Banking Secrecy has to Step Back in Cases of Obvious Trademark Infringement

In the case "Davidoff Hot Water II", the plaintiff had claimed contact data of an account holder involved in activities relating to trademark infrimgement from a bank. The bank invoked banking secrecy and did not hand over the address of the account holder.

As noted here, the BGH referred the question to the ECJ, who ruled that (par. 39 and 40)

... unlimited and unconditional authorisation to invoke banking secrecy is such as to prevent the procedures laid down by Directive 2004/48 and the measures taken by the competent national authorities, in particular when they seek to order the disclosure of necessary information under Article 8(1) of that directive, from taking due account of the specific characteristics of each intellectual property right and, where appropriate, the intentional or unintentional character of the infringement. 

 It follows that an authorisation of that kind is capable of seriously impairing, in the context of Article 8 of Directive 2004/48, the effective exercise of the fundamental right to intellectual property — to the benefit of the right of persons covered by Article 8(1) of Directive 2004/48 to the protection of personal data concerning them — as a result of the obligation, for a banking institution, to respect banking secrecy. 

The task to find "any other means or remedies" (par. 42) or to establish criteria are to be applied for striking the right balance between the right to intellectual property, on the one hand, and the right to protection of personal data is left to the referring court. The repeated reference to recital 17 of the Directive 2004/48 implies that the intentional or unintentional character of the infringement should play a role.
According to the press release here, the BGH has decided in favor of the right holder. The press release refers to cases of "obvious" infrimgements and does not give any details on the criteria to be applied. This is eventually left to the reasons of the decision, wich are not ye published.

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.

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.

Memory

Memory is not only a famous song from the musical "cats" but furhter a well-known game (also known as concentration, Pelmanism, Shinkei-suijaku, Pexeso or simply Pairs) and - that is important here - a german trademark registered in the name of Ravensburger, a famous game manufacutrer. The registration applies to tangible games as well as to their computerized brethren.

Ravensburger has now sued Apple (as reported e.g. here)for trademark infringement by selling various games with names comprising "Memory" in Apple's AppStore.

Interestinly, the court reporter of the munich-based newspaper Süddeutsche Zeitung notes that the judge has indicated not to cosider the AppStore as a platform comparable to e-bay but rather as a real shop not entitled to any alleviation of liability. I think this could cause big headaches to Apple and other owners of App Stores operating worldwide.

Position Trademark at the Wrong Position? Who Cares!

I came across a fairly interesting decision relating to Levi's "red tab" - a small red flag made of tissue mostly with "Levi's" written on it on the left hand side of the right back pocket of Levi`s famous Jeans.

A german manufacturer has now sewed little red flags with his trademark on the right border of the right back pocket and was sued for trademark infringement.

Levi's has used a broad collection of trademarks showig the red tab with and without the Logo "Levi's" and togehter with pockets with or without ornamental seams. In the decision cited above, the BGH argued that the assesment of the strenghended distinctive character by the upper district court was based on polls where the red tab was not shown in an isolated form but together with other features (e.g. ornamental seams of "arcuate" double-wing shape) indicating the origin of the product.

The case had been reffered back to the upper district court, which has found that the only difference in the position does not prevent the risk of confusion in a sufficient way.

The fact that the trademark was registered as a "position trademark" does not appear to play a role in any of the judgements.

A new trial will be held on October 19, 2011 at the BGH in this matter.

The Oracle of Munich - Predicting the Public Perception

I just came across the decision 27 W (pat) 554/10 in an appeal against the refusal of a trademark registration. The trademark contained the abbreviation RCQT and parts of a sign of military origin and was refused as offending the public order and morality (§ 8 II Nr. 5 of the German Trademark Act).

Apparently, the letters RCQT stand in some obscure rightist circles for "reconquista" and are used in anti-islamic contexts. However, it is clear that rest the general public will not find anything offending in these four letters and the preception of the latter is what usually counts in the trademark procedure.

Whilst fully approving the decision to refuse the registration, the reasons therefore are fairly interesting to read. The pertinent case-law says that the trademark registration should be refused if the trademark is suitable for offending the sense of morality of a considerable part of the public. The senate argues that the public perception does not depend on the perception of the majority in a calculatory sense. Rather, the act of registering the trademark would increase the fraction of the public feeling disturbed by the trademark.

This reasoning appears to be fairly skewed to me because we all have learned that the public preception is a question of fact which may be proven by polls and the like for the actual registration date and/or the past. When the office is trying to predict how the public perception will develop and reject the application based on this prediction, it leaves the principle of objectivity, which is at the basis of good governance.