Trademark Insight - January 2023

Dear readers,

In the January issue of TRADEMARK INSIGHT we present summaries of decisions of German Higher Regional Courts, the German Federal Patent Court (BPatG), the EUIPO Boards of Appeal, the EUGC and the CJEU. Decisions dealing with procedural autonomy of the counterclaim under EU trademark law with a bad faith trademark application by a distributor; and  with exhaustion of trade mark rights in reboxing and re-labelling, are likely to be of particular interest.

We welcome your feedback and suggestions by email to [email protected].

We wish you useful reading

Thorsten Klinger and Dr Andreas Renck

Procedural independence of the counterclaim under EU trademark law (CJEU)

The preliminary ruling is based on a dispute about the entitlement to use the EU word mark "Apfelzügle" (apple train). This trademark is registered at the EUIPO by Obsthof Neuhaus (Obsthof = fruit farm) for services in classes 35, 41 and 43. The trademark owner objected to the use of the designation "Apfelzüglefahrt" by the Obsthof Uwe Specht and the municipality of Bodman-Ludwigshafen and brought an action for an injunction before the Munich I Regional Court.

The defendants then counterclaimed for a declaration of invalidity of the trademark “Apfelzügle” due to lack of distinctiveness. While the trademark proprietor withdrew its action at the hearing, the defendants maintained their counterclaims. The Munich Regional Court held that these actions were admissible and well-founded with regard to the services in class 41, leading it to declare the trademark partially invalid.

The municipality of Bodman-Ludwigshafen appealed against this decision before the OLG Munich, where it sought a complete declaration of invalidity of the trade mark. Against the background of the withdrawal of the action, the Munich Higher Regional Court expressed doubts about the admissibility of the counterclaim, as it was unclear whether the Regional Court, as a competent EU trademark court, was allowed to decide on the counterclaim even after the infringement action had been withdrawn. The Court held that a declaration of invalidity of an EU trademark must, in principle, be decided upon by the EUIPO, Art. 63(1) EUTMR. And that, except in the cases expressly provided for, national courts are not empowered to declare invalidity.

It is true that in German legal doctrine it is predominantly argued that German procedural law applies in the absence of a provision in the EUTMR. According to this, the jurisdiction established by a counterclaim was independent of the continued existence of the infringement action. However, after withdrawal of the infringement action, there was no longer any need for a defense. The counterclaim brought under national procedural law was therefore dependent on the pendency of the EU infringement action. The plaintiff was free to take action before the EUIPO. The Munich Higher Regional Court referred the following question to the CJEU:

May the EU trademark court still decide on the invalidity of an EU trade mark asserted by way of a counterclaim even if the infringement action based on that EU trade mark has previously been effectively withdrawn?

The CJEU answered in the affirmative and established the procedural autonomy of the counterclaim. The concept of a counterclaim, as an autonomous concept of EU law, was to be interpreted uniformly throughout the Union. The counterclaim presupposes the prior filing of an infringement action, but aims at an expansion of the subject matter of the dispute in order to pursue a claim independent of the action. The counterclaim is expressly not a mere means of defense. It is independent of the action in terms of its procedural treatment, and (as the CJEU had previously ruled in Case C-185/15) could be pursued even if the plaintiff's action had been dismissed.

The CJEU now held that the same applies when the action on the occasion of which it was filed is withdrawn. Its fate is decoupled from that of the infringement action. Such an understanding also results from the general systematics of the regulation as well as from considerations of procedural economy. The competence of the EUIPO to grant or refuse a trade mark registration did not also extend to the decision on its validity. The latter was a joint competence of the EU trademark courts and the EUIPO. The jurisdiction of the EU trademark courts follows directly from the EUTMR and does not constitute an exception to the EUIPO's jurisdiction.

