Interlocutory injunctions and patent protection – an EU Court decision

The European Court has ruled in the case C‑44/21 Phoenix Contact GmbH & Co. KG v HARTING Deutschland GmbH & Co. KG, Harting Electric GmbH & Co. KG, that has the following background:

On 5 March 2013, Phoenix Contact filed a patent application for a plug connector comprising a protective conductor bridge. In the proceedings prior to the grant of that patent, observations on the patentability of the product were submitted by Harting Electric.

On 26 November 2020, the patent applied for was granted to Phoenix Contact, inter alia for Germany.

On 14 December 2020, Phoenix Contact brought an application for interim relief before the referring court, seeking an injunction prohibiting HARTING Deutschland and Harting Electric from infringing the patent at issue.

The mention of the grant of that patent was published in the European Patent Bulletin on 23 December 2020.

On 15 January 2021, Harting Electric filed an opposition to that patent with the European Patent Office (EPO).

The referring court notes that it has reached the preliminary conclusion that the patent at issue is valid and that it is being infringed. It considers that the validity of that patent is not under threat.

However, that court states that it is prevented from ordering an interim measure on account of the binding case-law of the Higher Regional Court, Munich, Germany according to which, in order to issue an interlocutory injunction for patent infringement, it is not sufficient that the patent concerned has been granted by the granting authority, in this case the EPO, after a detailed examination of its patentability and that the question of the validity of that patent has also been reviewed by a court during the examination of the application for interim relief.

Thus, according to that case-law, for interim measures to be ordered, the patent concerned must also be the subject of an EPO decision in opposition or appeal proceedings, or of a decision of the Federal Patent Court, Germany in the context of invalidity proceedings, confirming that the patent concerned confers protection on the product in question.

Taking the view that such case-law is incompatible with EU law, in particular with Article 9(1) of Directive 2004/48, the referring court decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Is it compatible with Article 9(1) of [Directive 2004/48] if German higher regional courts, which have jurisdiction at last instance in proceedings for interim relief, refuse, in principle, to grant interim measures for patent infringement if the validity of the patent in dispute has not been confirmed in opposition or invalidity proceedings at first instance?’

The Court’s decision:

Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national case-law under which applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity proceedings.

Can a phrase with the hashtag #darferdas be a valid trademark in Germany?

Is it possible for the hashtag phrase “#darferdas?”, which means “can he really do that#, to represent a valid trademark.

This case has come to an end recently after a decision by the German Federal Patent Court. The dispute has the following background:

AS applied to the German Patent Office for registration of the sign comprising the hashtag #darferdas? as a trademark in respect of goods in Class 25 – ‘Clothing, in particular, tee-shirts; footwear; headgear.’

The Patent Office rejected the application, since the sign at issue was, in its view, devoid of any distinctive character within the meaning of Paragraph 8(2)(1) of the Law on the protection of trademarks and other distinctive signs.

AS brought an action against that decision before the Federal Patents Court, Germany.

By order of 3 May 2017, that court dismissed the action. It held that the sign at issue represented a sequence of characters and words joined together essentially composed of common German words. It was merely a stylised presentation of a discussion point. The hashtag indicated solely that the public is invited to discuss the question ‘Darf er das?’ (‘Can he do that?’). The public would understand that question — placed, inter alia, on the front of tee-shirts — for what it is, namely a simple interrogative phrase.

AS brought an appeal against that decision before the Federal Court of Justice, Germany.

According to the referring court, it cannot be excluded that the use of the sign at issue on the front of clothing is one amongst several types of use. That sign could also be placed on the label sewn on the inside of garments. In that case, the public could perceive that sign as a mark, that is to say, as an indication of the commercial origin of the goods.

The referring court states that it is clear from its own case law that, in order for a sign to be regarded as having a distinctive character and, consequently, being eligible for registration as a mark, it is not necessary that every conceivable use of that sign be used as a mark. It is sufficient that use be plausible and there be practically significant possibilities of using the sign applied for in the case of the goods and services in respect of which protection is claimed in such a way that it is easily understood by the public as a trademark.

