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TM-Conqueror: Trademark law in Germany, Europe and the World

trademark application, trade mark infringement, German trademark law, EU trademarks, IR, national trademark protection, trademark analysis, trademark portfolio management

Recent Decisions in Trademark Law

1. Case No.: 30 W (pat) 78/21

  • Court: German Federal Patent Court
  • Decision Date: August 23, 2024
  • Legal Provisions: Section 26 of the German Trade Mark Act (MarkenG)
  • Trademark: “MONSTER”
  • Details: The case dealt with whether using a word mark in a highly stylized logo constituted genuine use of the trademark. The court ruled that such stylization altered the distinctive character of the original mark, rendering the use insufficient to preserve trademark protection.
  • Significance: This decision reinforces the importance of maintaining consistency in the use of registered trademarks. Deviations that alter the perception of the mark may jeopardize its protection.
  • For IP Practitioners: Counsel clients to adhere closely to the registered form of the trademark in commercial use and advise against modifications that may impact distinctiveness.

2. Case No.: I ZR 138/20

  • Court: Federal Court of Justice (BGH)
  • Decision Date: 2024
  • Legal Provisions: Section 14(2) No. 2 MarkenG
  • Trademark: “Testarossa”
  • Details: The court reviewed the revocation of the trademark for non-use. It held that the lack of genuine use within the statutory period led to the loss of trademark protection.
  • Significance: The decision underscores the requirement of continuous and genuine use of trademarks in commerce to avoid revocation.
  • For IP Practitioners: Monitor the use of trademarks and remind clients of the obligation to demonstrate active use in connection with the goods or services for which the mark is registered.

3. Case No.: C-334/22

  • Court: Court of Justice of the European Union (CJEU)
  • Decision Date: January 25, 2024
  • Legal Provisions: Article 110 of the Community Design Regulation (CDR)
  • Trademark: “Audi”
  • Details: The court clarified that the repair clause applicable in design law does not extend to trademark law, affecting the use of trademarks on spare parts and accessories.
  • Significance: This decision delineates the boundaries between design and trademark law, emphasizing their independent scopes.
  • For IP Practitioners: Develop distinct strategies for addressing trademark and design rights in industries like automotive and advise clients on compliance when using trademarks in repair or replacement parts.

4. Case No.: 29 W (pat) 36/20

  • Court: German Federal Patent Court
  • Decision Date: 2024
  • Legal Provisions: Section 8(2) No. 1 MarkenG
  • Trademark: “Kölner Dom”
  • Details: The court upheld the refusal to register “Kölner Dom” as a trademark due to its lack of distinctiveness and the public interest in keeping the term free for general use.
  • Significance: The decision illustrates the challenges in trademarking iconic or commonly used terms.
  • For IP Practitioners: Carefully evaluate the distinctiveness of trademarks and consider the public interest when advising on trademark applications.

5. Case No.: 25 W (pat) 13/21

  • Court: German Federal Patent Court
  • Decision Date: 2024
  • Legal Provisions: Section 9(1) No. 2 MarkenG
  • Trademark: “Neuschwanstein”
  • Details: The case addressed the opposition against the “Neuschwanstein” trademark based on potential confusion with existing rights.
  • Significance: Demonstrates the importance of avoiding conflicts with cultural or pre-existing rights.
  • For IP Practitioners: Conduct thorough clearance searches to assess potential conflicts before filing trademark applications.

6. Case No.: I ZR 201/20

  • Court: Federal Court of Justice (BGH)
  • Decision Date: 2024
  • Legal Provisions: Section 14(2) No. 3 MarkenG
  • Trademark: “Black Friday”
  • Details: The court annulled the “Black Friday” trademark due to its descriptive nature, ruling it invalid.
  • Significance: Highlights the legal hurdles for registering descriptive or generic terms as trademarks.
  • For IP Practitioners: Advise clients against attempting to trademark overly descriptive terms and focus on developing inherently distinctive marks.

7. Case No.: 26 W (pat) 116/20

  • Court: German Federal Patent Court
  • Decision Date: 2024
  • Legal Provisions: Section 8(2) No. 10 MarkenG
  • Trademark: “Olympia”
  • Details: The court ruled that “Olympia” could not be registered due to its association with the Olympic Games and the public interest in keeping such terms available for unrestricted use.
  • Significance: Reflects the legal limitations on trademarking terms linked to significant events or public symbols.
  • For IP Practitioners: Evaluate the implications of public interest and pre-existing associations when advising on trademark applications.

Key Actions for IP Practitioners

  1. Monitor Trademark Use: Regularly review clients’ trademark usage to ensure compliance with genuine use requirements.
  2. Conduct Clearance Searches: Prior to application, perform comprehensive searches to identify potential conflicts and assess registrability.
  3. Focus on Distinctiveness: Advise clients to create inherently distinctive marks to strengthen their trademark portfolio.
  4. Stay Updated on Case Law: Keep abreast of new decisions to guide clients effectively and avoid pitfalls in trademark applications and enforcement.
  5. Develop Tailored Strategies: Provide industry-specific advice, particularly for sectors heavily impacted by design and trademark interplay.
Recent Decisions in Trademark Law

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