(CJEU, judgment of 13.10.2022, C-256/21)

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Genuine use of the trademark "Torjägerkanone" (OLG Nürnberg)

Olympia-Verlag GmbH is the owner of the German word marks "Torjägerkanone" (goal scorers canon, a reward issued by the German soccer journal "kicker" to the top scorer of every season) and "Kicker Torjägerkanone", each protected for figurines, statues, sculptures and trophies made of metal as well as printed products in classes 16 and 17. On the basis of these marks , it took action against RE Handels GmbH by way of a preliminary injunction on account of the marketing of the "Fußballpokal Torjägerkanone klein" (soccer cup goalscorer's canon small) shown below. The LG Nürnberg-Fürth (Regional Court of Nuremberg-Fürth) issued a judgment prohibiting the defendant from designating its goods in the course of trade with "Torjägerkanone". The plaintiff in the injunction was entitled to injunctive relief under both trademark law and competition law.

The defendant in the injunction successfully appealed against this decision to the OLG Nürnberg (Nuremberg Higher Regional Court). Although the disputed product is undoubtedly based on the plaintiff's idea of awarding top scorers with a trophy in the shape of a cannon, this does not justify a claim for injunctive relief under trademark law or unfair competition law on the grounds of freedom to imitate.

Under trademark law, offering the trophy depicted under the designation "Fußballpokal Torjägerkanone klein" does not constitute trademark use for the target public. Such use may be found where  the sign is used as a trademark, thereby impairing the function of origin, which is not the case here. The clearly descriptive nature of the use argues against any proximity to trademark use. Two descriptive indications "soccer cup" and "small" framing the designation, and the image of a model cannon with the product description also underlined that descriptive impression.

It had to be taken into account that military-related metaphors are common in football, which is why "Torschützenkanone" is not an unlikely choice. A double identity is also ruled out, since the challenged sign is used for soccer trophies made of synthetic resin/polyresin, while the trademark in suit is protected for figures etc. made of metal. 

As to the claimed reputation of the plaintiff’s mark, it is undisputed that the term "Torjägerkanone" is known to the public. However, it is merely known as a distinction, not as an indication of origin, and the plaintiff’s or any other entity’s connection to this award  is unknown to the public.

Finally, the objection of a lack of genuine use applies as an advertisement of this nature is not sufficient. The plaintiff in the injunction did not meet these requirements. Ultimately, the claim for injunctive relief cannot be based on unfair competition law either, since the plaintiff lacks the right to bring an action due to the lack of a concrete competitive relationship. In addition, it had not been sufficiently demonstrated that the conduct of the defendant in the injunction was to be regarded as unfair.

(OLG Nürnberg, judgment of 25.10.2022, 3 U 2576/22)

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Distinctive character of a pattern mark (EUGC)

The company Louis Vuitton Malletier is the owner of the EU extension of the international trademark registration shown below, protected in class 18 which includes suitcases, bags, backpacks and purses. A Polish private individual filed an invalidity application against this mark on the grounds of lack of distinctiveness. The Cancellation Division of the EUIPO granted the application and declared the contested mark invalid. The trademark owner unsuccessfully appealed against this decision. The Board of Appeal argued that the sign had no inherent distinctiveness and that distinctiveness acquired through use had not been proven.

The trademark owner brought an action against this before the EUGC, which overturned the decision of the Board of Appeal. It was correctly recognized that the mark lacked inherent distinctiveness. However, not all the evidence submitted by the trademark proprietor had been sufficiently taken into account. The Board of Appeal, which reopened the case, continued to conclude that these documents did not suggest that the mark had become distinctive through use.

The trademark owner then brought another action against this before the EUGC. The court rejected the action by confirming the previous office decisions. According to the applicant, distinctive character acquired through use presupposes that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking on the basis of that mark. If the mark applied for is devoid of any inherent distinctive character in all the Member States, it must also be proved that it has acquired distinctive character throughout the territory of the European Union. Although such proof of distinctive character acquired through use is not required separately for each individual Member State, the evidence submitted must be capable of demonstrating that distinctive character has been acquired through use in all Member States and not only in a substantial part or the major part of the territory of the European Union.