That court considers that that approach could be reconciled with paragraph 55 of the order of 26 April 2012, Deichmann v OHIM (C‑307/11 P, not published, EU:C:2012:254), according to which Article 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) could not be interpreted as requiring the Office for the Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to extend its examination, based on the facts, of distinctive character to uses of the mark applied for other than that recognised as the most likely.

However, harboring doubts in that connection, the Federal Court of Justice decided to stay the proceedings and to refer the following question on Article 3(1)(b) of Directive 2008/95 to the Court for a preliminary ruling:

‘Does a sign have distinctive character when there are in practice significant and plausible possibilities for it to be used as an indication of origin in respect of goods or services, even if this is not the most likely form of use of the sign?’

The European Court ruled that:

Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks must be interpreted as meaning that in examining the distinctive character of a sign in respect of which registration as a trademark is sought, all the relevant facts and circumstances must be taken into account, including all the likely types of use of the mark applied for. The latter corresponds, in the absence of other indications, to the types of use which, in the light of the customs in the economic sector concerned, can be practically significant.

Based on this the German Federal Patent Court has reconsidered its earlier position on the matter finding this time that #darferdas? can function as a trademark because it can be applied to sewn-in labels of clothing where traditionally trademarks are placed. From that perspective, consumers can perceive the sign as a mark.

Source: Michaela Ring, Adam Lai-Chieh Wan (Hoffmann Eitle) – Kluwer IP Law.

Ferrari FXX K design elements and a European Court decision

The European Court has ruled in case C‑123/20 Ferrari SpA v Mansory Design & Holding GmbH and WH. 

This dispute focuses our attention on the limited edition Ferrari car model FXX K that is similar to another model 488 GTB. There is a visual difference between both models in some design elements.

The German company Mansory Design & Holding GmbH,WH starts to produce and offer those design elements as tuning parts which can be used by owners of 488 GTB to make their cars look like FXX K.

Ferrari initiated a lawsuit in Germany for infringement of unregistered Community design but lost it. The decision was appealed and the German Supreme Court asked the European Court to clarify whether the making available to the public of images of a product, such as the publication of photographs of a car, could lead to the making available to the public of a design on a part or a component part of that product and, if so, to what extent the appearance of that part or component part must be independent of the product as a whole in order for it to be possible to examine whether that appearance has individual character.

The EU Court has ruled, inter alia, that EU law must be interpreted as meaning that the making available to the public of images of a product, such as the publication of photographs of a car, results in the making available to the public of a design on a part of that product or on a component part of that product, as a complex product, provided that the appearance of that part or component part is clearly identifiable at the time that design is made available.

In the first place, the Court noted that the material conditions required for the protection of a Community design to arise, whether registered or not, namely novelty and individual character, are the same for both products and parts of a product. Provided that those material conditions are satisfied, the formal condition for giving rise to an unregistered Community design is that of making available to the public within the meaning of Article 11(2) of Regulation No 6/2002. 

In order for the making available to the public of the design of a product taken as a whole to entail the making available of the design of a part of that product, it is essential that the appearance of that part is clearly identifiable when the design is made available. However, that does not imply an obligation for designers to make available separately each of the parts of their products in respect of which they seek to benefit from unregistered Community design protection.

In the second place, the Court pointed out that the concept of ‘individual character’, within the meaning of Article 6 of Regulation No 6/2002, governs not the relationship between the design of a product and the designs of its component parts, but rather the relationship between those designs and other earlier designs.

In order for it to be possible to examine whether the appearance of a part of a product or a component part of a complex product satisfies the condition of individual character, it is necessary for that part or component part to constitute a visible section of the product or complex product, clearly defined by particular lines, contours, colours, shapes or texture. That presupposes that the appearance of that part or component part is capable, in itself, of producing an overall impression and cannot be completely lost in the product as a whole.

