Intellectual Property Rights – professional advice

Intellectual Property Rights covers the legal aspects of trademarks, patents and design rights that enable companies to protect their intellectual creations and gain competitive advantages. This blog post will give you an overview of the basics of these areas of law and show you how to secure and enforce your rights.

Table of Contents

1. What is intellectual property law?
2. Trademark Law: Industrial Property Protection and Enforcement
3. Patent law: protecting inventions
4. Design law: protection for your product design
5. Infringement of intellectual property rights: legal remedies and liability
6. International property rights: trademarks, patents and designs
7. The role of law firms in intellectual property protection
8. Industrial property protection: Current case law and its significance
9. Industrial property protection: What you should pay attention to

What is “Intellectual Property Rights”?

Industrial property protection is a branch of civil law and includes the protection of intellectual property as well as the protection of competition and corporate interests. In the following, industrial legal protection is briefly explained by going into detail about the various protective rights and examples.

Industrial property protection is divided into various areas:

Trademark law (MarkenG)

Trademark law deals with the protection of signs that serve to distinguish the goods or services of one company from those of other companies. Trademarks can be, for example, words, logos or slogans.

Example: Apple’s logo or Nike’s slogan “Just Do It”.

Patent law (PatG)

Patent law protects inventions that are new, inventive and commercially applicable. Patents can be granted for technical inventions, such as machines, processes or chemical agents.

Example: The patent for the MP3 format or the patent for the airbag.

Design law (DesignG)

Design law, also known as design patent law, protects the external appearance of products. This includes shape, color, material or surface structure.

Example: The design of iPhones or the design of a Porsche sports car.

Copyright law (UrhG)

Copyright protects works of literature, science and art, such as books, films, music, photographs or software.

Example: The copyright of a novel or the copyright of a piece of music.

Competition law (UWG)

Competition law regulates fair and equitable competition between companies. It protects companies from unfair business practices such as misleading, deceiving or obstructing competitors.

Examples include the unauthorized use of other people’s brand names in advertising or misleading consumers by quoting false prices.

This list shows the central areas of industrial property protection and illustrates the variety of legal issues related to the protection of intellectual property and competitive interests.

Trademark Law: Intellectual Property Rights and Enforcement

Trademark law is an essential component of intellectual property law and helps companies protect their brand identity and gain competitive advantage. The various aspects of trademark law are explained in more detail below.

Trademark application and examination

Filing a trademark application with the DPMA or EUIPO is the first step in obtaining trademark protection. During the application process, trademark applications are examined for various criteria, such as:

• Distinctiveness (Sec. 8 (2) No. 1 MarkenG): The trademark must be able to distinguish the products or services of one company from those of other companies.
• Freedom from absolute grounds for refusal (Sec. 8 MarkenG): The trademark must not violate applicable law, e.g., by being misleading, contrary to public policy, or using coats of arms and national emblems.
• Freedom from relative grounds for refusal (Sec. 9 MarkenG): The trademark must not be identical or similar to already registered trademarks in order to avoid likelihood of confusion.

Example: The German Federal Patent Court ruled in 26 W (pat) 8/15 that the word mark “Smartbook” is not registrable due to lack of distinctiveness and descriptive character.

Trademark monitoring

Companies should regularly monitor their trademarks in order to detect possible trademark infringements at an early stage. This can be done by hiring trademark monitoring services or by conducting their own searches.

Trademark enforcement and jurisdiction

Trademark owners can take various measures to enforce their trademark rights and take action against infringement. Some important judgments in trademark law are:

• BGH, judgment of 19.10.2017, I ZR 232/16 (Cannabis): The BGH ruled that the word mark “cannabis” for certain food and beverages is not registrable as it is contrary to morality under Section 8 (2) No. 5 MarkenG.
• ECJ, Judgment of June 24, 2021, C-677/19 (robotic mower): The ECJ has ruled that the use of a trademark on a website conducting comparative tests constitutes permissible use within the meaning of Art. 7(1) of the Trademark Directive.

Cancellation proceedings and actions for revocation

In some cases, a trademark owner may be forced to defend its trademark by opposing cancellation proceedings or invalidity actions. This may be necessary if the mark no longer meets the requirements for protection or if it is being used unlawfully. Some examples are:

Dilution of the trademark: if the trademark loses its distinctive character over time, cancellation proceedings may be initiated (Section 49 (1) MarkenG).

