In addition to purely national trademarks, European trademarks (EU trademarks) can also be applied for in the EU. Apart from the respective area of protection, both trademarks basically offer similar protection. In individual cases, however, differences may arise in practice.

Generally, two main questions must first be clarified when filing a trademark application: what is to be protected as a trademark; and for which goods and services is the trademark to be protected. However, especially if a business is not only active in one country, they should also consider in which countries they want to have protection.
With a national trademark - for example, an Austrian trademark - you have protection in the respective country and can defend yourself against actions that infringe the trademark in the respective country of protection. In addition to classic trademark infringements such as the distribution of illegally marked products in the respective country, one can usually also defend oneself against cross-border actions such as the use of the protected trademark on the internet, if this also addresses the market of the country of protection.
However, if one is active in several countries in the EU, protection in each individual country would involve increased costs and effort, since a different national authority is competent in each case. This problem is solved by applying for an international trademark for selected countries or by applying for an EU trademark: Here, protection for a trademark can be obtained comparatively cheaply in all EU member states. Especially if you are active in different national markets in the EU with the same trademark, this solution can be much more economical and time-saving than protection for individual national trademarks.
The protection of the EU trademark essentially corresponds to the protection of the national trademark in all member states, which is why both types of trademarks are handled in the same way in practice. In particular, an EU trademark can be used to take action against a subsequent national trademark of a competitor - and vice versa. As a rule, the competent authorities are those of the country in which the trademark proprietor has suffered any damage.
However, there is an important difference in opposition proceedings against a trademark application: If you oppose a national trademark, the patent office of the respective country - in Austria, for example, the Austrian Patent Office (APO) - is responsible. If you take action against an EU trademark, the European Union Intellectual Property Office (EUIPO) is responsible. Thus, a conflict between two Austrian companies may also have to be settled before the EUIPO, as far as an opposition against an EU trademark is concerned.
The two offices follow the same principles in their decisions in opposition proceedings, but there are sometimes differences in their decision-making practice. The reason for this is that the decisions of the different patent offices are not binding on each other. This can be particularly relevant when it comes to the question of how far the protection of a trademark actually goes. This is a legal question that must be clarified to a certain extent by the respective competent court. In the past, there have been cases where the question of whether a national trademark has any protective effect at all was answered in the opposite way by the national authorities and the EUIPO.
Such a discrepancy is now no longer possible, but it shows that different standards are sometimes applied here. In practice, therefore, it is not only the fact that one has registered a trademark that counts. It is also important what kind of trademark it is, for which goods and services it applies, as well as which authorities are responsible in the individual case of a possible conflict. We are happy to advise you on these and other questions in a personal meeting.

Mag. Sebastian Feurstein

COPYRIGHT: PHOTO DECISION EASES HANDLING IN EVERYDAY BUSINESS LIFE

Photos, texts, presentations - copyright issues frequently arise in everyday business life. However, the granting of rights to such works is comparatively rarely discussed or recorded in writing. This can lead to unpleasant surprises. The Supreme Court recently ruled in favour of the client in such a case.

In the specific case, a professional photographer had taken photos for a company for more than 15 years. The photos were used by the company almost without restriction for various purposes and usually without any copyright notice. There was no explicit agreement on permissible use. When an attempt was made in 2017 to put the lived business relationship in writing, the contract negotiations failed. The photographer went to court: The company should only be allowed to use the photos in a limited way and had to name him as the author.

The defendants successfully defended themselves against this at first and second instance. Now the Supreme Court has confirmed the dismissing judgements (OGH of 20.04.2021, 4 Ob 215/20a).

As a matter of principle in civil law, contractual relationships with rights and obligations can also arise without an explicit agreement ("tacit" or "implied"). The content of the contract is then primarily determined by what was intended (but not expressed) by both sides. If both sides had no idea at all of what they wanted with regard to individual (ancillary) points, or if these ideas differ from each other, legal standard rules can be applied in some cases. If these do not exist, what counts is usually what average, reasonable contracting parties would have agreed.

In copyright law, there are two important special rules for cases where the scope of the grant of rights has not been expressly agreed: On the one hand, as the Supreme Court emphasised once again in its decision, a grant of rights is in principle limited to the purpose for which the work was originally granted. On the other hand, according to the law, in some cases (e.g. edits) it must be assumed in case of doubt that the author granted or intended to grant fewer rather than more rights.