According to the EUGC, the Board of Appeal was right to deny proof of acquired distinctiveness for the countries mentioned. The argument put forward by the trademark owner that the analysis carried out by the board was unrealistic, as consumers in the EU have homogeneous behavior with regard to luxury brands due to regular travel and internet use, was also rejected. The argument was too general. The trademark owner would have to prove this by specific and substantiated evidence.

All in all, the Board of Appeal had thus concluded, without any error of law, in the last decision under consideration that the evidence submitted by the trademark proprietor was not sufficient for the assumption of distinctive character acquired through use and that the Cancellation Division had thus correctly pronounced a declaration of invalidity and an order for cancellation.  

(EUGC judgment of 19.10.2022, T-275/21)

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Likelihood of confusion between "GreenCat" and "CAT" (EUIPO)

In 2020, the company FRASCHETTI SPA applied to the EUIPO for registration of the sign "GreenCat", shown below on the left, as an EU trademark for goods and services in classes 7, 8 and 37, including power saws, drilling machines, water pumps, garden tools and various maintenance and repair services for various tools and machines. This was opposed by Caterpillar Inc. on the grounds of likelihood of confusion with its earlier priority EU trademark "CAT" shown below right, also protected in Classes 7, 8 and 37. The opponent also claimed exploitation of its reputation. 

The Opposition Division granted the opposition in its entirety on the grounds of likelihood of confusion. The goods and services were either identical or highly similar. There was also similarity of the signs. Despite the stylization with a yellow triangle, the public would clearly recognize the word element "CAT" with average distinctiveness in the opposition mark, whereas the word element "Green" in the application mark would only have a weak distinctiveness in the agricultural sector. The representation of a cat in the mark applied for emphasizes the word element 'cat'. Conceptually, both signs coincide in conveying the idea of a cat. On balance, there is a likelihood of confusion even without taking into account the claimed increased distinctiveness. 

The applicant's appeal against this was unsuccessful. The Opposition Division had rightly assumed that the goods and services were identical or highly similar. Furthermore, the Board of Appeal found a slightly below-average visual similarity, an average phonetic similarity and a high conceptual similarity. It could not be sufficiently ruled out that the public would perceive the mark applied for as a variation or sub-brand of the opposing mark. In view of the likelihood of confusion thus already established, there was no need to examine the ground of opposition of exploitation of reputation. The appeal had to be rejected. 

(EUIPO BoA, Decision of 26.10.2022, R 185/2022-1)

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Scope of the duty to provide information in the case of trademark infringements (OLG Frankfurt)

The parties are in dispute about the enforcement of an obligation to provide information due to the infringement of trademark rights. The LG Frankfurt am Main (Frankfurt/Main Regional Court) prohibited the defendant from placing shoes on the market that infringe trademark rights. In addition, information was to be provided in writing about the manufacturer, suppliers and/or other previous owners. The applicant considered the information subsequently provided by the defendant to be insufficient, which is why, at its request, the Regional Court imposed a penalty payment on the defendant, against which the defendant then lodged an immediate appeal. 

The OLG Frankfurt am Main (Frankfurt/Main Higher Regional Court) now confirmed the decision of the Regional Court. The defendant had not provided complete information about the upstream supplier of the shoes, and its declaration of being unaware of such issues was not sufficient in this respect. If a “titled” claim for information (accepted at earlier instance), is not fully satisfied due to the lack of complete information, it can be further pursued by way of compulsory enforcement pursuant to Section 888 of the German Code of Civil Procedure (ZPO). 

This was the case here. The information provided by the defendant did not reveal any sufficiently meaningful information about the origin of the goods bearing the applicant’s mark. It is the responsibility of the defendant to make inquiries in case of remaining uncertainties and to exhaust all available possibilities in this respect. In this context, a mere inquiry by telephone is generally not sufficient, in particular due to comprehension problems caused by anguage barriers. Instead, the inquiry must be made in writing and - if it remains unanswered - a new deadline must be set. If upstream suppliers are known, doubts must be clarified with them. However,  the right to information does not provide for any obligation to make inquiries with third parties in order to identify unknown upstream suppliers. Inquiries can only be omitted if the impossibility of fulfilling the right to information is established, which must be substantiated and verifiable. 