Non-use of the trademark: If the trademark owner does not seriously use his trademark within five years after registration, an application for cancellation due to non-use can be filed (Sec. 49 (1), Sec. 53 (1) Trademark Act).

Example: In the “Coca-Cola” case (BGH, decision of Feb. 27, 2020, I ZB 30/19), the Federal Court of Justice ruled that the three-dimensional bottle shape of the Coca-Cola bottle without fluting is not distinctive and must therefore be cancelled as a trademark.

Intellectual Property Rights against unfair competition

In addition to trademark law, protection against unfair competition can be provided by the Unfair Competition Act (UWG). Companies can take action against competitors who engage in misleading or comparative advertising or who take advantage of or damage their reputation (Sections 5, 6, 9 UWG).

Example: In the “Goldbären” case (BGH, judgment of 12.12.2019, I ZR 182/17), the Federal Court of Justice ruled that the use of the name “Goldbären” on the packaging of a chocolate product does not constitute unfair exploitation of the reputation of the well-known HARIBO trademark.

In summary, trademark law is a central component of industrial property protection and offers companies the opportunity to protect their brand identity and gain competitive advantages. By understanding the various aspects of trademark law and the relevant case law, trademark owners can effectively enforce their rights and protect their trademarks from infringement.

Working with an experienced law firm in this context can be crucial to successfully managing legal disputes and optimally aligning one’s trademark strategy.

Patent law: protecting inventions

Patent law is another important component of industrial property protection and enables companies to protect their inventions and innovations from imitation. The various aspects of patent law are discussed in more detail below.

Intellectual Property Rights: filing and granting patents

To obtain patent protection for an invention, a patent application must be filed with the German Patent and Trademark Office (DPMA) or the European Patent Office (EPO). The grant of a patent requires that the invention is new, inventive and susceptible of industrial application (Sec. 1 Patent Act).

• Novelty (Sec. 3 PatG): The invention must not yet be part of the prior art.
• Inventive step (Sec. 4 Patent Law): The invention must not be obvious to a person skilled in the art from the prior art.
• Industrial applicability (Sec. 5 Patent Law): The invention must be in a technical field and achieve a technical effect.

Example: the Federal Patent Court ruled in decision 14 W (pat) 12/18 that a process for the production of coffee extract is not patentable because it does not involve an inventive step.

Patent enforcement and jurisdiction

Patent owners can take various actions to enforce their patent rights and take action against patent infringement. Some important judgments in patent law are:

• BGH, judgment of July 11, 2017, X ZR 90/16 (pemetrexed): the Federal Court of Justice ruled that a patent protecting a specific salt of an active ingredient also covers the use of similar salts of the active ingredient if they have similar effects.
• BGH, judgment of March 10, 2020, X ZR 4/18 (finished drug approval): The Federal Court of Justice has ruled that the approval of a finished medicinal product does not constitute patent infringement if the competent federal institute granted the approval based on the submission of a bioequivalent reference medicinal product.

Invalidity proceedings and opposition proceedings

A patent may be declared invalid on the basis of nullity proceedings before the Federal Patent Court or opposition proceedings before the European Patent Office if it does not meet the patentability requirements (Sections 21, 22, 81 PatG, Art. 99 EPC).

Example: In decision G 3/19 (Pepper), the Enlarged Board of Appeal of the European Patent Office ruled that plants and animals obtained exclusively by biological processes are excluded from patent protection EPC Art. 53(b)).

Intellectual Property Rights: Patent licensing and technology transfer

Companies can license their patents to allow other companies to use their inventions while generating revenue. The drafting of patent license agreements is an important aspect to protect the interests of the patent owner and to minimize legal risks.

Example: In the case “Sisvel vs. Haier” (BGH, judgment of 05.05.2020, KZR 36/17), the German Federal Supreme Court ruled that standard essential patents (SEPs) must be licensed under certain conditions to prevent discrimination and distortion of competition.

Intellectual Property Rights against unfair competition

In addition to patent law, protection against unfair competition can be provided by the Unfair Competition Act (UWG). Companies can take action against competitors who, for example, disregard their technical property rights or exploit secret trade and business secrets (Sections 3, 4 No. 9, 17 UWG).

Example: In the “Flugtaxi” case (OLG Düsseldorf, judgment of March 12, 2019, I-20 U 46/18), the Higher Regional Court of Düsseldorf ruled that the use of a competitor’s trade secrets to develop an air cab constitutes an unfair act and gives rise to injunctive relief.

