in the "Hartplatzhelden.de" case (28 October 2010, case reference I ZR 60/09) that a football association has to accept it when video film clips of amateur football games held by its member clubs are made publicly accessible via the Internet. While the full decision has not been published, the court has issued a press release which is summarised below and which can be accessed by clicking here (in German). In case you wondered: Hartplatzhelden is German for hart court heroes...

On the its website "www.hartplatzhelden.de" the defendant operates an Internet portal that is financed by advertising. Users of the website can upload their on clips of amateur football games showing excerpts from such games that are up to 1 and 1.30 minutes long. Other Internet users can access and watch these videos free of charge. The claimant, the Württembergischer Fußballverband e.V. (the football association of Württemberg), which organises the football games, is of the view that it should have the exclusive commercial exploitation rights in relation to the games. As such, it asked the defendant to cease publication of the video clips and based its claim on 'misappropriation' ("unzulässige Leistungsübernahme"), anti-competitive obstruction and an unlawful interference with its right to an established and operative business ("Recht am eingerichteten und ausgeübten Gewerbebetrieb"). The Regional Court of Stuttgart (Landgericht Stuttgart) decided in favour of the claimant. On appeal, the Higher Regional Court (Oberlandesgericht Stuttgart) agreed but allowed a further appeal to the Bundesgerichtshof, Germany's highest court in civil matters.

The Bundesgerichtshof in turn denied an exclusive exploitation right of the football association of Württemberg and dismissed the claimant's case. The Bundesgerichtshof disagreed with the Higher Regional Court in some points and held that the publication of the video clips could not be considered as an unfair imitation of someone else's protected work (geschütztes Leistungsergebnis) in the sense of § 4 No. 9 letter b UWG (German Act of Unfair Competition). The court stressed that the claimant's work in the form of organising and executing football games also did not require this type of protection. The judges took the view that claimant could adequately ascertain its commercial exploitation of the football games held by its member clubs through prohibiting under its house rules (Hausrecht) that visitors make video recording of such games. Finally, the court also did not accept the claimant's further arguments concerning a exclusive exploitation right of sport associations.

The claimant, the Württembergischer Fußballverband e.V., has issued a press release on its website stating that it will wait for the full decision and the court's detailed reasoning before deciding how to proceed in the future as a "football family". Well, the association clearly appears to be a good sport about it... for now. Hartplatzhelden.de has also commented about the decision stating that they are "happy and relieved" and that it has been a tough game for them. This Kat can't help but whether the Württembergischer Fußballverband e.V. should perhaps just regard the short 1 minute fan videos as free advertisement for its games? Or is this a little naive of me? Thanks go to follow blogger Mark Schweizer... why do I think you may have a comment or two to make here....?

Decision in the German AdWords referral Eis.de

More AdWords ...! A quick lunch time post to let our readers know that the European Court of Justice's (CJ) decision in the German AdWord referral in "Eis.de GmbH v BBY Vertriebsgesellschaft mbH", in short: "Eis.de" (case C-91/09) has now been published. The case was originally called "Bananabay" in Germany (case reference: I ZR 125/07). For more background on this case, please see the IPKat's earlier posts here and here.

In a mere court order of 26 March 2010, the ECJ has now also answered the German Federal Supreme Court's (Bundesgerichtshof) question on AdWord use. The outcome is a bit of an anti-climax and if you think you have read it all before, well, you are not mistaken. The CJ's response in Eis.de is almost identical to that given in the Austrian BergSpechte referral of 26 March 2010 (Case C-278/08, see the IPKat's post here) and very similar to the CJ's responses in Google France (joined Cases C-266 to 238/08, see the IPKat's post here and here) of 23 March 2010. The CJ cites joined Cases C-266 to 238/08 in almost every paragraph of Eis.de. Most notably the court refers to paragraphs 65-73, 79, 81, 83 -84, 89 - 90, 98 of cases C-266 to 238/08.

Please note that this blog post is based on the IPKat's translation of the German version of the order since we do not yet have an official English translation. The Eis.de case was based on the following facts: the claimant and the defendant both sold adult entertainment products. The claimant who owned a trade mark registration for "bananabay" sought to stop its competitor's use of that trade mark as an 'AdWord' claiming trade mark infringement and seeking damages.