The appeal was therefore to be dismissed. 

(OLG Frankfurt a.M., decision of 8.8.2022, 6 W 41/22)

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Distinctiveness of the sign "i-mobility” (BPatG)  

In 2018, the company iwis SE & Co KG applied for the sign "i-mobility" at the German Patent and Trademark Office (DPMA) as a word mark for goods in classes 7, 9 and 12, including vehicles and means of transport. The office rejected the application due to a need to keep the mark free. It was a technical term with the meaning "intelligent mobility" and the term described a concept according to which resources are used in an economically and ecologically optimal way. The term must also be open to the general public. It is neither a neologism nor a term that can only be understood by inter-pretation. For all the goods claimed, therefore, the sign is a descriptive indication.

The applicant successfully appealed against this decision. According to the Federal German Patent Court (BPatG), the sign applied for is not descriptive, nor is it an indication which must be kept free. It is true that the element "mobility" is readily understood by the German public. However, it cannot be established that the public also sees the element "i" as an abbreviation of "intelligent". There are a large number of words abbreviated with "i", such as "information", "internet" and "in". It is not obvi-ous to the target public that the "i" stands for "intelligent". This would require some thought and intermediate interpretative steps.

Moreover, the term "i-mobility" has not yet become established as a technical term. The evidence submitted did not prove any such use in Germany. The evidence, some of which originated from Austria, was unsuitable for such proof in Germany. The designation "BMW i mobility service" also had to be disregarded, since the "i" here clearly referred to the "BMW i" series. The rejection was therefore wrong. 
(BPatG, decision of 25.8.2022, 30 W (pat) 46/20)

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Likelihood of confusion between two animal head marks (EUGC)

In 2016, Fuxtec GmbH applied to the EUIPO for registration of the sign shown below on the left as an EU figurative mark for goods and services in classes 4, 7, 8, 12 and 35, including industrial oils, machines, tools, vehicles and retail services. Societé Elmar Wolf filed an opposition against this on the grounds of likelihood of confusion with its prior French figurative mark shown below right, also protected in classes 7, 8 and 35. The Opposition Division rejected the opposition, against which the opponent filed an appeal. After the Board of Appeal rejected the appeal as unfounded and confirmed the result of the Opposition Division, the opponent filed an action before the EUGC.

The EUGC now also confirmed the absence of a likelihood of confusion and, as in the previous instances, assumed an identity of goods/services in this respect. The two signs consisting of an animal head had similar basic features, but the two animal head silhouettes were clearly stylized differently. The earlier mark is rich in detail, has a threatening effect due to the shape of the mouth and eyes and is perceived by the public as a representation of a wolf's, dog's or fox's head, whereas the younger mark, due to its high degree of abstraction, does not create such an impression and does not evoke any idea of a specific animal in the mind of the public. The Board of Appeal was therefore correct to assume that there was at most a low degree of visual similarity between the signs, which is why there was also no conceptual similarity between the signs. 

(EUGC, decision of 9.11.2022, T-596/21)

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Bad faith of trademark application by a distributor (BPatG)

The Federal German Patent Court’s (BPatG) decision is based on a legal dispute between three parties. A Ukrainian food manufacturer which supplied a food retailer operating in Germany between 2013 and 2016 stopped the supply in spring 2016, and concluded an exclusive supply agreement with the Monolith Unternehmensgruppe. The managing director of this group, which specializes in Eastern European and Russian foodstuffs, then applied for the Cyrillic mark shown below (transliterated "Tschedro", translated from Russian to mean something like "generous, abundant"), for various foodstuffs in classes 29 and 30. The previously supplied food retailer then filed an invalidity application against this mark on the grounds of bad faith.

