How to Avoid Confusion in Keyword Advertising

This is not an advertisement for trademarks showing up on your screen

Google's Keyword Advertising service offers displaying advertisements in little boxes on the right-hand side of the search results if the search includes particular keywords while the keyword is still visible as typed in Google's search field. If the advertisements contain informations on goods and services available on clicking thereon and the keyword is a registered trademark, the trademark will be displayed togehter with the goods and services on the same screen. Captious trademark attorneys might argue that in the case the combined display on  the same screen consititutes an unallowed use of the trademark. In the decision "Bananabay II", the BGH had decided that this use did not constitute an identical use of the trademark (Art. 5(1)(a) of the trademark directive  89/104/EEC) as long as the advertisement itself is clearly separated from the search results, marked as advertisement and does not contain the the registered trademark or any hints to the products of the trademark owner but rather a link hinting towards a different commercial origin of the products or services.

The question whether or not this use might ocnstitute an infringement of (Art. 5(1)(b) of the trademark directive  89/104/EEC) in that a likelihood of confusion on a part of the public, which includes the likelihood of association between the sign and the trade mark is created, was still open.

In the decision MOST-Pralinen answered this question to the negative. Under the conditions develpoend in "Bananabay II" (advertisement in a separate box, advertisement itself does not contain the trademark), neither a likelihood of confution nor a likelikood of association exists.

Removing a Link Does Not Remove Infringement

The Upper District Court (OLG) in Karlsruhe was confronted with a case of infromgement of the copyright of a photography. The photography was used in an editorial context in the internet and the infringer had signed a cease-and-desist declaration obliging him to remove the infringing content and to pay a fixed contractual penalty immediately in each new case of violation.

The infringer removed the link but kept the photography on the server. The copyright owner, who presumably had bookemarked the URL in order to check whether the infringer would follow his duties, then claimed that a contractual penalty was due. 

The court found this claim to be valid and rejected the defence that the content was not practically accessible due to the lack of a link from the editorial part of the web pages. The court confirmed the established case-law that the fact that everybody who had stored the URL in advance (just as the copyright owner or his representative) could access the content was sufficient to make the content available to the public.

It goes without saying that similar arguments will apply to internet-based trademark- or patent infringements provided that the content qualifies as an offer for sale. The lesson to learn is that it is better to entirely delete any potentially infringing conent from the web server rather than relying on the non-accessibility after the deletion of a link.

The question whether it would have been sufficient to modify the URL in such a way that it would qualify as a kind of password.

The full text of the decision can be accessed via Justizportal Baden-Württemberg here.

Originality not Required

The latest part (I ZR 21/11) in the recent series of interesting decisions on design protection under German unfair competition (see e.g. (here) law relates to a toy set with a box having a glass bottom, a bag of sand and some tools to create patterns in the sand spread on the bottom.

The set had been protected by a utility model, which, however had expired when a competitor started to sell highly similar toy sets. The court in the 2nd instance had rejected the claims by arguing that the realization of a general idea using only basic shapes could not lend a "competitive character" to the design in the sense that the design could be construed as an indication of the commercial origin of the product by the public.

The BGH disagreed and argued that restriction to the use of basic shapes might lead to a puristic design which could be considered characterizing for the commercial origin of the goods such that copying the design could be an avoidable deception on the commercial origin of the goods.

Originality of individual features of the design is not required. Decisive is rather the overall impression.

Mentioning Effects of Technical Features in the Claim?

I have just posted on the BGH decision  "Desmopressin (X ZR 131/09)".

 

The case at issue in X ZR 131/09 was a utility model relating to a pharmaceutical composition containing an oxidizing agent. Claim 1 required the content of the oxidizing fall short of a certain upper threshold. According to the specification, the low content of oxidizing agent leads to an extended use-by date.

The defendant was able to prove that he had used a recipe inevitably leading to a composition falling under claim 1 but could not prove his subjective knowledge of the relation between the content of the oxidizing agent and the use-by date.

The BGH considered this sufficient. The second headnote reads (in translation):

“The subjective knowledge required for the possession of the invention exists when the activity is methodically directed to the realization of a technical teaching realizing all the features of the subject-matter of the invention (here: a certain recipe of a pharmaceutical composition). It is irrelevant whether or not the acting person has knowledge of effects being related to the realization of the subject-matter of the invention according to the specification (here: that the consideration of an upper limit for the content of oxidizing agent leads to an extended use-by date).”

In the reasons (margin number 18), the court argues that the possession of the invention can not depend on preconditions which did not become part of the technical teaching as defined in the claim. Accordingly, the knowledge of effects mentioned in the specification but not incorporated in the claim may not be decisive for the possession of the invention.

 

The interesting point is that adding a feature such as ".. such that the use-by date is extended" to the claim would have transformed this effect into a mandatory part of the technical teaching. According to the logic of the BGH, the failure to provide evidence proving the knowledge of this effect wozld have led to a refusal of the prior user right and - consequently - to infringement. An intersting case where the addition of a feature could theoretically enlarge the (inter partes) scope of protection.

 

A practical consequence exists for litigations with purported prior use-rights. Limiting the claim by adding a feature explicitly mentioning the effect of otherwise clearly defined technical features (in a co-pending nullity procedure or using the central limitation procedure of the EPO) could strongly increase the defendan's problems in providing sufficient evidence for the prior use.

 

No Right to Access to Profits for Employed Inventors - BGH "Türinnenverstärkung"

In the decision "Türinnenverstärkung" (X ZR137/07 of November 17, 2009), the Xth senate of the Federal Supreme Court BGH has overturned its establised case-law according to which the employed inventor has a claim to account for profits in order to determine his fair and adequate compensation.

The senate now judges that a right to access the annual turnover of the product concerned is sufficient to ensure the inventor's rights. The core argument is that modern inventors are engineers acquaintained with the internet and have possibilities to access informations similar to those of e.g. patent owners requesting damages to be calculated by licence analogy or owners. For the latter, no claim to access information had been granted in the past, the reason for the special role of employed inventors being that these were assumed to be humble workers with poor access to information such that complementary information was considered necessary for them to enable the assessment of the value of their invention.

Agreement on Community Patent (?)

Update: For the latest news, see here and here.

The according to the latest news here (DPA via Focus online), van Rompuy's Solomonic proposal to split the Unified European Patent Court into three parts - the central division being located in Paris and two other divisions in London and Munich respectively has been adopted. If this is true, this amounts to a great breakthrough in the 40-years of history of negotiations on the EU patent.

Further, according to this source, the London branch will deal with the administrative matters and the substantive jurisdiction will be distributed based on the technical field over the 3 cities.

Reasonable Expectation of Success? BGH "Calcipotriol-Monohydrat"

A skilled person trying to asses Germany's expectation of
success in today's semifinals.

The Federal Supreme Court (BGH) has spent much effort in further developing the case-law on the inventive step in the last months. The mantra is that the skilled person has to find an incentive (Anregung)  to tacke certain technical measures departing from the "beaten tracks", i.e. the usual way of doing things.

The decision  BGH X ZR  98/09 "Calcipotriol-Monohydrat" seeks to clarify the degree of intensity of this incentive in the prior art and adopts - according to this blogger's knowlege for the first time - the notion of a "reasonable expectation of success" needed for the skilled person do do certain experiments. This notion is widely used in the case law of the EPO Technical Boards of Appeal and goes back to T 60/89, 3.2.5.

According to the BGH, the consideration whether or not the adoption of certain measurs described in the prior art may for solving the technical problem under consideration "may gain in importance" when assessing whether or not the skilled person had an incentive to adopt these measures.