The Bundesgerichtshof had referred the following question to the CJ:

"Is there use for the purposes of Article 5(1)(a) of Directive 89/104/EEC where a third party provides as a keyword to a search engine operator a sign which is identical with a trade mark, without the consent of the proprietor of that trade mark, so that, on inputting the sign identical with the trade mark as a search term into the search engine, an electronic promotional link to the third party's website advertising identical goods or services appears in an advertising block set apart from the list of search results, that link is marked as a sponsored link and the advertisement itself does not comprise the sign nor contain any reference to the trade mark proprietor or to the products it is offering for sale?"

Here is the IPKat's translation of the German version of the CJ's response:

"Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or by an undertaking which is economically connected to it or, on the contrary, originate from a third party."

Well, says the IPkat, no surprises here then?

Wearing her German hat and munching away on her lunch time salad Merpel muses: nein, I am really not surprised either. The CJ's reasoning in large parts appears to be an extension of the Bundesgerichshof's advertising and technology friendly precedents in the pcb and Beta-Layout cases. However, while it is quite certain that the Bundesgerichtshof will decide that the origin function is not adversely affected, don't we think that the Bundesgerichshof might have to fine tune its line of argumentation just a tiny bit in relation to company names and AdWord use, with the CJ holding that it is not enough that the triggered ad is clearly labelled as a "sponsored link", the ad also must not be vague? What do our (German) readers think? And one more thing, why did the CJ only hand down an order and not a full judgment for the German referral?

Please click here to read the CJ's order in its German/French entirety.

BGH decides in Opel toy car case ("Opel-Blitz II")

Yes, it is that Opel/Autec case again!

On 14 January 2010 the German Federal Supreme Court (Bundesgerichtshof) has handed down its eagerly awaited decision in the Opel replica car decision (case reference I ZR 88/08 – Opel-Blitz II of 14 January 2010). While the full decision is not yet available, the Bundesgerichtshof has published a press release concerning this case (press release No. 9/10 of 15 January 2010 ) which the IPKat has summarised and translated below.

The first civil senate (I. Zivilsenat) has decided that a car manufacturer cannot rely on its trade marks rights in order to prevent the distribution of toy model cars that are scale models of the original cars bearing the original car manufacturer's trade mark on the relevant space. The claimant, Adam Opel GmbH, was the proprietor of a device trade mark for the so-called "Opel-Blitz" covering motor vehicles and toys. Opel tried to prevent the distribution of toy cars manufactured by the defendant which were copies of Opel's Astra V8 Coupé car in a reduced scale including the Opel-Blitz device mark affixed to their grille.

The court of first instance, the Regional Court (Landgericht) Nürnberg-Fürth had referred this matter to the ECJ for a preliminary ruling. The ECJ (C-48/05) ruled that "the affixing by a third party of a sign identical to a trade mark registered for toys to scale models of vehicles cannot be prohibited under Article 5(1)(a) of the directive unless it affects or is liable to affect the functions of that trade mark." In its decision the ECJ further took the view that it was "... for the referring court to determine, by reference to the average consumer of toys in Germany, whether the use at issue in the main proceedings affects the functions of the Opel logo as a trade mark registered for toys." The relevant question hence was whether the relevant consumers would interpret the logo device affixed on the model toy as a reference of trade origin and believe that the model car was manufactured by the claimant or a economically linked undertaking.

In light of the ECJ decision, the Regional Court (Landgericht) Nürnberg-Fürth dismissed the claimant's case. The Nürnberg-Fürth court (case reference 4HK O 4480/04 of 11 May 2007) decided that the relevant consumer would regard the logo affixed on a scale model car's grille merely as "part of the model car" and would not attribute the logo to the manufacturer of the original car in the sense of a reference of trade origin or believe that there was an economic link or a licence agreement in place between the toy car manufacturer and the manufacturer of the original car. The court of appeal (OLG Nürnberg, case reference 3 U 1240/07 of 29 April 2008) as well as the Bundesgerichtshof confirmed this view.