In practice, this leads to a situation where, in the case of such copyright contracts that are not expressly regulated, an entrepreneur must suddenly realise that he does not have the necessary rights for a desired use. This can be the case in particular if he originally acquired the respective work for a specific purpose (e.g. internal company use) and now wants to use it for a different purpose (e.g. use in marketing documents).

However, in the above case, the company was able to convince the courts that there was a sufficient implied agreement between the photographer and the company for the use. In doing so, the court considered the following points to be essential:

- from the outset, the company made it clear that the photos would also be made available to third parties;
- the photographer had never objected to the publication of his photos,
- the photographer also complied with the requirement that the photos he produced should only be made available to third parties with the company's consent;
- the photographer also almost never expressed a wish to be named;
- the photographer's invoice contained the note "Copyrights-use right unrestricted except posters", and a use for posters, trade fair walls, roll-up city lights etc. did not actually take place.

The Supreme Court thus saw a sufficient basis for the legal assessment of the lower instances that the company has an almost unrestricted right to use the photos. This decision is welcome, as it creates more certainty for companies that regularly work in the copyright context without a special agreement. At the same time, however, it also clarifies that even small points such as the note on the invoice or the clear communication that a work is used without restriction can help to prevent the risk of a subsequent restriction of use.

Mag. Sebastian Feurstein

As discussed in our previous article by senior partner Rudolf Pendl, recently the General Court of the European Union stated that the shape of Guerlain’s lipstick case is entitled to trademark protection. However, in certain cases the shape of a product may (also) be protectable as a design.

Both trademark and design protection are registered rights which can help to secure the intellectual property of a company. However, there are some key differences to both kinds of rights:

The main function of a trademark is to enable consumers to distinguish the goods or services of one undertaking from those of other undertakings. One of the main requirements for their registrability is, therefore, their distinctiveness. This applies not only to “traditional” trademarks consisting of names or figurative elements, but also to trademarks consisting of a certain shape or packaging of a product. Such shapes and packaging are protectable in case they enable the customers to associate the goods or services with individual undertakings.

Designs, however, do not have to be distinctive, but must rather be new and have an individual character, i.e., they must not be identical to previous designs and produce a different overall impression from designs previously made available to the public.

These different requirements for the protectability of trademarks and designs are based on the respective aim of legal protection. Whereas the purpose of a trademark is, among other things, to enable customers to identify the origin of a product or service from a company, the focus of the design is primarily on the protection of the company’s investment for the development of a new shape.

In addition, both IP rights have different terms of protection. While trademarks are registered for 10 years and can be renewed indefinitely, designs can be registered for 5 years, renewable up to a maximum of 25 years. However, despite the limited protection in time, the design right offers several advantages over three-dimensional trademarks.

Firstly, it can be difficult to get a three-dimensional trademark registered. In contrast, the registration procedure for design rights is relatively fast. Therefore, design rights are particularly suited to protect product lines that vary quickly in time and have a limited life cycle (e.g., fashion products that are produced and marketed only for the time of a season). In addition, EU legislation also provides protection for unregistered Community design rights, which protect an unregistered design to a limited extent (against copying only) for a maximum period of three years from the moment it is first made available to the public in the EU. Unregistered trademarks are usually only protected when they are sufficiently known among the relevant public which is generally rather the exception.
Unregistered Community design right can even be transformed in a registered design right if the application for registration is made within 12 months after the product incorporating the design was first made available to the public in the EU. Therefore, they are particularly useful for companies to evaluate the performance of the product in the market before deciding whether or not to proceed with registration.
Trademarks and designs, therefore, meet different needs and are granted on the basis of different requirements. Thus, if the registration of a three-dimensional trademark is refused, this does not mean that the shape of the product cannot be protected as a design right. In contrast to trademark applications, the competent authority does not automatically check whether the design is new or has individual character when a design application is filed, but only at the request of a third party. This means that a design right offers faster protection, but also more legal uncertainty if a competitor takes action against the design.
In the case of Guerlain’s lipstick, the shape of the product had already been protected as a Community design right since 2008 which helped to prevent competitors to mimic the unique design. In the trademark proceedings ten years later, the application was initially rejected, but in the end the lipstick case was deemed distinctive by the General Court of the European Union and approved as a trademark.
This shows that the clever use of design and trademark protection can help to protect the investments made by a company to create products with an innovative appearance. Since both forms of protection are cumulative (one does not exclude the other), both IP rights should always be considered for products with a particularly innovative or distinctive shape which could prove to be valuable assets for the owner.