The German Patent and Trademark Office (DPMA) then declared the mark invalid stating that it was obvious that the application had been filed with the intention of abusing rights, and had been made in bad faith. The Ukrainian manufacturer has been marking its goods with the trademark in question since at least 2013, which, due to the domestic acts of use attributable to it, establishes the legal protection of a prior-ranking use mark. The owner of the trademark has interfered with this protection deliberately and without justification by filing the application. The contractual relationship with the manufacturer also obviously leads to the knowledge of the earlier prior art. The application for registration unfairly restricts the manufacturer's freedom to change its distribution partner at will.

The trademark owner appealed against this decision to the BPatG, claiming that the trademark had been applied for after the conclusion of an exclusive supply agreement in order not to be adversely affected by third-party trademark claims during the term of the agreement. It was not intended to interfere with the manufacturer's sales after termination of the contract, but to secure its own contractual position in agreement with the manufacturer. In the absence of evidence of reputation, the requirements for the assumption of a use mark were not met. Finally, the mere knowledge of prior use was not sufficient for the assumption of bad faith.

The BPatG allowed the appeal, since there had been no bad faith at the time of filing. An application is not unfair on the basis of mere knowledge of (intensive) use of a formally unprotected identical sign for identical goods or services. Rather, the applicant must apply for the trademark with knowledge of a prior right worthy of protection in order to disturb the prior user in his prior right. An overall consideration of all relevant circumstances must objectively show a foregrounded intention to infringe. While the mere intention to use is not sufficient per se to exclude bad faith, bad faith does not exist if - as in this case - the promotion of the own competitive situation is in the foreground.

The applicant had his own legitimate interest in the use of the challenged mark, which resulted from the supply contract with the manufacturer. Any knowledge of prior business relations of the manufacturer was irrelevant. Further groups of cases of bad faith are also not recognizable.

Consequently, the DPMA decision had to be reversed.
(BPatG, decision of 19.8.2022, 25 W (pat) 29/20)

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Distinctiveness of the sign "MARKT-PILOT" (EUIPO)

MARKT-PILOT GmbH filed an application for the sign "MARKT-PILOT" with the EUIPO in 2021, claiming the priority of an earlier German trademark, for goods and services in classes 9, 35 and 42, including software, mobile apps, various retail and wholesale services and software development. The application was rejected for all goods and services in classes 9 and 42 on the grounds of descriptiveness and lack of distinctiveness, against which the applicant filed an appeal.

The Board of Appeal dismissed the appeal as unfounded, confirming that, for the goods and services still at issue in the proceedings, the sign lacked distinctive character. The word element "MARKT" would be understood by the public as "economic area", the element "PILOT" in its combination with a noun as a test referring to this. It is unclear why specialists in IT and marketing, as the relevant public, think of aircraft pilots when they hear the term 'pilot', as the applicant claims. In any event, such a connection is not apparent. As correctly recognized by the EUIPO, the sign would therefore be understood as meaning 'pilot (project) on the market'. However, even if the applicant's argument were accepted, the sign is descriptive.

The goods and services claimed in connection with so-called data mining have the purpose of providing traders on the market with indications as to which marketing strategy and pricing they would have the greatest success with on the market. Based on an understanding of the sign in the sense of "pilot (project) on the market", the sign is an indication of a possible use of the claimed goods and services in an early phase of a product launch on the market. In the sense of "market leader" the sign describes the fact that the user is led on the confusing market. In both cases the sign is an exclusively descriptive direct indication of the purpose of the claimed goods and services.
(EUIPO BoA, decision of 7.11.2022, R 672/2022-2)

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Distinctiveness of a 3D-mark representing a shirt collar (BPatG)

In 2018, a German individual filed an application with the German Patent and Trademark Office (DPMA) for the sign shown below as a 3D trademark for goods in classes 16, 25 and 28, including dress patterns, various clothing items and clothing for dolls and toys. Attached to the application was the following description: "Three-dimensional mark: outer garment with collar having a stand-up collar as a collar stay and an upper and lower collar formed in the shape of a protruding ring segment attached thereto."