In its 14 January 2010 decision the Bundesgerichtshof denied an infringement of the claimant's Opel-Blitz mark. The requirements of trade mark infringement were met insofar as the affixing of the Opel-Blitz device on the defendant's toy car constituted use of a sign that was identical to the claimant's mark on identical goods (toys). However, this use did not affect the main function of the mark, which is indicating the trade origin of the goods (here: toy car), nor did this use affect any other functions of the trade mark because the relevant consumer would merely regard the Opel-Blitz device affixed on the defendant's model car as an exact copy of the mark that the original car had affixed on exactly the same space. Consequently, the Opel-Bliz mark would only be seen as a reproduction of a detail of the original car. The court stressed that the relevant consumers would not regard it as a reference to the trade origin of the toy car.

Insofar as the claimant's mark was registered for motor vehicles, the goods concerned (model cars and motor vehicles) were not similar so that there was no trade mark infringement based on a likelihood of confusion.

Finally, there was also no infringement of a mark with a reputation because there was no unfair advantage taken of or detriment caused to the repute of the claimant's mark insofar as it was registered for motor vehicles.

IPKat comment: The outcome was not really much of a surprise given the German consumers' perspective when it comes to model cars and may I say -- based on my personal experience as a German consumer -- it was the right decision. However, this is an interesting case that perhaps may have been decided differently in a different country taking into account "local" customs and views relating to (toy) cars.

The Bundesgerichtshof's press release can be retrieved here (in German). The full decision will (eventually) be available via this link (in German).

That (es)citalopram patent yet again

The IPKat seems to somehow have missed the latest installment in the series "is Lundbeck's escitalopram patent valid?" (it should be properly called by now "are the SPCs based on that patent valid?", as the patent term has expired). As previously reported, the product claims of this patent had been declared invalid by Mr Justice Kitchin at the High Court in a judgment of 4 May 2007. The method claims were deemed valid. The Dutch first instance court had invalidated all the claims of the Dutch part of the patent in a judgment of 8 May 2009 for lack of inventive step.

The German Bundesgerichtshof, in a judgment of 10 September 2009, came to a different conclusion regarding the validity of the SPC based on the German part of Lundbeck's escitalopram patent. The grounds for the decision have only been published just recently.

In the first instance, the German Federal Patent Court had invalidated the escitalopram patent on the grounds that the substance citalopram was already known at the priority date and the skilled person would have recognized that is was composed of two enantiomers (S-citalopram and R-citalopram). The Federal Patent Court stated that it was “easily” possible for the person skilled in the art to separate the substance, thus achieving the pharmaceutically more effective S-enantiomer (escitalopram). Even if the common method of forming diastereomeric salts with a chiral acid was inadequate for resolution, the skilled person would employ the chiral chromatography method known to him and established pre-priority (referring to I.W. Wainer, Trends in Analytical Chemistry 6 (1987) 125-134 for commercially available chiral stationary phases which the skilled person would use at the priority date). The ability to obtain S-citalopram was further evidenced by later published documents reporting chiral separation of citalopram. In contrast to the UK, the German Federal Patent Court held that analytical amounts were sufficient. The testing of commercially available chiral stationary phases, including selecting the appropriate parameters, was not considered unreasonable in terms of the tests and analyses the skilled person would conduct, whereas the UK court considered this to extend the common general knowledge too far.

The Bundesgerichtshof reversed. Firstly, it held that prior art that discloses the racemate of a chiral molecule without explicitly disclosing the enantiomers was not novelty destroying for the S-enantiomer. The person skilled in the art may well recognize that citalopram contains carbon and is chiral. However, that is not enough to destroy the novelty of the isolated S-enantiomer if it is not explicitly disclosed in the prior art (citing T 296/87).

The person skilled in the art had reason to try isolating the S-enantiomer at the priority date, but success was not certain and the effectiveness of the isolated S-enantiomer could only be tested empirically. There was no obvious way to isolate the enantiomers of citalopram. The usual method, by forming diastereomeric salts with a chiral acid (namely DPTTA), was not working. The separation using high performance liquid chromatography was successfully used on citalopram racemate at the priority date. However, it was unclear which techniques would yield commercially useful results. In 1988, there was namely no reason to expect that Chiralcel OD, which had just become available, would provide the decisive breakthrough (Mr Justice Kitchin had come to the same conclusion).