Mag. Valeria Miozzo

LIPSTICK IN THE SHAPE OF A BABY CARRIAGE OR BOAT HULL CAN BE PROTECTED AS A 3D TRADEMARK


If a lipstick's design departs significantly from others, its three-dimensional shape can also be protected as a trademark. The General Court of the European Union decided in July 2021 that trademark protection is possible for the shape of the lipstick of the French cosmetics company Guerlain.

A basic prerequisite for trademark protection is that the mark has distinctive character. This is the central function of a trademark and means that the goods or services of one company can be distinguished from those of other companies by means of the trademark, thus enabling the customers to associate the goods or services to undertakings. Guerlain's lipsticks have a special elongated, conical and cylindrical shape:

Since this shape distinguishes Guerlain's lipsticks from competitors' lipsticks, the company applied to the European Union Intellectual Property Office (EUIPO) to register the three-dimensional shape as a trademark in 2018.

Initially, the first examiner at the EUIPO refused trademark protection for lack of distinctiveness. The Board of Appeal upheld this decision on the grounds that the mark did not sufficiently depart from the norms and customs of the lipstick sector and thus from other common lipstick shapes.

An appeal by Guerlain against this decision was successful before the General Court of the European Union (General Court). According to the General Court, it is generally not sufficient for trademark protection that the shape was new and characterised by a high-quality design and beauty. However, the shape of this lipstick was capable of generating an objective and unusual visual effect in the perception of the relevant consumers and of associating the product with an undertaking.

The unusual shape, reminiscent of a boat hull or a baby carriage, clearly distinguishes Guerlain's lipstick from other lipsticks, which are usually cylindrical and parallelepiped in shape. Moreover, the presence of the small oval embossed shape at the base of the lipstick is unusual and contributes to the uncommon appearance of the mark applied for. The fact that the lipstick cannot be placed upright also reinforces the uncommon visual aspect of its shape.

In my opinion, the General Court is therefore right to find that the mark applied for has distinctive character because it departs significantly from the norms and customs of the lipstick sector and is different from any other shape available on the market. In practice, companies also invest in developing such uncommon designs to make their products stand out more from competing products. For lipstick buyers, this uncommon shape is certainly memorable and consumers will associate this lipstick with Guerlain. It is precisely this circumstance that fulfils the requirement of distinctiveness for registration as a three-dimensional trademark. Such special product appearances can in some cases also be protected as designs, as you can read in an upcoming article by my colleague Valeria Miozzo.

Dr. Rudolf Pendl

CAN YOU GO TO PRISON FOR A TRADEMARK INFRINGEMENT?

This is not excluded in Austria and has now actually occurred in the Netherlands. There, for the illegal use of car logos on an online shopping platform - the names and logos of well-known car brands were used "without authorisation" for navigation software on "Marktplaats" - a nine-month prison sentence was imposed by the competent district court of Oberyssel.

Usually, in the case of trademark infringement, civil court proceedings are taken. In the case of intentional trademark infringement, however, criminal proceedings can also be initiated. In contrary to the rules in the Netherlands, this is not an offence by official prosecution in Austria, but a so-called offence by private prosecution. This means that in the Netherlands the public prosecutor's office must take action on its own initiative if it becomes aware of a trademark infringement. In Austria, on the other hand, active prosecution by the aggrieved party is required. A court becomes active only upon the request of the trademark owner.

Anyone who infringes a trademark in the course of trade is liable to a fine of up to 360 daily rates. Anyone who commits the offence for profit is liable to a custodial sentence of up to two years. If a trademark infringement is committed within a business, the owner or manager of the business shall be punished if he or she did not prevent the infringement committed by an employee or agent. Employees or agents who in turn have committed the acts by order of their employer or principal are not to be punished if they could not reasonably be expected to refuse to commit the act because of their economic dependence.

Dr. Gerald Mair

NO "ABSOLUTE" TRADEMARK PROTECTION: WELL-KNOWN FIGURATIVE TRADEMARK NOT SUFFICIENT FOR DOMAIN CANCELLATION

Trademarks are often used in domains. The owner of the well-known vodka trademark ABSOLUT wanted, among other claims, to cancel the domain "www.absolutpark.com" of another company - and failed in court.