The DPMA rejected the application for lack of distinctiveness. Although the collar solution applied for appears striking, its uniqueness and originality are not sufficient, in view of the variety of shapes in the clothing sector, to function as an indication of origin to the public. This would require a significant deviation from the variety of designs, which in any case is not apparent in the mark applied for. 

The applicant's appeal against this was unsuccessful. In principle, the usual requirements for distinctive character apply to three-dimensional marks. However, 3D marks consisting of the shape of the claimed product itself are not perceived by the public in the same way as a word or figurative mark, but as a functional or aesthetic design. It is primarily the product itself that is identified, but not its commercial origin. Against this background, such marks only have distinctive character if they deviate significantly from the norm or customary in the industry so that they can be recognized by the public as an indication of origin on the basis of this deviation from the norm.

The mark applied for does not meet those requirements. The applicant itself refers to the collar bar shown as a customary design. Although the ring segment is creative and appealing in design, it does not constitute such a deviation from the norm as to have an indication of origin, either on its own or in combination with the collar bar. The applicant's argument that there are only 14 typical collar shapes is not relevant in view of the enormous number of different collar shapes on the market, which is also determined by the DPMA, and which is new every year. The trademark applied for is not suitable to be understood by the public as an indication of origin, so the appeal has to be rejected. 
(BPatG, decision of 14.9.2022, 29 W (pat) 531/21)

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Exhaustion of trademark rights in reboxing and relabelling in parallel importation (CJEU)

Following a referral from the LG Hamburg (Hamburg Regional Court), the CJEU ruled in a preliminary proceeding concerning the exhaustion of trademark rights. The proceedings are based on a legal dispute between Bayer Intellectual Property GmbH as owner of the German trademark "Androcur" and kohlpharma GmbH concerning the distribution of medicinal products of the trademark "Androcur" parallel imported from the Netherlands to Germany by kohlpharma. 

Background:
Note: In the following, the term relabelling means the application of additional labels to the original outer packaging in order to comply with the legal requirements of the importing Member State. Reboxing, on the other hand, means the use of a completely new outer packaging.

Kohlpharma GmbH is a company specializing in the parallel import of pharmaceuticals. At the beginning of 2019, kohlpharma announced to Bayer that it would import the drug "Androcur" with a package size of 50 tablets from the Netherlands to Germany in order to sell it there in a package size of 100 tablets, among others. This would require reboxing, which kohlpharma informed Bayer about.

Bayer opposed this, saying that the use of new outer packaging went beyond what was required for the marketing of the drug in Germany. Kohlpharma must therefore be content with relabelling the original outer packaging.

Kohlpharma, on the other hand, argued that the packaging of 100 tablets in the 50-pack size would leave traces of manipulation on the original outer packaging. The end consumer would notice this and reject the product in question to a large degree, thereby impairing market access. This would make reboxing necessary. 

The questions referred by the LG Hamburg:
The LG Hamburg referred the following questions to the CJEU for a preliminary ruling, mutatis mutandis:

(1) Are relabelling and reboxing of parallel-imported products equivalent measures if they are equally suitable for proving the authenticity and identity of the medicinal products and for enabling proof of tampering?

2) Is relabelling in principle a milder means than reboxing from the point of view of the trademark owner, so that he can oppose the latter?

(3) Can the trademark proprietor oppose the marketing of a parallel-imported product in a new outer packaging if otherwise, namely if the original outer packaging were used, damage would inevitably occur to that packaging which was also identifiably caused by the parallel importer?