The Bundesgerichtshof further held that the second method of manufacturing S-citalopram, stereoselective synthesis using 4-(4-dimethylamino)-1-(4 min -fluorophenyl)-1-(hydroxybutyl)-3-(hydroxymethyl)benzonitrile, was also not obvious. The "Baldwin rules" might have indicated that a ringclosure reaction was not excluded, but that does not mean that there was reasonable expectation of success. The "Baldwin rules" did not indicate which reaction was likely, only which ones were impossible.

The BGH finally held that S-citalopram was a different product than citalopram in the sense of art. 3(d) Regulation 1768/92 concerning the creation of a supplementary protection certificate for medicinal products. The racemate of citalopram is not S-citalopram with a purity of 50%. The R-citalopram of the racemate is also pharmaceutically effective, the mixture of the enantiomers therefore a different active substance from its components.

S-citalopram will therefore remain protected in Germany until the expiration of the SPC on 1 June 2014. The escitalopram preparation Cipralex® is, commercially speaking, Lundbeck’s most important product by far. Cipralex®, which is distributed in the USA under the trademark Lexapro®, is the most often prescribed non-generic antidepressant in Europe and the USA. It generates an annual turnover of more than 1 billion Euros and is being distributed in 93 countries.

Lundbeck was represented by Hoffmann Eitle. Should any reader have an English translation of the decision, the IPKat will post it.

ADDED MATTER: Hoffmann Eitle has again come up trumps, with an excellent English translation. Once again, the IPKat offers his deep gratitude.

BGH: misleading use of the symbol ® - the "Thermoroll" case

In a notable decision of 26 February 2009 (case reference I ZR 219/0 “Thermoroll”) - which was only recently published in its entirety - the German Federal Supreme Court (BGH) decided that it is “significantly misleading” and consequently an unfair commercial practice under section 5 German Unfair Competition Act, if someone uses a trade mark in conjunction with the ® symbol without being the owner or licensee of the mark or without being otherwise authorised. Things may be judged differently only if the unauthorised user is the proprietor mark of a trade mark that is similar to the trade mark that was used together with ® symbol and use of the mark amounts to “genuine use” of the registered mark under Article 26 (3) German Trade Mark Act.

The facts of the case are a rather complicated and may be simplified as follow: both parties, the claimant and the defendant, were companies active in the field of curtains and blinds and involved in a dispute over the use of the mark Thermoroll. To make things even more complicated, the mark Thermoroll was a registered trade mark which, inter alia, covered blinds, curtains, but which was owned by third party that was not involved in the court case. The claimant, however, was the owner of a trade mark registration for the similar mark Termorol [IPKat: minus the “h” and with one “l” only] but had [for valid reasons which we will not mention since they would confuse matters further] used advertising material that included the sign Thermoroll together with the symbol ® before February 2006 even though it (the claimant) was only licensed to use Thermoroll from February 2006 onwards. The defendant filed counterclaims for information and damages against the claimant arguing that that the use of the mark Thermoroll in combination with the ® symbol constituted misleading advertising under section 5 of the German Unfair Competition Act.

The Higher Regional Court of Karlsruhe, the court of appeal, had decided in favour of the claimant and had taken the view that the slight differences in the spelling of the marks (Thermoroll v Termorol) were not significant enough to mislead consumers and so fell out of the ambit of the Unfair Competition Act.

On further appeal, the BGH disagreed with the Karlsruhe court and decided that the claimant’s unauthorised use of the mark “Thermoroll®” before 16 February 2006 constituted misleading advertising. The fact that the claimant had been authorised to use the similar mark “Termorol”, which was registered for identical goods, did not change that its use of the “Thermoroll” mark was misleading.

The court held that the use of a trade mark used together with the ® symbol suggested two things to the relevant consumers: firstly, the existence of a registered trade mark spelled exactly as used in the advertising and secondly, that the advertiser was authorised to use this mark in its advertisement, either as trade mark owner or licensee.

The court took the view that use of a third party trade mark which not merely “insignificantly” differed from the advertiser’s own trade mark was caught as an unfair practice under unfair competition law. The differences between both marks could only be considered as insignificant if the mark used merely differed in elements which did “not alter the distinctive character of the mark in the form in which it was registered” as stipulated by Article 26 (3) German Trade Mark Act. Article 26 (3) German Trade Mark Act relates to “genuine use” of a trade mark.