The Absolut Company Aktiebolag (Absolut Company), known for its ABSOLUT vodka, has protection for the word marks ABSOLUT and ABSOLUT BAR for, among other things, the services "catering and accommodation of guests". In addition, it also has rights to several well-known figurative marks (see below left for an example). The Austrian company Shuttleberg GmbH & Co KG (Shuttleberg) has also protected the figurative mark ABSOLUT PARK (see below right), inter alia, for the services "catering and accommodation of guests", thus for identical services.

Shuttleberg also offered such services under the domain www.absolutpark.com, among others. It additionally used this domain as well as www.shop.absolutpark.com/de/shop and www.absolutschool.at for the distribution of clothing with the following imprints:

From Absolut Company's point of view, this use of its trademark was similar in terms of capitalisation, bold print and font. Therefore, Absolut Company saw an infringement of its trademark rights. In addition to the use depicted, it also took legal action against the use in the domains www.absolutpark.com, www.shop.absolutpark.com/de/shop and www.absolutschool.at.

In principle, a trademark owner can not only defend himself against the use of trademarks on products, but under certain circumstances also against any other use under trademark law. This also includes the use as (part of) a domain, provided that similar goods and services are offered in the course of business on the website operated under the domain. In this case, such use of the domain may be prohibited. However, a general claim for cancellation of the domain has not existed since a reversal of case law in 2007, as a domain can also be used for permissible purposes (such as for dissimilar goods and services).

Absolut Company argued, among other things, that its word trademark ABSOLUT is to be regarded as a "well-known" trademark in the legal sense. "Well-known" trademarks have a protection that extends beyond the goods and services for which they are registered. It is sufficient for the relevant public to associate the well-known trademark with the foreign sign. The owner of such a well-known trademark can prohibit the use of its sign, inter alia, if there is an unfair exploitation of the distinctive character ("exploitation of attention ") among the relevant public (§ 10 para 2 MSchG). According to Absolut Company, this is the case with any use in the domain "www.absolutpark.com", which is why there is an interference with their well-known trademark and Shuttleberg's domain must be cancelled.

It has now been legally established that Absolut Company's trademarks are indeed "well known" in the legal sense among the relevant public "younger people interested in winter sports who drink alcohol at least occasionally" and that the figurative trademark as well as the graphic design of Shuttleberg's ABSOLUT SCHOOL and ABSOLUT SHOP signs interfere with Absolut Company's trademark rights as "exploitation of attention" and that the current use must be discontinued.

With regard to the domains, however, the Supreme Court confirmed the decision of the Higher Regional Court of Vienna, according to which the cancellation of the domains does not have to take place.

The reason given was that an infringement only existed with regard to the figurative trademarks of Absolut Company. According to the court, the use of the term "absolut", namely without typographical and conceptual association with the plaintiff's VODKA trademark, could not be completely prohibited. The injunction ordered also only concerns the graphic design of Shuttleberg's signs, but not the word alone. However, since a domain can only be used without a figurative element, the use in the domain is not affected by the legally binding injunction. Since a claim for cancellation cannot go further than the related claim for injunctive relief, the domain must not be cancelled either.

From our point of view, the court's decision regarding the deletion of the domain is basically correct. Since the reputation was only established among a certain public - and not in general - the sign "ABSOLUT" does not have such protection that simply any use in a unique position can be prohibited. However, it is also clear that the well-known word trademark "ABSOLUT" should at least be sufficient to prohibit not only the above graphic use, but also the use of the word mark for the protected goods and services.

In this context, it should be noted that the plaintiffs argued in their appeal that the wording of the request for an injunction was misunderstood by the previous instance: they claim that not only the use of the graphic design as described above was prohibited, but also the word ABSOLUT with additions such as 'PARK', 'SCHOOL', 'SHOP'. In this case, at least a request for injunctive relief for the specific domains "absolutpark.com", "absolutschool.at", "facebook.com/AbsolutPark" and "facebook.com/absolutschool" could possibly be affirmed after all. The Supreme Court did not follow this line of argument, as the judgement is sufficiently clear in itself.

Nevertheless, when looking at the overall picture, it cannot be ruled out that a linguistic inaccuracy in the ruling of the previous instance actually led to the fact that the injunctive relief to which the Absolut Company might have been entitled was not effectively awarded. This in turn means that in future comparable cases, such a claim for prohibition of the use of a domain could be affirmed, at least to a certain extent. However, even in these cases, deletion of the domain will probably only be possible under exceptional circumstances.

