Rescue Where There Is No Remedy

I feel strangely attracted towards the hopeless cases and was really enthusiast readig this one.

The 35th senate of the Bundespatentgericht (newly responsible for utility models) had issued a cost order obliging the plaintigg to pay the entire costs. The order was not perfectly clear in the question whether it concerns the costs of both instances or only the 2nd instance and the defendant requested a clarifying correction of this point.

The request was granted and the corrected order was issued and the plaintiff immediately requested a withdrawal or re-correction of the correction by arguing that the corrected decision was based on a wrong application of the law.

Unsurprisigly, the senate rejected this request for correction because wrong application of the law does not qualify as an "obvious error" which might be corrected.

Interestingly, the senate interpreted the request as a "remonstrance" (Gegenvorstellung) under §321a ZPO, which is a legal construction wich - accordig to my knowledge - a never been applied in procedures before the Bundespatentgericht before.

Originally, this procedure is a means for self-correction of decisions by the court having issued the decision in cases where no other legal remedy exists and where it turns out that the court had violated the right to be heard such that this violation has an impact on the outcome of the decision.

However, the 35th senate argues that it is equally applicable in cases where no other legal remedy exists and the decision is "tangibly unlawful" (greifbar gesetzeswidrig).

The original decision can be read here.

Intellectual Property and the Kindergarten

After many quarrels about who determines the rules of their games (including who is the princess and who is the horse), my children have reported that they have now finally found a new rule making their Kindergarten life more peaceful: The one who has invented the game determines the rules. This made me think.

After a first attack of fatherly pride, I am now wondering whether this new rule really decreases the number of arguments or rather provokes new arguments on novelty, inventiveness and inventorship...

The Scams are Third Parties - Who is Second Then?

Reading decisions on requests for restitutio in integrum is always very educating because it gives insights into the brimming life of IP owners on the one hand and because the desperate plight of somebody having lost a valuable right despite of all due care sometimes reveals super-human forces of creativity and legal quibbles.

Now, I came across a decision where this fertile ground has encountered the hitherto independent battlefield of scammy patent- or trademark registers recently discussed e.g. here and here.

The applicant had not paid the official filing fees and tried to turn the existence of warning letters issued by the German PTO into his favor. He argued that these letters warn against payment invitations and reminders issued by third parties. According to him, this would imply that the German PTO also issues payment invitations or the like, because if there is a third party to issue the reminder, there should also be a second one....

"Comprising" is not "Consiting Of" - BGH X ZR 75/08 "Reifendabdichtmittel"

The the patentee in the decision "Reifenabdichtmittel" had amended a limitiation according to which an adhesive for sealing tyres "comprises" a number of ingredience to a limitation that the adhesive "consists of" the same ingredients, i.e. that no other ingredients were used.

The BGH fond that, as a rule such an amendment is not allowable because it introduces the new technical feature of the "conclusiveness" of the recipe and that furhter incentives from the specification are needed to make such an amendment allowable. The specification mentioned indeed an embodiment with no furhter ingredients (such that the amendment would presumably have been allowable under the EPC) but did not explicitly mention this feature. Rather, other portions of the specification indicated that fillier materials could be added optionally and this option was not explicitly excluded for the embodiment under discusstion.

In the judgement of the BGH, the allowability of such an amendment would require indications that the feature of consisting of the mentioned ingredients only has particular advantages or is otherwise desireable.

It is interesting to compare this decision with T 390/08, where the "consisting of" in claim 1 in combination with a dependent claim mentioning further ingredients (or more precisely, the introduction of a further element in the opposition procedure) led to a clarity objection. There appears to be a tendency to require some explicit "singeling out" of specific combination of features to be claimed, which may be supported by mentioning particular advantages of the specific combinations.

For the practice, this means that when mentioning the advantages of optional additional features for supporting their inventiveness during the prosecution, it is wise to also mention an advantage of the embodiment without these features. In the case at issue, it would probably have been sufficcient to say that the adhesive is cheaper or easier to brew if no filler materials are used.

Trademark Registration of Shapes which give Substantial Value to the Product

The IPKat has reported an interesting General Court of the EU decision in an appeal of Bang & Olufson against an OHIM decision.

The procedure dealt with the question whether or not the shape of the loud-speaker should not be registered because it "gives a substantial value to the goods" in the sense of Article 7(1)(e) of Regulation No 40/94.

The press release says:
In the Court’s view, that design is an essential element of Bang & Olufsen’s branding and increases the value of the product concerned. Furthermore, it is apparent from extracts from distributors’ websites and on-line auction or second-hand websites that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point.

Whilst I perfecly agree with this judgement, this appears to be in conflict with an
older decision of the BGH on a BMW radiator cowling, wherein

the BGH argues with regard to §3(2)Nr.3 MarkenG that this exception applies where the aestethic shape of the goods is considered the actual "tradable value", whereas it does not apply in cases where the shape/design is only an "ingredient" of the good, which has other functions besides of beeing beautiful.

I think that the fact that the B&O loudspeaker has other functions besides of beeing beautifulcannot be reasonably constested.

My impression is that the court was led by the empirical fact that every boy in Germany can tell the brand of a car by looking at a radiator cowling, which is not the case for loudspeakers. Given this, it is surprising that the BGH has finally rejected the BMW cowling as being "devoid of any distinctive character". Apparently, BMW had not conducted a poll.

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.

EPLAW criticizes the draft agreement on the unified court

Fairly severe criticsismns have now been raised by the patent litigation attorneys association EPLAW and Prof. Krasser of the Munich based Max Planck Institute for Intellectual Property Rights against the draft agreemen on the unified patent court in Council doc 13751/11.

Besides of some points already mentioned by the IPKat, one important and new point is that the rules relating to patent infringement (in particular questions of equivalence) should not be included into the agreement in order to preserve them from the doom of being interpreted by the CJEU.