Applying these principles, the court decided that use of “Thermoroll” did not constitute genuine use of “Termorol” mark under Article 26 (3) German Trade Mark Act due to the aural and conceptual differences between both marks and due to the fact that the relevant consumer would associate prefix “Therm-” with heat. Consequently, the differences between he marks altered the distinctive character of the registered mark and had therefore crossed the threshold of an “insignificant alteration”.

Given the claimant itself had considered the “Thermoroll®” mark as very important and had expected that its use would have a positive effect on consumers, it had obtained a competitive advantage by implying to be authorised to use the third party trade mark. The court found that the relevant consumers had been mislead and had taken a purchasing decision that they would otherwise not have taken. The court emphasised that it was a main purpose of prohibiting misleading practices to prevent competitors from using false information in the course of trade.


IPKat comment: the BGH provides us with some food for thought. The “take home” point appears to be that advertisers should make sure to use the mark as registered when using it in combination the ® symbol. Otherwise, in cases where the use of the similar mark crosses the threshold of an “insignificant” alteration, there is a genuine risk of falling within the ambit of Unfair Competition Law. In other words: using the ® symbol in combination with a registered trade mark in the course of one’s business (i.e. in advertising) without being authorised to use the mark will be seen as significantly misleading and consequently constitute an unfair commercial practice under the German Unfair Competition Act.

This Kat would be very interested in our readers’ views.

• The decision can be accessed by clicking here.
• Cat shower curtains (as the one depcited on the left above), can be purchased via http://www.showerail.com/ where the picture has been taken from.
  

Ferrero v FIFA (in the World Cup trade mark dispute) -- 1:0 says the German BGH

The German Federal Supreme Court (Bundesgerichtshof, "BGH") has today published its decision in a trade mark dispute between FIFA, the world football body, and Italian sweets company Ferrero concerning football World Cup trade marks, which Ferrero GmbH, Ferrero's German subsidiary, had registered. The court's decision is not yet available in its entirety but the court's press release (no. 232/2009 of today's date), on which this report is based, clearly indicates the score of this trade mark match: 1:0 for Ferrero.

So what was this dispute about? FIFA, based in Switzerland, organises the football World Cup and not surprisingly also owns numerous trade marks that relate to the football World Cup 2006, which was held in Germany, as well as trade marks relating to the upcoming World Cup to be held in South Africa next year.

FIFA tried to cancel Ferrero's numerous World Cup trade mark registrations arguing that the Italian sweets maker had no rights to register marks such as "WM," short for Weltmeisterschaft "World Cup" or "2010" in reference to next year's football World Cup in South Africa. FIFA has an obvious interest in controlling its World Cup franchise and claimed that Ferrero's trade mark registrations were an infringement of Germany's unfair competition law.

During past world cup tournaments, Ferrero had distributed free collectible stickers showing each player in the German national team with its Hanuta and Duplo chocolate wafers - and this Kat admits that in days gone by, she used to collected them herself.

The courts of the lower instances, the LG and OLG Hamburg, had both decided in Ferrero's favour. The German Federal Supreme Court agreed and ruled that FIFA could neither base its cancellation claim on trade mark law nor on unfair competition law. The court's press release states that there was no likelihood of confusion between both parties trade marks. (IPKat comment: yes, I am wondering about this bit too: what were the marks? What exactly did FIFA's marks cover? We don't know and the press release unfortunately doesn't tell us.)

Furthermore, the court further decided that FIFA could also not base its claim on the "work title rights" ("Werktitel"- a German quirk) it owned for "WM 2010", "GERMANY 2006" and "SOUTH AFRICA 2010". The judges ruled that FIFA was also barred under unfair competition law, including the so called "general clause" as stipulated by section 3 of the German Law of Unfair Competition (UWG).

Ferrero's trade marks did not influence the consumers to assume that the defendant (Ferrero GmbH) was an official FIFA sponsor. The court held that Ferrero did not unfairly block FIFA's efforts to market the World Cup events via licensing through sponsors. FIFA's basic constitutional right to commercially exploit the tournaments it organises did not extend so far that it could prevent all types of third party exploitation of this sports event.

This should be a very interesting decision to read (once the reasoning is available): with potentially far reaching consequences for organisers of sport (and other events) that seek to financially exploit its events.


Case reference: Bundesgerichtshof, I. Zivilsenat , I ZR 183/07 "WM-Marken" - to read the court's press release, please click here (in German!).