Mag. Selina Novak, Mag. Sebastian Feurstein

COMPULSORY (PATENT) LICENSING FOR VACCINES AND ITS LIMITS

The COVID-19 pandemic is showing how vaccines like from Moderna Biotech or AstraZeneca are unevenly distributed around the world. In this regard, whether and how much the use of compulsory (patent) licensing can improve global distribution of vaccines is discussed.

The use of compulsory licenses is theoretically possible: The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which is administered by the World Trade Organization (WTO) and is binding for its members, was adopted to strengthen the protection of intellectual property rights at the international level. Among other provisions, it states that patent protection shall be made available for any invention in all fields of technology (thus, even for drugs and vaccines, which were previously unpatentable in some countries). At the same time, in case of (inter alia) national emergencies, the TRIPS Agreement provides for certain limitations to patent rights, including compulsory licenses.

With specific reference to health emergencies, under a compulsory license, the government of a country can authorize the production of a generic version of a patented drug by a third company parallel to the production and selling of the original drug, but only for a period of time limited to the duration of the emergency. The patent holder is entitled to receive the payment of an adequate remuneration in exchange. The purpose of compulsory licensing is to increase the quantity of the drug placed on the market and distribute it as a generic version at a lower price than the original one.

In relation to COVID-19, however, there are arguments that compulsory licensing will prove ineffective to improve access to vaccines. Current vaccines are very complex, as they are based on new technologies. It has to be differentiated between a patent (and its protected claims) and the vaccine. These do not have to coincide, hence, the admissibility to use a patent does not necessarily mean that the vaccine connected to the patent can also be produced.

Thus, it is possible that their production process, the ingredients used and the instrumentation required are subject not to patents but instead to trade secrets which are generally protected separately. Furthermore, at present, not all countries would have the manufacturing capacity and know-how to replicate the protected process in order to produce their own generics. Therefore, since compulsory licenses only cover patents and not also other intellectual property rights (like trade secrets and know-how), their impact on increasing access to vaccines globally would be limited.

Furthermore, as compulsory licenses are only granted for the (limited) duration of the state of emergency, the time and financial assets needed to (re-)convert the production facilities to adapt them to the production of the new vaccines may make the whole operation unattractive for companies that would consider to produce the generic version of the drug, as there is a risk of not having the time to recoup the investments made. It also has to be considered that even in the case of such compulsory licences, the vaccine manufacturer must go through its own admission procedure before the competent authorities for the newly generated vaccine and, if necessary, may also need to obtain official permits with regard to the production facilities.

In general, compulsory licenses could therefore be, from a theoretical point of view, a useful tool to allow better access to medicines like COVID vaccines. In practice, however, the use of compulsory licenses has to be assessed on a case-by-case basis, as their effectiveness depends on several variables, including the obtaining of additional intellectual property involved in the development the drug or adequate local manufacturing capacities.

Mag. Valeria Miozzo

NEW COPYRIGHT LAW: EU LAW DIRECTLY APPLICABLE AS OF TODAY

The much-discussed Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market should have been implemented by Austria by today. This did not happen. Nevertheless, as of today we have a new legal situation.

With the so-called "Copyright Directive" (Directive (EU) 2019/790), copyright law is to be adapted in parts to the current state of the art. The Directive entered into force on 6 June 2019 and should be implemented by Austria in a transitional period of two years. The reason for this is that directives (in contrast to European regulations) only provide a framework within which the member states themselves must determine whether they want to implement only the "basic variant" or the directive "more strictly".

In the case of the Copyright Directive, implementation should have taken place by 7 June 2021. In Germany, for example, the copyright reform was only enacted (on time) on 28 May 2021. In Austria, on the other hand, only the first working group drafts have been published so far. Thus, the deadline of 7 June 2021 for the implementation of the Directive has passed unused.

In this case, according to European case law, from the time when the transposition should have taken place, the Directive is in principle directly applicable, i.e. like an EU regulation, provided that the provision is, inter alia, sufficiently clear and unambiguous. This is probably the case at least for some oft he provisions of the Copyright Directive. As soon as the Austrian legislator adopts a law (or an amendment) to transpose it, this will - as far as it is in conformity with the Union - replace the direct application.

