Is it unfair to account for compatibility with design characteristics of copetitors?

The question of whether or not the adaption of design features, in order to integrate a product into a series or a system developed and designed by a third party, offends the principle of fair competition has been under heavy dispute in the past.

While the BGH had ruled in the decision "Klemmbausteine II" (Urt. v. 7.5.1992 - I ZR 163/90, GRUR 1992, 619 = WRP 1992, 642)that such an integration into a series of a third party (in the case at issue, the products were plastic bricks matching Lego breaks constitutes an unfair profiting of the achievements of that third party.

However, this rule was put into perspective with the subsequent decision “Klemmbausteine III” (I ZR 30/02) and "Modulgerüst" according to which this subsequent protection against inserttion into a series of a third party should be at least limited in time. According to the Senate, the term of protection should be based on the term of protection of similar industrial property rights such as patents or registered designs. However, a legitimate interest of the author of a series of product to be protected against insertions into the series was recognized.

The two recent decisions “Regalsystem” (I ZR 136/11), and "Einkaufswagen III" constitute surprising turning point in this line of decisions. According to the decision “Einkaufswagen III”, the fact that an interest of customers in optically compatible products in view of the need of replacement or enlargement exists is no indication for an inappropriate exploitation of the valuation of the imitated product, but rather an indication to the contrary. If a need for replacement using optically compatible products exists of the side of the customers, an inappropriate exploitation of the valuation of the counterfeit product may be excluded even if the aesthetic design features are adopted almost identically.

One decisive factor is the question whether or not the salability of a product with differing design features would be reduced as compared to the product with imitated design features (BGH “Regalsystem” I ZR 136/11).

Maltese IP Attorneys are no Patentanwalt

The Federal Court of Justice BGH has received an appeal against a decision of the Bundespatentgericht. The appeal was filed by a person registered as "IP Attorney" at the Intellectual Property Office of the Republic of Malta, but not as a German Patentanwalt.

The appellant's representative invoked the Directive 2006/123/EC of 12 December 2006 on services in the internal market as a legal basis for his entitlement to represent before the BGH. The BGH did not follow this argument because the directive 2005/36/EG is lex specialis to Directive 2006/123/EC and allows for supplementary qualification examinations for profession in its field of application. The German (supplementary) qualification examination for qualified patent attorneys from other European Countries is such a supplementary examination and is therefore in perfect conformity with Union law.

Since the Maltese representative did not figure in the list of German Patent attorneys, he was not entitled to represent his client in this case. As he did not pass the examination, he was further not entitled to be registered in this list. The appeal was deemed to be not filed.

The full decision can be read here.

Button in the Ear has no Distinctive Character

Sometimes, the world is unfair. One of the most distinctive trademarks this blogger knows from his childhood is the "Button in the Ear" with the Steiff ear tag for Teddy bears and other cuddly animals.

The Steiff Company has therefore been well advised to apply for a community trademark registration for this trademark. The trademark was labelled as a "position trademark" accompanied with the illustration on the left hand side.

However, the members of the boards of appeal of the OHIM and judges of the European Court of Justice apparently do not share this blogger's experiences and have rejected the application  due to a lack of distinctive character.

According to the court, buttons and little tags bearing information such as a brand, price or cleaning instructions are usual design features of cuddly animals and the Steiff ear tag does not differ from the design usual in this field to a sufficient degree.

It appears that Steiff will have to provide evidence that the sign acquired distinctive character through the use which has been made of it.