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.

Orientation on the Patent Claim - OLG Düsseldorf Heizkessel mit Brenner

One of the 3 criteria in the German doctrine of equivalence is that the considerations of the person skilled in the art when finding a replacement for the feature of a claim "orient themselves on the teaching of the patent claim".

It is not surprising that this criterion gives rise to discussions as to what it actually means.

The decision 15 U 139/14  "Heizkessel mit Brenner" of the Düsseldorf Upper District Court (OLG Düsseldorf) relates to an appeal against the rejection of a request for preliminary injunction and contains a translation of the criterion into a more handy language. According to the Court, the technical teaching given the patent has to be accepted as justified and may not be questioned in its technical legitimacy upon searching a replacement means with the same technical effect.

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.

Contractual Fines in Undertakings to Cease-and-Desist

PatLit has posted a message on a fine of EUR 5000 for the breach of a cease-and-desist order. Apparaently, the Nichia PR dept. does a good Job and I the blogosphere (including me) is helping them doing viral marketing.

I would like to take this occasion to explain some legal background on this

According to the Nichia press release , there was no court order to cease-and-desist but rather an out-of-court settlement including a confession statement. This is cease-and-desist agreement rather than a court order and ordinary contractual law applies.

It is very common that such an undertaking to cease-and-desist contains an entitlement to a contractual fine. 5000 EUR is a very common amount for this type of fine.

Since inappropriate amounts for the fine lead to the nullity of the entire claim, the undertakings often do not specifically fix the amount but rather say that the amount "shall be appropriately fixed by the right owner and re-assessed by disctrict court in the case of dispute" (so-called "Hamburger Brauch").

It appears to me that this is what has happened here.

Equivalent or an Altnerative? BGH "Okklusionsvorrichtung"

Art. 2 of the protocol of interpretation of Art. 69 EPC requires that the scope of protection of a patent claim goes beyond its literal meaning by requiring hat:
"For the purpose of determining the extent of
protection conferred by a European patent, due
account shall be taken of any element which is
equivalent to an element specified in the claims."

The practice shows that the national courts of the EPC member states are do not judge in unison what precisely is to be considered to be equivalent in the sense of the protocol of interpretation. However, in any case, teh considrations employed amount to balancing conflicting interests: The patentee strives for broad protection as a fair remuneration for his invention, his competitors want free competition.

Where is the borderline to be drawn to ensure fair protection for the patentee's inventive achievement? How can the borderline be made visible in order to guarantee a sufficient degree of legal certainty?

The BGH has answered these two questions by providing three other questions relating to the claim to be interpreted - the so-called "Schneidmesser" - questions:
1) Does the variant of the claim with the allegedly equivalent element solve the problem underlying the invention by means which have objectively the
same technical effect?
2) Was the person skilled in the art enabled by his or her expertise on the priority date to find the modified means as having the same effect?
3) Are the considerations that the person skilled in the art applies based on the technical teaching of the patent claim?
Whilst the first question is a simple technical quesiton and the second one boils dow to a kind of obviousness analysis, the third one is always the most difficult to answer and a little obscure.

The German Supreme Court (BGH) has now shed some new light on this third question - in the decision "Okklusionsvorrichtung" X ZR 16/09. In the case at issue, the specification had explicitly mentioned several alternatives for a specific feature, whereas only one of these alternatives was claimed. The court ruled that the choice of a specific alternative for achieving a technical effect was one of the considerations constituting the technical teaching of the patent claim and that there is no infringement if the alleged infringer does not make use of these considerations.

As a consequence, the mentioning of non-claimed alternatives in the specification forecloses the patentee form arguing that these alternatives are equivalent.

From a practical point of view, this is problematic because the practice of mentioning many alternatives as possible fallback positions has to be questioned. There will be no problem if the alternatives are mentioned in order to support a broad feature covering all of them. However, the scope of protection might be reduced if the claim is limited to one of the alternatives in the examination procedure. It might be worthwhile considering the deletion of the non-selected alternatives in this case.

Does offering at a trade fair imply a risk of first infringement? - BGH Pralinenform II

The fact that exhibiting a product on a trade fair implies the risk of a first infringement used to be undisputed in the good old days.

In April 2010, the Federal Supreme Court (BGH) has overturned this case-law and issued a ruling (Pralinenform II - I ZR 17/05 according to which the mere fact of exhibiting a product on a trade fair in Germany does not imply the statutory presumption that the exhibitor intends to sell the product in Germany.

The ruling related to trademarks and the generalization to other intellectual property rights is under dispute.

A recently published decision of the Frankfurt Upper District Court has apparetnly disregarded the BGH decision under 6 U 157/09 in a case relating to the well-known Stabilo-pens by putting the burden of proof for the intention not to sell the product in Germany to the alleged infringer.

The Mannheim District Court (29.10.2010, 7 O 214/10) was apparently a little more up to date by ruling that the mere fact of exhibiting a product infringing a patent was not sufficient to prove the alleged infringer's intention to sell the product in Germany with a degree of certainty sufficient to grant a preliminary injunction.

For the practice, it is higly advisable to provide evidence not only for the exhibition of an infringing product but also for the alleged infringer's intention to sell the product on the German market.

Compulsory licenses and abusive behavior

The upper district court in Düsseldorf has published an interesting decision (I2 U 92/10) in preliminary injunction procedure. The defendant had argued that the patentee abused his position dominating the market such that a compulsory licence to the patent would have to be granted - with the consequence that the cease and desist claim of the patentee would not be enforcible by referring to the "Microsoft" judgement of the European Court.

However the Upper District Court holds that the "exceptional circumstances" required in EuGH, GRUR 2004, 524 Rdnr. 38 – IMS/Health.

The cummulative preconditions for a claim for compulsory license are

(1) the desired use of the patent is unavoidable in the sense that even major efforts do not lead to a real or realistic potential substitute for the invention,
(2) the party seeking for the license plans to offer new products or services not being offered by the owner of the protective right and which will potentially be requested by the customers,
(3) the refusal of the license is not justified by substantial reasons, and
(4) the refusal leads to an exclusion of any competition on a derived (neighboring) market.

As far as I know, nobody has ever been successful in turning the "Orange Book" caselaw into a succesful defense in a patent infringement procedure.