In principle, the Directive does not turn Austrian copyright law upside down and in some points - such as the possibility of recalling rights in the case of non-use by a publisher - corresponds to the Austrian legal situation that has long been in force. What is new, however, are the provisions regarding online platforms, according to which the use of works on these platforms for the purpose of caricatures or parodies is now generally permitted; as well as the information obligations regarding sub-licensees, which must now be granted to the original licensor.

In any case, it remains interesting to see how much use will be made of the Directive's leeway and how strictly (or less strictly) the Austrian legislator will implement the Directive. As soon as a concrete implementation proposal is available in the form of a government bill, we will report back here.

Mag. Sebastian Feurstein

TRADEMARK USE OBLIGATION: OWNERS OF „QUALITY SEALS“ MUST PAY PARTICULAR ATTENTION

Trademarks must be genuinely used so that they do not lose their protection in the long term. Special attention must be taken when using „quality seals“.

The exclusive right of use of the trademark owner granted with a trademark registration should only be guaranteed in the long term as long as the respective sign is actually genuinely used after the expiry of the so-called trademark “grace period for use”. The reason is that the legislator wanted to prevent blocking of a sign and thus unnecessary clogging of the trademark register.

After the expiry of the trademark grace period for use of 5 years, in case of conflict, the trademark owner can be requested to prove the genuine use of the trademark within the past 5 years. In this context, not every use of the trademark is deemed to be genuine use for the purpose of maintaining trademark protection. Trademarks that have, for example, only been used for appearances, are not considered to have been genuinely used. The boundaries of genuine use are fluid and cannot always be easily determined in individual cases.

Particular caution is required in the special case where a sign is intended exclusively for use as a „quality seal“ and shall indeed only be used as such. The use of such signs often merely serves as a guarantee for the compliance of goods or services with a certain quality. Individual trademarks are signs which are capable of distinguishing goods and services of one company from those of other companies. The actual trademark function is therefore the so-called function of distinction. However, if the affixing of a quality seal only guarantees certain characteristic and does not indicate the origin of the goods or services, the sign is not genuinely used in the sense of the Austrian Trademark Protection Act.

In a recent decision, the Austrian Supreme Court has now for the first time held that for an individual trademark in order to be deemed genuinely used as a trademark, it is not sufficient that it is made available to third parties through licence agreements and that these third parties in turn use the trademark as a seal of quality (which is controlled by the trademark owner) in order to indicate the quality of the offered products (Supreme Court of 23 February 2021; 4 Ob 168/20i - GENUSS REGION PUR). The Austrian Supreme Court thus also follows European case law.

However, anyone who wants to protect the development, marketing and existence of a quality label or compliance with the conditions associated with it should not seek protection via the individual trademark, but can, for example, use protection by so-called Certification or Collective trademark. However, this protection option also has certain limits, which we will address in another article.

Andor Sipos

EU: CHANEL LOSES AGAINST HUAWEI - WITH AN UNEXPECTED REASONING

In the trademark practice, the most important question is often whether two signs are confusingly similar. In the case of figurative signs, the Court of Justice of the European Union has now made a surprising statement on the extent to which a trademark can be similar to another trade mark when it is rotated.

Huawei applied for the EU trademark No. 017248642 (below left) for various technical devices in class 9. Chanel saw a similarity to, inter alia, its earlier French trademark No. 1 334 490 (below right), which is also registered for various technical devices in class 9.

Chanel filed an opposition against Huawei's trademark. Regardless of the different industries of the companies, the only thing that counts in opposition proceedings is the goods and services for which a trademark has been registered. As these goods and services are partly identical in this case, only the similarity of the signs had to be examined. In 2019, the European Union Intellectual Property Office (EUIPO) concluded that the two signs were not similar.

The Court of Justice of the European Union has now confirmed this former decision: It argues, among other things, that the different orientations of the two signs create different overall impressions.

From our point of view, this decision must be looked at critically: When examining the similarity of the signs, what matters is whether there is a likelihood of confusion between the two signs in normal use. The goods concerned (technical devices) are of course also turned in practice, for example when the packaging is placed somewhere and, therefore, the trademarks are shown in different orientations. In our opinion, the orientation of the registration would therefore be irrelevant in this case for the question of whether the trademarks are similar. This is also in line with the EUIPO's practice. Generally speaking, regarding most goods, a trademark should have protection for all orientations. Otherwise, for comprehensive trademark protection, a trademark would have to be applied for several times, namely in different orientations.