Nespresso’s capsule is no more a trademark in Switzerland

Nestle lost quite an important dispute in Switzerland regarding a figurative trademark for its famous Nespresso capsules.

Nestle registered a figurative trademark for its coffee capsule for the first time in Switzerland in 2000. After this an attempt for registration of equal EU trademark failed on absolute grounds.

Nevertheless the company succeeded to register this mark in Germany too.

Everything was fine until another Swiss company Ethical Coffee Company, started to offer biodegradable coffee capsules with a similar shape to this of Nespresso that fits to Nestle’s coffee machines.

Because of this Nestle attacked its competitors with trademark infringement lawsuits in Germany and Switzerland.

As a counter attack Ethical Coffee Company successfully canceled Nestle’s German mark, a decision upheld by the The Federal Patent Court in 2017. The ground for this cancelation was the fact that the form of the coffee capsule performs technical functions.

In Switzerland, the Court canceled the mark finding that Nestle failed to prove that the form is perceived as a source of trade origin.

The decision was appealed but the Supreme Court upheld it adding additional grounds for the cancelation. According to the Court, the mark has technical aspects. One of the reasons for this conclusion is the fact that Nestle’s competitors have to abide by this particular form in order their capsules to fit the coffee machines. These capsules has a specific form that is necessary in order the coffee machine to use it and to make a coffee successfully.

This case illustrate how difficult protection of figurative trademark can be especially when such trademarks are related to machines.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Whether elements of Ferrari can be protected as a European design?

The Advocate General of the European Union H. SAUGMANDSGAARD ØE has given an opinion on Case C‑123/20 Ferrari SpA v Mansory Design & Holding GmbH.

In brief, this case target the question whether elements of an entire design can be protected as unregistered European design. The case has the following background:

Ferrari is a racing car and sports car manufacturer established in Italy. Its top-of-the-range FXX K model, which has not been approved for use on the road, is intended solely to be driven on the track.

Ferrari first presented the FXX K to the public in a press release dated 2 December 2014. That press release included the following two photographs, showing, respectively, a side view and a front view of the vehicle:

The Ferrari FXX K, produced in limited numbers, exists in two versions, which are distinguished solely by the colour of the ‘V’ on the bonnet. In the first version, illustrated by the photographs reproduced above, that ‘V’ is black apart from its low point, which is the same colour as the basic colour of the vehicle. In the second version, the ‘V’ is entirely black in colour.

Mansory Design, of which WH is the chief executive officer, is an undertaking that specialises in the personalisation (known as ‘tuning’) of high-end cars. Mansory Design and WH are both established in Germany. Since 2016 Mansory Design has produced and marketed sets of personalisation accessories (known as ‘tuning kits’) designed to alter the appearance of the Ferrari 488 GTB (a road-going model, produced in a series, available since 2015) in such a way as to make it resemble the appearance of the Ferrari FXX K.

Mansory Design thus offers a number of ‘tuning kits’ which serve to transform the appearance of the Ferrari 488 GTB: the ‘front kit’, ‘rear kit’, ‘side set’, ‘roof cover’ and ‘rear wing’. In addition, it offers two versions of the ‘front kit’, reflecting the two versions of the Ferrari FXX K: on the first version, the ‘V’ on the bonnet is black apart from its low point, while on the second version it is entirely black.

A complete conversion of the Ferrari 488 GTB involves replacing a large portion of the visible body panels. In March 2016, at the International Motor Show in Geneva (Switzerland), Mansory Design displayed a vehicle featuring that conversion under the name Mansory Siracusa 4XX.

Ferrari maintains that the marketing of those ‘tuning kits’ by Mansory Design constitutes an infringement of the rights conferred by one or more unregistered Community designs of which it is the holder.