The CJEU’s decision:
According to established case law, parallel imports are only permissible under the conditions that (1.) the assertion of trademark rights would contribute to market foreclosure, (2.) the original condition of the product contained in the packaging remains unaffected, (3.) the parallel importer and manufacturer are visible on the packaging, (4.) the packaging presentation does not cause reputational damage to trademark owners, and (5.) the parallel importer informs the trademark owner before placing the product on the market.

Against this background, the CJEU had to decide under which conditions the trademark owner can oppose a so-called relabelling or reboxing. This essentially concerns the question of whether the trademark owner is representing legitimate interests or is aiming for artificial market foreclosure. The growing threat to human health posed by counterfeit medicines must be taken into account. The public must be able to check the authenticity of medicines on the basis of safety features.

Answer to question 1:
First of all, it follows from the Directive that the Union legislator did not intend to prevent the reuse of the original outer packaging, provided that the original security features are replaced by equivalent security features. Under this condition, relabelling and reboxing are equivalent in their suitability with regard to compliance with security guarantees.

Answer to question 2:
The trademark owner can only prevent relabelling or reboxing if this impairs the functions of the trademark. If, on the other hand, the trademark rights are exercised only for the purpose of artificially foreclosing the market, it is not permissible. 

It contributes to market foreclosure if the trademark owner opposes a relabelling/reboxing necessary for access to the market of the importing Member State. It is necessary if the goods may not be marketed in the importing Member State in the packaging of the exporting Member State.  

Due to the higher intensity of the interference, a gradual relationship is to be recognized in the necessity of the two measures and the trademark owner can only oppose the reboxing if a relabelling of the pharmaceutical product is objectively possible under consideration of the legal requirements and the pharmaceutical product labeled in this way can actually gain access to the import market. 

Answer to question 3:
Everyone in the supply chain - including the parallel importer - must verify that the drug is genuine and has not been tampered with before removing or covering a safety feature. A substitute device against tampering must therefore be suitable for this verification.

In any case, the trademark owner cannot oppose reboxing if this is necessary in order to market the parallel-imported pharmaceutical product in the importing Member State. For example, if the security device against tampering on the outer packaging cannot objectively be replaced in an equivalent manner.

If it can be determined with certainty that the traces are not due to tampering with the medicinal product but to other circumstances - in this case relabelling - a replacement device against tampering fitted by the parallel importer is also equivalent to the original device. Anything to the contrary would contradict the described step-by-step relationship with regard to the necessity of the two measures, since relabelling is always accompanied by opening marks on the original outer packaging.

In case of doubt about the origin of the opening marks, the trademark owner could not oppose the reboxing, since otherwise it would not be ensured that no interference by third parties had been made without the trademark owner's consent. 

Thus, the trade mark proprietor could in principle oppose the reboxing of a parallel-imported pharmaceutical product even if the original outer packaging showed visible traces of opening in the course of re-labelling which could be traced back to the parallel importer. However, if these traces are of such nature that they constitute an actual obstacle to market access, the trade mark proprietor cannot oppose reboxing.
(CJEU, judgment of 17.11.2022, C-204/20)

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Distinctiveness of the sign "O'dampft is!" (BPatG)

In 2019, Pure Vape GbR applied for the sign "o'dampft is!" (meaning "it is steamed" in Bavarian dialect) as a word mark at the German Patent and Trademark Office (DPMA) for clothing, electronic cigarettes and organizing and conducting trade fairs in classes 25, 34 and 35. The DPMA rejected the application for lack of distinctiveness and the existence of a need to keep the mark free. The applicant filed an appeal against this decision.

The German Federal Patent Court (BPatG) now ruled that the rejection was justified, since the sign was indeed already devoid of distinctive character at the time of application. The sequence of words in Bavarian dialect would be recognized by the public as "Es ist angedampft!" or "Angedampft ist!" and thus as a slogan or "fun slogan" and a mere advertising invitation to purchase and consume the e-cigarettes thus designated. The ability of the average consumer to understand dialect expressions should not be underestimated in this respect. Moreover, the term "Dampfen" (to steam) had already been used as a synonym for the consumption of e-cigarettes - as extensively documented - before the filing date.