Chanel can now appeal this decision to the European Court of Justice. In addition, Chanel may also have competition law remedies if Huawei does indeed intend to enter the luxury sector with a confusingly similar sign.

Mag. Sebastian Feurstein

"ORAL VACCINATION” NOT APPROVED AS A WINE NAME: MARKETING GIMMICKS MUST STILL COMPLY WITH THE LAW

The Viennese wine named “Oral Vaccination” (in German: “Schluckimpfung”) was seized by the Federal Wine Inspectorate on the grounds that the name constitutes a “health claim”.

In March 2021, the Viennese organic winery Lenikus launched a white wine called “Oral Vaccination” to “boost morale” and celebrate 2021 as the year of the global vaccination against COVID-19.

At the beginning of April 2021, the Austrian Federal Winery Inspectorate (In German: Bundeskellereiinspektion, BKI) seized the wine “Oral Vaccination”: According to the BKI, the wine name is presumably illegal because it contains a “health claim”.

A “health claim” is any claim that suggests or implies, even indirectly, that there is a relationship between a food (or one of its constituents) and health. European case law (see C-544/10 - Deutsches Weintor) has clarified that the term “health claim” refers not only to claims that may suggest a possible improvement in health as a result the consumption of a food, but also to claims that suggest the absence or reduction of adverse health effects associated with such consumption.

This is particularly important for products with an alcohol content of more than 1.2 percent by volume:  For these beverages, EU Regulation No. 1924/2006 stipulates that health claims are not permitted. The purpose is to avoid health claims that could encourage the consumption of alcoholic beverages and increase the risks associated with the excessive consumption of these products.

The question now is whether the expression “Oral Vaccination” will be considered as a health claim or only as a fancy name that does not imply any (possibly negative) effects on the consumers’ health. In the meantime, the winemaker has already changed the labels of the wine to “Oral VaccinationCENSORED” (In German: “SchluckimpfungZENSURIERT”), another clever marketing gimmick that has already been accepted by the Federal Winery Inspectorate. What is certain is that the winemaker's goal of bringing a smile on people's faces during this time has succeeded, despite the minor disputes with the authorities.

Dr. Rudolf Pendl

DESIGN PROTECTION OF A LEGO BRICK: ASSESSMENT OF VALIDITY MUST BE BASED ON ALL FEATURES OF APPEARANCE OF THE PRODUCT

Everybody knows LEGO. However, most do not know that LEGO has been fighting for their intellectual property protection for many years now. Recently, the Danish toy production company achieved a surprising victory at EU level before the General Court.

In 2019, the protectability of the following building block was refused by the EUIPO Board of Appeal:

The Third Board of Appeal of EUIPO declared the invalidity of the design of a specific LEGO brick on the ground that all features of appearance of the product (e.g. the rectangular shape of the brick or the cylindrical shape of the studs) were solely dictated by the technical function of the product (i.e., the capability of being assembled with and disassembled from the rest of the bricks of the set). This circumstance is sufficient ground for refusal of protection under EU design law.

However, the General Court annulled the decision: According to the Court, the Board of Appeal made several mistakes. Among others, they did not consider all features of appearance of the product. They did not take into account the smooth surface on either side of the brick which might not be aimed at the technical function and could instead represent a creative aspect. The Court emphasized that if at least one of the features of appearance of the product is not solely dictated by the technical function, the design cannot be declared invalid.

This is a (temporary) victory for LEGO. An appeal (based on legal grounds only) can still be brought before the Court of Justice of the European Union. We will have to see whether the brick shown above will be considered as creative enough by the Courts for LEGO to maintain the intellectual property protection for one of their building blocks.

Mag. Valeria Miozzo

NEW EU DECISION: THE POSSIBILITY OF PROTECTING SLOGANS AS TRADEMARKS HAS BEEN REAFFIRMED

Not only individual words can be protected as trademarks. Slogans, too, can be registered as trademarks if they are distinctive. In practice, however, this is not always easy. A new decision by the European Court shows what matters.

The applicant wanted to register the trademark "IT'S LIKE MILK BUT MADE FOR HUMANS" for dairy products. The European Patent Office refused the registration: Consumers would understand this slogan only as an indication of the good quality of dairy products. Therefore, the slogan would not be registrable as a trademark.