Principally, Ferrari asserted that the marketing of the ‘front kits’ constitutes an infringement of the first unregistered Community design, covering the appearance of the part of its model FXX K consisting of the V-shaped element on the bonnet, the fin-like element protruding from the centre of that element and fitted lengthways (the ‘strake’), the front lip spoiler integrated into the bumper and the vertical bridge in the centre connecting the spoiler to the bonnet. That section is seen as a unit that defines the specific ‘facial features’ of that vehicle and also creates an association with an aircraft or Formula 1 car. According to Ferrari, that unregistered Community design arose at the time of the publication of the press release of 2 December 2014.

In the alternative, Ferrari claimed to be the holder of a second unregistered Community design for the appearance of the front lip spoiler, which arose at the time of the publication of the press release or, at the latest, on the release of a film entitled ‘Ferrari FXX K – The Making Of’ on 3 April 2015, and which Mansory Design also infringed by selling its ‘front kits’.

In the further alternative, Ferrari based its action on a third unregistered Community design for the presentation of the Ferrari FXX K as a whole, as revealed in another photograph of the vehicle, shown in an oblique view, which also appeared in the press release of 2 December 2014.

Ferrari also claimed, as regards the ‘kits’ offered for sale on the territory of the Federal Republic of Germany, rights based on protection against imitation under the law on unfair trading practices.

At first instance, Ferrari sought an injunction throughout the European Union against the making, offering, putting on the market, importing, exporting, using or stocking of the accessories at issue, and made a number of associated requests (provision of accounting documents, recall and destruction of the products and the award of financial compensation). The Regional Court, Germany dismissed those claims in their entirety.

Before the appellate court, Ferrari stated that its requests for an injunction and its requests relating to the recall and destruction of the products, in so far as they were based on the rights conferred by the Community designs on which it relied, had become devoid of purpose, as the rights in question were to expire on 3 December 2017. (3) On the other hand, Ferrari maintained, in particular, its claims for compensation.

That court dismissed Ferrari’s appeal. In particular, it held that Ferrari’s claims based on the alleged unregistered Community designs were unfounded. According to that court, the first unregistered Community design claimed, relating to the part of the Ferrari FXX K described in point 23 of this Opinion, was non-existent, since Ferrari had not shown that the minimum requirement of a ‘certain autonomy’ and a ‘certain consistency of form’ was satisfied. Ferrari merely referred to an arbitrarily defined section of the vehicle. The second unregistered Community design claimed by Ferrari, covering the front lip spoiler, was also non-existent, on the ground that it too failed to satisfy the ‘consistency of form’ requirement. As to the third design, covering the overall appearance of the Ferrari FXX K, it did exist, but it had not been infringed by Mansory Design.

Ferrari then lodged an appeal on a point of law, which was declared admissible by the Federal Court of Justice. That court considers that the outcome of that appeal, as concerns the claims based on infringement of the rights allegedly conferred by the unregistered Community designs claimed by Ferrari, depends on the interpretation of Regulation No 6/2002.

More specifically, it is necessary to clarify the conditions in which the appearance of part of a product may, in accordance with that regulation, enjoy protection as an unregistered Community design.

In that context, the referring court asks, first, whether the making available to the public, within the meaning of Article 11(2) of Regulation No 6/2002, of the image of a product in its entirety also amounts to the making available of the designs of the parts of that product.

Assuming that that is the case, the referring court asks, second, whether the appearance of a part of the product must, in order to be capable of constituting a separate design, separate from the overall appearance of the product, present, as the appellate court held, a ‘certain autonomy’ and a ‘certain consistency in form’, so that it possible to establish that the appearance of that part is not completely lost in the appearance of that product and presents, on the contrary, an overall autonomous impression by comparison with the form as a whole.

In those circumstances, the Federal Court of Justice decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Can unregistered Community designs in individual parts of a product arise as a result of disclosure of an overall image of a product in accordance with Article 11(1) and the first sentence of Article 11(2) of Regulation No 6/2002?

