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.

Localised acquired distinctiveness; coming up in the ECJ

Being from East Yorkshire doesn't help you in Newport, but might in Luxembourg

The IPKat has stumbled across what must have been one of the now Mr Justice Arnold’s last decisions as a Lord Chancellor’s Appointed Person [Merpel wonders if we’re still allowed to call them that, since we still have a Lord Chancellor]. In it, he was called upon to hear an appeal refusing to register THE JOURNAL for, well, journals. It appears that the applicant had only used the mark in for publications in the East Yorkshire area and could do no better than showing acquired distinctiveness in that area at the very most. The hearing officer found that, following Europolis, acquired distinctiveness of one region was not sufficient.

Not to be defeated, the application changed its specification to “Lifestyle regional magazines containing information about and relevant to the area of East Yorkshire”. This led to the cunning argument that acquired distinctiveness had to be judged from the point of view of the relevant consumer. The relevant consumer for the goods covered by the specification was from East Yorkshire and a substantial number of such people would know of the publication.

The LCAP (as he then was) really rather fancied making a reference. He said:

In my judgment, the law is not entirely clear from EUROPOLIS. The Court of Justice was not addressing the question which arises in this case, which is whether it is permissible to claim acquired distinctiveness amongst a geographically-restricted class of consumers if the market for the product or service in question is limited to that locality or region. It is conceivable that the Court of Justice might give a different answer to this question, or least a more nuanced answer, than it gave to the questions in EUROPOLIS. In particular, I think that it is possible that different
considerations may apply in the case of a service which is normally provided to
a local clientele, such as hair dressing, than to goods. Accordingly, had it not been for the applicant’s opposition to a reference, I would have referred a question to the Court of Justice.

However the applicant, wisely avoiding the expense and delay of a reference made it known that he didn’t want a reference. Thus, the LCAP had to reach a decision himself. He found that acquired distinctiveness could not be shown if that distinctiveness was limited to a particular geographical location for a number of reasons. A mark in unitary across the UK, a mark should only become registrable where it has fully overcome the public policy objections of Arts 3(1)(b) to (d), goods may circulate outside the region in which they have become distinctive and there would be no protection for honest concurrent users who used the mark for similar goods but outside the specification (e.g. in a different geographical area).

The IPKat reckons that this is undoubtedly the right decision. Distinctiveness which is geographically limited can anyway be protected by the law of passing off, which doesn’t quite have the same sledgehammer effect on traders in identical goods as registered trade mark law. The applicant’s revised specification, though clever, looks to the IPKat like an attempt to get around limits on acquired distinctiveness which are there for very good reasons.



Coming up in the ECJ

November is a good month for dilution cases. On 27 November, the ECJ’s long-awaited decision in Intel v CPM is due out. The IPKat is hoping that this will bring some long-awaited clarity to dilution, but he has this nasty fear that the ECJ will somehow find a way of wriggling out of answering the question. Also, today (5 November), the ECJ heard L’Oreal v Bellure. This is a comparative advertising case, referred by the UK, in which the Court of Appeal is effectively asking whether some form of harm to the trade mark owner in needed in order to prove unfair advantage under Art.5(2).

News from the UK IPO

Research exception consultation

The UK IPO has launched an informal consultation on the research exception to patent infringement, following criticism of the clarity of the exception in the Gowers Review. The purpose of the consultation is to measure the extent of stakeholder concerns (the topic didn't provoke much comment during the process of compiling the Gowers Review) so that, where there are concerns, steps can be taken to resolve them appropriately.

Stakeholders are being asked the following questions:

• Is the research exception in need of clarification? Do you have any evidence to support your view?
• If you consider that the research exception does need clarification, how would you like to see this done?
• Do you have any evidence of research being hindered by patents on research tools, or of the current law
working effectively?
• If you consider that research has been hindered by patents on research tools, how do you think this could best
be overcome, or has research been able to continue?

Responses are due in by 7 November.


...and more from the IPO

Highlights from the decision of Richard Arnold QC, acting as Appointed Person, in Vibe's Application. The application was for a crackled effect in respect of a paint effect as applied to the surface of loudspeaker enclosures. Lots of juicy stuff in here about distinctiveness when two potential trade mark are beign used at the same time, and also how patient a trade mark examiner is expected to be (relatively, but only up to a point), but the standout issue is on the meaning of acquired distinctiveness. The Appointed Person was itching to refer to the ECJ the question of whether an applicant to a trade mark which he alleges has acquired distinctiveness must have promoted the sign as a trade mark (i.e. an indication of orign). He didn't though, because the applicant didn't want a reference, but he did accuse the ECJ of not answering the questions referred in Dyson.

Quoting from Kerly, he identified 3 propositions:

(1) mere association with a particular manufacturer is not enough;
(2) the use of the sign must establish, in the perception of the average consumer, that the product originates from a particular undertaking;
(3) that perception must result from the use of the sign as a trade mark – in other words, the proprietor must have done something in his use to identify the sign as a trade mark, and mere extensive use during a period of monopoly, without more, is most unlikely to have achieved this.

In his view, (1) and (2) were correct according to the law of the UK, but (3) was not necessarily true.

The IPKat reckons that, in principle, it's right that only (1) and (2) should be legal requirements, but as a factual matter, it's hard to see how save in the most exceptional cases, a sign which lacks distinctiveness will be magically transformed into a distinctive sign without (3).