Thus, patent law offers companies important opportunities to protect their inventions and innovations and to gain competitive advantages. By knowing the various aspects of patent law and the relevant case law, patent owners can effectively enforce their rights and protect their patents from infringement.

Design law: protection for your product design

Design law, also known as design patent law, is another aspect of intellectual property law and serves to protect aesthetic designs and styling of products. The various facets of design law are discussed in more detail below.

Design application and registration

In order to obtain design protection, a design must be registered with the German Patent and Trademark Office (DPMA) or the European Union Intellectual Property Office (EUIPO). The registration of a design requires that it is new and has individual character (Sec. 2 (1), Sec. 3 DesignG).

• Novelty (Section 3 (1) DesignG): The design must not yet have been published or otherwise disclosed.
• Eigenart (§ 4 DesignG): The design must differ in a distinctive way from already known designs.

Example: In its decision I-20 U 240/10, the OLG Düsseldorf ruled that a car wheel rim design does not enjoy design protection due to a lack of individual character.

Design protection and case law

Design owners can take various measures to enforce their design rights and take action against design infringements. Some important judgments in design law are:

• BGH, judgment of June 21, 2018, I ZR 236/16 (pastry press): The Federal Court of Justice ruled that the use of an identical or similar design for a pastry press product constitutes a design infringement if it leads to an impairment of the normally informed and reasonably attentive user.
• ECJ, Judgment of June 19, 2014, C-345/13 (Karen Millen Fashions): The European Court of Justice has ruled that design law does not provide protection against independent creation and that an identical design created without knowledge of the original design is admissible.

Cancellation proceedings and actions for annulment

A registered design may be declared invalid on the basis of cancellation proceedings before the DPMA or nullity proceedings before the EUIPO if it does not meet the requirements for registration (Sections 32, 33 DesignG, Article 25 Community Design Regulation).

Example: In decision ICD 00014 W (pat) 7/11, the Federal Patent Court ruled that a registered design for bottle packaging must be cancelled due to lack of novelty and individual character.

Design licensing and exploitation

Companies can license their designs to allow other companies to use their designs while generating revenue. Drafting design license agreements is an important aspect of protecting the design owner’s interests and minimizing legal risks.

Example: In Apple v. Samsung (US District Court, Northern District of California, Case No. 11-CV-01846-LHK), the court ruled that Samsung infringed several of Apple’s design patents, resulting in extensive litigation and ultimately a settlement. This example highlights the importance of design licensing and the exploitation of design rights.

Intellectual Property Rights against unfair competition

In addition to design law, protection against unfair competition can be provided by the Unfair Competition Act (UWG). Companies can take action against competitors who, for example, use their designs or aesthetic features in a way that constitutes unfair competition practices (Sections 3, 4 No. 3 UWG).

Example: In the case “Leuchtenkopien” (OLG Düsseldorf, judgment of April 11, 2019, I-20 U 135/18), the Higher Regional Court of Düsseldorf ruled that the production and sale of imitations of design lamps constitutes unfair imitation and gives rise to injunctive relief.

Overall, design law offers companies important opportunities to protect their designs and aesthetic features and to achieve competitive advantages. By knowing the various aspects of design law and the relevant case law, design owners can effectively enforce their rights and protect their designs from infringement.

Infringement of Intellectual Property Rights: legal remedies and liability

Infringement of IP rights such as trademarks, patents and designs can have significant legal and financial consequences for the parties involved. In this section, the various legal remedies and liability aspects of IP infringement are explained in more detail.

1. Injunctive relief

Injunctive relief is a key remedy for infringement of IP rights. The owner of an infringed IP right may request the infringer to cease and desist from the unlawful act (Sec. 14 (5) Trademark Act, Sec. 139 (1) Patent Act, Sec. 38 (1) Design Act).

Example: In the case “Red Bull vs. Bullfighter” (BGH, judgment of December 12, 2013, I ZR 192/12), the Federal Court of Justice ruled that the distribution of the energy drink “Bullfighter” constitutes an infringement of the trademark “Red Bull” and gives rise to a claim for injunctive relief.

2. Claim for damages

The owner of an infringed property right may claim damages from the infringer (Sec. 14 (6) Trademark Act, Sec. 139 (2) Patent Act, Sec. 38 (2) Design Act). Various methods of calculation are available to the owner, such as the surrender of profits, the license analogy or the concrete damage incurred.