(2) If Question 1 is answered in the affirmative:

What legal criterion is to be applied for the purpose of assessing individual character in accordance with Article 4(2)(b) and Article 6(1) of Regulation (EC) No 6/2002 when determining the overall impression of a component part which – as in the case of a part of a vehicle’s bodywork, for example – is to be incorporated into a complex product? In particular, can the criterion be whether the appearance of the component part, as viewed by an informed user, is not completely lost in the appearance of the complex product, but rather displays a certain autonomy and consistency of form such that it is possible to identify an aesthetic overall impression which is independent of the overall form?’

The Advocate’s opinion:

1) Article 11(2) of Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that the making available to the public of the full design of a product, such as the appearance of a vehicle, also entails the making available to the public of the design of a part of that product, such as the appearance of certain elements of the bodywork of that vehicle, provided that the latter design is clearly identifiable at the time when that design is made available.

2) Article 3(a) of Regulation No 6/2002 must be interpreted as meaning that a visible section of a product, defined by particular lines, contours, colours, shape or texture, constitutes the ‘appearance of […] a part of a product’, within the meaning of that provision, which may be protected as a Community design. There is no need, when assessing whether a given design complies with this definition, to apply additional criteria such as ‘autonomy’ or ‘consistency of form’.

IOC won a dispute regarding the Olympic trademark in Germany

The International Olympic Committee succeeded in a dispute in Germany on a trademark associating with the Olympic Games.

The case at hand regards the following German trademark application for classes 28, 35 and 41:

The German Patent and Trademark Office refused this trademark based on the German Law on the Protection of the Olympic Emblem and Designations (OlympSchG). According to this law, any use of  “Olympiade”, “Olympia”, “olympisch” or similar is prohibited if it is not authorized by the the National Olympic Committee for Germany or the International Olympic Committee. 

The decision was appealed and overturned. Because of this The International Olympic Committee intervened filing an opposition against this mark based on early registered mark for OLYMPIC.

This time, however, the Patent Office didn’t find similarity between the signs dismissing the opposition. In the appeal the German Federal Patent Court upheld this decision as valid.

Another appeal followed and the German Federal Supreme Court overturned the decision entirely. According to the court, the opposition was admissible. The fact that special legislation protects the Olympic Games symbols and signs doesn’t mean that they cannot be protected by the trademark law too.

When comparing the signs, the Court found enough similarities in order to upheld the opposition. The figurative element in the mark applied for would be perceived as an indication for the Olympic fire. In addition the lower court didn’t take into consideration the enormous reputation the earlier mark possesses. What’s more the first element of the mark RETRO has descriptive character.

The case has now been referred back to the German Federal Patent Court for new decision.

Source:  Yvonne Stone, Jana Bogatz – D Young & Co LLP for Lexology.

To what extent linking and framing of copyrighted works is legal in the EU – a new EU Court decision

The European court has ruled in case C‑392/19 VG Bild-Kunst v Stiftung Preußischer Kulturbesitz. This case concerns the question to what extend linking and framing of copyrighted content can be illegal on the territory of the EU.

The case has the following background:

SPK is the operator of the Deutsche Digitale Bibliothek (DDB), a digital library devoted to culture and knowledge, which networks German cultural and scientific institutions.

The DDB website contains links to digitised content stored on the internet portals of participating institutions. However, as a ‘digital showcase’, the DDB itself stores only thumbnails, that is to say smaller versions of the original images of the subject matter. When the user clicks on one of those thumbnails, he or she is redirected to the page concerning the particular subject matter on the DDB website, which contains an enlarged version of the thumbnail concerned, with a resolution of 440 by 330 pixels. When that enlarged thumbnail is clicked on, or the ‘magnifying glass’ function is used, a further enlarged version of the thumbnail, with a maximum resolution of 800 by 600 pixels, is overlaid by means of a ‘lightbox’. Further, the ‘Display object on original site’ button contains a direct link to the website of the institution providing the subject matter, either to its home page or to the page relating to that subject matter.