Signs that are not recognizable by consumers as an indication of the origin of a company and, therefore, not as a trademark are excluded from registration. In other words, the trademark may not be suitable for distinguishing the goods and services of one company from the goods and services of another company. The European Court now granted the registration: The slogan is unusual and triggers a thought process in the consumer, especially since it is commonly assumed that standard milk is (also) made for humans. Using the word "but" makes the slogan memorable and, thus, suitable as a distinctive sign.

The decision shows and confirms that creative word phrases or word plays can be suitable as a trademark, even if they seem very simple at first glance.

Dr. Gerald Mair

DER STANDARD: Trademark protection granted without proof of acquired distinctiveness

One might think that a newspaper as well-known as DER STANDARD would be sufficiently protected in Austria even without a registered trademark. In fact, the DER STANDARD trademark was only applied for in 2018 and now registered more than 2 years later.

The reason for the long duration of the proceedings: from the point of view of the Austrian Patent Office as well as the Vienna Higher Regional Court (Oberlandesgericht Wien), the sign "DER STANDARD" is devoid of distinctive character and thus only registrable if its acquired distinctiveness (Verkehrsgeltung) among the Austrian population (potential consumers) is proven. The applicant would have had to provide this proof, which would have led to additional costs in addition to other legal disadvantages.

The Supreme Court has now agreed with the applicant's view: For the relevant goods and services in the media sector, there are – for example in contrast to the technical sector - no universally valid quality criteria. Thus, there is also no uniform "standard" that a media company could meet. The sign "DER STANDARD" is therefore suitable and registrable as a trademark for the relevant goods and services in the media sector. It is not necessary to prove that the mark is well known. But why has such a well-known trademark as DER STANDARD only been registered now?

One can only speculate about the exact reasons. However, it is noticeable that in addition to the classic newspaper business, some services in the digital field were also registered. With the help of the trademark application, secure and publicly effective protection could also be created for these newer business areas.

Mag. Sebastian Feurstein

Germany’s chocolate war comes to an end - Ritter Sport retains the exclusive right to produce its iconic square chocolate bars.

On 23th July 2020 the German Federal Court of Justice (Bundesgerichtshof) put an end to the long legal battle between chocolate manufacturers Ritter and Milka stating that the iconic square packaging of the Ritter Sport chocolate remains protected as a three-dimensional shape trademark.

Ritter chocolate bars have been marketed in their square shape since 1932, when Clara Ritter decided to produce a chocolate bar that could fit in everyone's jacket pocket. Respectively in 1996 and 2001 Ritter obtained the registration of two three-dimensional shape trademarks for the square packaging of the chocolate bars "Ritter Sport" and "Ritter Sport Mini". According to Milka, however, the square shape represents one of the basic shapes of chocolate bars and, as such, should not be monopolised.

Although Milka's requests for cancellation of the two trademarks were upheld by the Federal Patent Court (Bundespatentgericht) in 2016, the decisions were subsequently overturned and finally confirmed by recent decisions of the Federal Court of Justice (I ZB 42/19 and I ZB 43/19), which rejected Milka's requests as unfounded.

The Federal Court of Justice had been called upon to decide whether the signs should be excluded from registration under Article 3(2)(3) of the German Trademark Law on the ground that the sign consists exclusively of a shape that gives the goods a substantial value.

The typical function of the trademark is to indicate to the consumer which undertaking markets a certain good or service and, therefore, indicates the origin of the products and distincts them from other producers. In the case of shape trademarks, however, the consumer might be induced to purchase the product because of its aesthetic features rather than because of its distinctive function. The rule aims to avoid the registration of those signs for which the aesthetic features of the product are such as to exert an exclusive influence on the consumer's choice, since in that case the trademark would lose its distinctive function. The legislator’s purpose is, therefore, to encourage companies to protect these signs through other industrial property tools which are better suited to protect the external appearance of a product, such as design rights.

In the case at issue, the Federal Court of Justice argued that no evidence was provided to support the conclusion that the square packaging gives substantial value to the chocolate bars. In fact, it has not been proved that the packaging met the criteria on which this assessment is generally based, such as a particular artistic value or a significant price difference compared to similar products.

In the light of the above, the Court confirmed that the three-dimensional sign represented by Ritter's square packaging is capable of indicating the origin of the chocolate and may, therefore, remain registered as a three-dimensional trademark.

Mag. Sebastian Feurstein