Example: In the case “Puma vs. Adidas” (OLG Düsseldorf, judgment of January 21, 2016, I-2 U 12/15), Puma was ordered to pay damages because it had used a similar sole design to Adidas in a certain shoe model.

3. Right to information

The owner of an infringed property right can demand information from the infringer about the origin and the distribution channel of the infringing goods or services (Sec. 19 MarkenG, Sec. 140b PatG, Sec. 39 GeschmMG).

Example: In the case “Rolex vs. imitation watches” (BGH, judgment of 11.10.2017, I ZR 23/16), the Federal Court of Justice ruled that Rolex has a right to information against the supplier of counterfeit Rolex watches.

4. Destruction and recall claim

The owner of an infringed property right may demand the destruction or recall of the infringing goods (Sec. 18 MarkenG, Sec. 140a PatG, Sec. 40 GeschmMG).

Example: In the case “Nike vs. counterfeit sports shoes” (OLG Frankfurt, judgment of 17.09.2015, 6 U 30/15), the seller of counterfeit Nike shoes was obliged to destroy the counterfeit goods and had to recall the affected shoes from the market.

5. Third party liability

In certain cases, the liability of third parties, such as platform operators or logistics service providers, may also be relevant for the infringement of IP rights. For example, in some cases, the IP right holder can claim “Stoererhaftung” (Breach of Duty of Care) if the third party has contributed to the infringement.

Example: In the case “Ortlieb vs. Amazon” (BGH, judgment of July 25, 2019, I ZR 29/18), the Federal Court of Justice ruled that Amazon was liable for the infringement of the trademark rights of the outdoor equipment manufacturer Ortlieb because it had displayed misleading search results.

6. Disclaimer and infringement of property rights in good faith

In some cases, an infringer of IP rights may be exempt from liability on the basis of good faith or on the basis of an exclusion of liability. This may be the case, for example, if the infringer can prove that he or she performed the infringing act in ignorance of the property right.

Example: In the case “XYZ-Software vs. ABC-Software” (fictitious example), ABC-Software was exempted from liability for infringement of a patent because it could prove that it had independently developed the patented technology and used it without knowledge of the patent.

7. Criminal prosecution

In addition to civil law remedies, criminal prosecution of property right infringements may also be considered in certain cases, in particular in the case of intentional or commercial acts (Sec. 143 MarkenG, Sec. 142 PatG, Sec. 51 GeschmMG).

Example: In the case “counterfeit designer handbags” (OLG Munich, judgment of June 28, 2012, 29 U 5593/11), the operators of a store selling counterfeit designer handbags were sentenced to a fine and a suspended prison sentence.

Overall, this section shows that there are a variety of remedies and liability aspects in IP infringement that are important for both IP owners and infringers. Knowledge of these remedies and liability aspects is critical to effectively enforce your rights and avoid or successfully prevail in legal disputes.

Intellectual Property Rights: trademarks, patents and designs

Filing and enforcing IP rights internationally is of great importance, especially for companies that operate across borders. This chapter discusses the various international IP instruments and the challenges and opportunities in filing and enforcing IP rights in an international context.

International Trademark Filing: The Madrid System

The Madrid System, administered by the World Intellectual Property Organization (WIPO), allows companies to apply for trademark protection in multiple member states through a single application (Madrid Trademark Agreement and Protocol to the Madrid Trademark Agreement). This simplifies the application process and reduces the cost of trademark protection in multiple countries.

Example: In 2020, Apple Inc. filed an international trademark application for “Apple” under number 1,524,711, which provides protection in over 120 countries.

International Patent Application: The PCT system

The Patent Cooperation Treaty (PCT) system allows applicants to seek patent protection in multiple member states through a single international patent application. This simplifies the application process and gives applicants more time to pursue national IP rights in each country.

Example: In 2019, the German company Robert Bosch GmbH filed an international patent application under WO 2019/141834 A1 for an “electric drive unit” that can provide protection in multiple countries.

International design application: The Hague System

The Hague System, also administered by WIPO, allows companies to protect designs in multiple member states through a single international design application (Hague Agreement Concerning the International Deposit of Industrial Designs). This simplifies the filing process and reduces the cost of design protection in multiple countries.

Example: In 2020, Swedish furniture manufacturer IKEA filed an international design for a “chair” under number DM/104’139, which may provide protection in several countries.

Challenges in the international enforcement of IP rights

Enforcing IP rights in different countries can be challenging due to different legislations, legal systems and cultural differences. It is important to develop an international IP strategy that is tailored to the specific requirements and conditions in each country.