VG Bild-Kunst maintains that the conclusion with SPK of a licence agreement for the use of its catalogue of works in the form of thumbnails should be subject to the condition that the agreement include a provision whereby the licensee undertakes, when using the protected works and subject matter covered by the agreement, to implement effective technological measures against the framing by third parties of the thumbnails of the protected works or subject matter displayed on the DDB website.

SPK considers that such a term in the agreement is not reasonable in the light of the legislation relating to copyright, and brought an action before the Regional Court of Berlin, Germany seeking a declaration that VG Bild‑Kunst is required to grant SPK that licence without any condition requiring SKK to implement such technological measures.

That action was dismissed by the Regional Court of Berlin. An appeal having been brought by SPK, the judgment of the Landgericht Berlin was set aside by the Higher Regional Court of Berlin, Germany. By its appeal on a point of law, VG Bild-Kunst seeks the dismissal of SPK’s action.

The Federal Court of Justice, Germany points out, first, that, pursuant to the first sentence of Paragraph 34(1) of the VGG, which transposes Article 16 of Directive 2014/26, collecting societies are obliged to grant to any person who so requests, on reasonable terms, a licence to use the rights whose management is entrusted to them.

Second, in accordance with its case-law established in the period during which the national legislation repealed by the VGG was applicable, case-law which, in the opinion of the referring court, continues to be of some relevance, it was accepted that collecting societies could, exceptionally, depart from that obligation and refuse to grant a licence for the use of the rights management of which was entrusted to them, provided that that refusal did not constitute an abuse of monopoly power and that the licence application was objectionable by reference to overriding legitimate interests. In that regard, in order to determine whether there is an objectively justified exception, it was necessary to weigh up the interests of the parties concerned, taking into account the purpose of the legislation and the objective underlying the obligation that applies, in principle, to collecting societies.

The outcome of the appeal on a point of law depends on the issue whether, contrary to what was held by the appeal court, the embedding of a work – which is available on a website, in this instance that of the DDB, with the consent of the right holder – in the website of a third party by means of framing constitutes a communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29 where it circumvents protection measures against framing adopted by the right holder or imposed by him or her on a licensee. If that were the case, the rights of the members of VG Bild-Kunst would be liable to be affected and VG Bild-Kunst could properly subject the grant of a licence to SPK to the condition that SPK undertake, in the licence agreement, to implement such protection measures.

The referring court considers that, when thumbnails are embedded by framing in a third-party website so as to circumvent the technological protection measures adopted or imposed by the right holder, such embedding constitutes a communication to a new public. If that were not the case, the right of communication of a work to the public on the internet would, contrary to Article 3(3) of Directive 2001/29, be de facto exhausted as soon as that work was made freely accessible to all internet users on a website with the authorisation of the right holder, and that right holder would be unable to retain control of the economic exploitation of his or her work and to ensure adequate involvement in its use for economic purposes.

Federal Court of Justice is however uncertain as to the response to that question, having regard to the case-law of the Court in relation to the practice of framing (order of 21 October 2014, BestWater International, C‑348/13, not published, EU:C:2014:2315) and to the freedom of expression and information guaranteed by Article 11 of the Charter of Fundamental Rights of the European Union (‘the Charter’) in the digital context (judgment of 8 September 2016, GS Media, C‑160/15, EU:C:2016:644, paragraph 45), case-law which indicates that hyperlinks contribute to the smooth functioning of the internet and to the exchange of opinions and information, and accordingly it decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

‘Does the embedding of a work – which is available on a freely accessible website with the consent of the right holder – in the website of a third party by way of framing constitute communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29 where it circumvents protection measures against framing adopted or imposed by the right holder?’

The Court’s decision:

Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the embedding, by means of the technique of framing, in a third party website page, of works that are protected by copyright and that are freely accessible to the public with the authorisation of the copyright holder on another website, where that embedding circumvents measures adopted or imposed by that copyright holder to provide protection from framing, constitutes a communication to the public within the meaning of that provision.