Since it is obviously based on the well-known sequence of words for the opening of the Oktoberfest "o'zapft is!", the sign is also understood for the opening and implementation of trade fairs. This similarity does not give rise to any particular originality of the overall sign, as shown by numerous similarly structured advertising statements from various sectors. Rather, the sign is understood by the public as a "fun slogan" which has no distinctive character. This applies in particular to the clothing claimed, which is regularly recognized by the public as a communication medium.

Due to the obstacle of lack of distinctiveness, the existence of a need to keep the claimed goods free can be disregarded. Due to the fundamental importance of the legal question of the distinctiveness of a fun or motto claim, which has not yet been clarified by the highest courts, the BPatG allowed an appeal to the German Federal Court of Justice (BGH). 

(BPatG, decision of 26.9.2022, 26 W (pat) 572/20)

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Distinctiveness of the sign "FOIE ROYALE" (BPatG)

In 2019, GMT GmbH applied to the German Patent and Trademark Office (DPMA) for the sign "FOIE ROYALE" as a word mark for meat, foodstuffs made from or containing ingredients made from poultry products, in particular geese and ducks, edible oils, edible fats, soups, broths and meat extracts in class 29. The DPMA rejected the application for lack of distinctiveness. The words "FOIE" and "ROYALE" are common terms in the French language and refer, mutatis mutandis, to "(stuffed) liver of a royal kind". Thus, the meaning of the overall sign does not go beyond the meaning of the individual components and is descriptive of the nature or intended purpose of the goods claimed, indicating that they contain liver or are intended for the production of a liver of a royal kind.

The applicant filed an appeal against this decision, which was upheld by the German Federal Patent Court (BPatG). The sign was indeed distinctive for the goods claimed. Even if one assumes that the public correctly translates the French pair of terms as "royal liver", it does not assign a descriptive conceptual content to the sign that is in the foreground. Although the public may have the impression that the goods thus designated are of a quality appropriate for queens and kings, such an impression is conveyed only indirectly and does not have the effect of a purely advertising message for the goods claimed.

In the present case, it remained unclear to which quality characteristic the allusion "royal" could refer. Despite regular designation of various products with the term "Royal" or "Royale", no concrete meaning or reference to a specific ingredient could be inferred from it. At best, the term creates vague expectations with regard to a "royal" liver. The application sign is not descriptive, but distinctive.

(BPatG, decision of 20.10.2022, 30 W (pat) 564/20)

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Distinctiveness of the signs "WE ARE PLASTICS" and "WIR SIND KUNSTSTOFF" (EUIPO)

In 2022, GKV Gesamtverband Kunststoffverarbeitende Industrie e.V. applied to the EUIPO for registration of the signs "WE ARE PLASTICS" and "WIR SIND KUNSTSTOFF", shown below, as an EU trademark for various goods and services related to plastics in classes 16, 17 and 40. The Office rejected the application for lack of distinctiveness, against which the applicant filed an appeal.

The Board of Appeal dismissed the appeal as unfounded. The signs applied for were devoid of any distinctive character for the goods claimed in each case. The signs would be readily understood by the English- and German-speaking public as referring to a company that has a connection with plastics. They also express an abstract corporate philosophy. The strong abbreviation of statements has become common in everyday life, meaning that the public perceives the sign as an advertising-like slogan for the goods and services claimed. The applicant's argument that this may apply to the plastic goods claimed, but not to the goods made of cardboard, paper and resins, was not convincing. Graphic elements and colors would have to have a sufficient effect on the mark as a whole to establish distinctiveness of the overall sign. The mere addition of three colors to a descriptive word element did not meet this requirement. The appeal was dismissed.

(EUIPO BoA, decision of 3.11.2022, R 1850/2022-5)

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Disclaimer: Please note that the decisions included in this newsletter are a subjective selection of relevant trademark decisions made by the authors without any claim to completeness.