Ways to strengthen international IP enforcement

To facilitate the enforcement of IP rights in an international context, companies can pursue various strategies, such as:

• Working with experienced lawyers and patent attorneys who have knowledge of the respective national legal systems and experience in international IP enforcement.
• Monitoring IP infringements through regular market surveillance and active cooperation with customs authorities to prevent the import of counterfeit or pirated products.
• To cooperate with international organizations and associations to promote the exchange of information and experience in the field of IPR enforcement and to support joint initiatives to combat IPR infringement.

In summary, international protection of trademarks, patents and designs is an important aspect for companies operating on a global scale. Through the Madrid System, the PCT System and the Hague System, companies can efficiently and cost-effectively register their IP rights in multiple countries. However, challenges remain in the international enforcement of IP rights.

The role of law firms in Intellectual Property Rights

Law firms play a critical role in securing, enforcing and defending trademarks, patents and design rights. They provide comprehensive services and advice in the various fields of intellectual property and help companies overcome legal challenges and gain competitive advantages.

The most important aspects of intellectual property law firms’ activities are detailed below.

Advice on the registration of intellectual property rights

Law firms assist companies in filing trademarks, patents and designs by:

• Conduct a thorough search to identify potential conflicts with existing IP rights.
• Inform the applicant about the chances of success of the application and about the choice of the right type and class of IP rights.
• Prepare and file the necessary documents and applications for filing with the relevant office (German Patent and Trademark Office, European Patent Office, WIPO, etc.).

Representation in infringement proceedings and assertion of property rights

Law firms represent their clients in infringement proceedings in court or in out-of-court negotiations by:

• Analyzing the legal situation and developing a strategy to enforce or defend intellectual property rights.
• Identifying IP rights infringements and gathering evidence to prove infringement.
• Asserting claims for injunctive relief, damages or disclosure and holding infringers accountable.

Advice and representation in arbitration and mediation proceedings.

In many cases, intellectual property disputes can be resolved through alternative dispute resolution processes, such as arbitration or mediation. Law firms can advise and represent clients in such proceedings to avoid costly and lengthy litigation.

Assistance in managing and monitoring intellectual property portfolios

Law firms can help companies efficiently manage and monitor their IP portfolios by:

• Monitoring the validity period and renewal dates of IP rights and taking appropriate action in a timely manner.
• Advising companies on the strategic direction and optimization of their IP portfolios.
• Ensuring compliance with legal requirements and formalities.

Intellectual Property Rights: Current case law and its significance

IP case law is constantly evolving as technologies, business practices, and legal frameworks continue to evolve. Current court rulings are of great importance as they influence the interpretation and application of laws in practice and are thus of interest to companies as well as lawyers and patent attorneys.

Industrial property and trademark law

ECJ, Judgment of June 14, 2017 – C-421/13: The question of the protectability of the shape of the “Rubik’s Cube” as a three-dimensional trademark. The ECJ ruled that the shape of the “Rubik’s Cube” cannot be protected as a trademark because it contains a technical solution reserved for patent law.

Industrial property and patent law

BGH, judgment of February 14, 2017 – X ZR 120/15: The question of patentability of computer-implemented inventions. The BGH found that computer-implemented inventions can in principle be patentable, provided they make a technical contribution to solving a problem.

Industrial property and design law

ECJ, Judgment of 21 June 2018 – C-163/16: The question of whether sneaker designs by Christian Louboutin with red soles can be protected as registered Community designs. The ECJ ruled that the red sole can be protected as a positional mark, as it has a high recognition value and can therefore serve as an indication of origin for Christian Louboutin’s products.

These examples show that current IP case law is diverse and dynamic. Companies active in the field of industrial property protection should therefore continuously keep abreast of current court rulings and, if necessary, adapt their strategies and business practices in order to minimize legal risks.

Intellectual Property Rights: What you should pay attention to

Industrial property protection plays a crucial role for companies that want to secure and maintain their intellectual creations and competitive advantages. The various areas of law – trademark law, patent law and design law – provide comprehensive protection for different aspects of intellectual property and enable companies to defend their valuable assets.

To ensure the best possible protection and effective enforcement of their rights, companies should rely on the cooperation of experienced attorneys and patent attorneys who have expertise in the respective fields of law and knowledge of national and international regulations.

Arthur Wilms | Lawyer | Associate

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