Adidas and its stripes

Adidas is known for its trademark lawsuits. The German sports giant is always on its guard when it comes to the designs of its competitors. In January, another exciting judgement was made on the famous three stripes.

The facts of the case date back to 2007. At that time, Adidas complained about Thom Browne’s three-stripe design. The latter showed understanding and changed to the four-stripe design. A few years later, it was clear that this was not enough for the German sportswear manufacturer. However, the dissatisfaction only came to a head when Thom Browne began to achieve great success and establish itself in the sportswear business. In June 2021, Adidas sued Thom Browne, seeking to prohibit him from using stripes and to obtain a payment of more than $7.8 million. The judgement was handed down in January 2023.

Adidas’ complaint: Thom Browne’s design was too similar to the brand’s own three-stripe design and therefore constituted an infringement of its own trademark rights. In fact, Tom Browne usually uses four stripes in his creations that enclose an item of clothing. The stripes border socks, for example. The designer demonstratively wore such socks to the court hearing. According to Adidas, Thom Browne uses the four stripes to draw attention to the sportswear he designs. In this way, he exploited Adidas’s fame. This has led to cooperations with athletes, such as Lionel Messi. Lionel Messi had previously been an Adidas ambassador. Thom Browne defended himself with the argument that stripes are a common design element for clothing. He also served the luxury goods market, so there was no direct competition between the two companies.

The jury concluded that Adidas could not prove that Thom Browne had infringed the sports giant’s trademark. The reason given for this was the different number of stripes – four stripes instead of three, which ruled out a likelihood of confusion.

This result was not to be foreseen. The case law, which has often dealt with the three stripes, decides depending on the individual case. In 2016, the European Court of Justice (ECJ) affirmed a likelihood of confusion in the case of a trade mark that used two stripes instead of three. However, in 2019, with the same opposing party, the ECJ ruled that the three stripes was rightly cancelled from the register as an EU trade mark. It may be surprising at first that the judgments are different in what at first sight appear to be the same case. According to the court, the small but subtle difference lay in the arrangement of the stripes, i.e. the design decision.

The first case concerned three diagonal stripes on trainers. Here, the court recognised a likelihood of confusion for consumers, because Adidas used diagonal stripes typical of the brand, especially on trainers, an iconic recognition value. The second case involved three vertical black stripes on a white background. According to the court, consumers do not necessarily associate this with Adidas. It was simply a decorative element that was not associated with any brand. According to the court, Adidas could not prove the opposite.

Adidas shows great disappointed after the current ruling and indicates that it will not hesitate to take legal action. The company is very concerned about defending its own intellectual property. Past decisions have shown the finer points that can matter.

Heitec vs. Heitech Kather Augenstein succeeds with landmark decision in trade mark law before the Federal Court of Justice (BGH)

In the trademark infringement proceedings between HEITEC AG and HEITECH Promotion GmbH, the European Court of Justice has confirmed our legal views in its judgement of 19 May 2022.

The Federal Court of Justice has now also ruled in favor of our client, Heitech Promotion GmbH, in the specific case, so that the action brought by Heitec AG has been dismissed with final effect.

Trade mark owners must therefore follow up on infringements within five years at the latest, otherwise their claims are forfeited, including secondary claims such as damages or recall. In particular, out-of-court measures do not extend this time limit if the trade mark owner does not go to court within a reasonable period of time. Detailed information on the facts of the case and the reasons for the decision can be read again here and in our blog post.Both decisions are expected to shape case law in the coming years on the issue of forfeiture in trade mark law, as decisions of the highest courts, in particular involving the ECJ, are extremely rare.

“We are pleased that the Federal Supreme Court has now also followed our view and that we were able to bring this legal case to a successful close after almost nine years,” said Dr Christof Augenstein. “It shows that Kather Augenstein is also a first address for complex trade mark disputes.”

An Amazon for pharmaceuticals is not lawfully

In its judgement (decision of 8.12.2022 – 13 O 17/22 KfH), the Regional Court of Karlsruhe ruled that the provision of an online platform for pharmacies is not permitted, if the marketplace operator charges pharmacies a basic fee or a transaction fee. The court granted the pharmacy association, acting as plaintiff, the right to prohibit the operation of such an online marketplace.

Online marketplaces are convenient. And thus also very popular. Hardly anyone can claim never to have bought a product via Amazon or E-Bay. Therefore, the idea – to provide online marketplaces offering health products and services as well – seems quite obvious. Especially in view of the gradual introduction of the e-prescription in Germany, which has already been initiated on 1 September 2022, providing an online marketplace for pharmacies sounds more like a necessity than an innovation.

However, this should not be done on any terms, according to the Karlsruhe Regional Court. In the present case, the plaintiff intended to charge a monthly basic fee for use of its platform as well as 10 % of the net sales price for products that were not purchased on a prescription. The Chamber of Pharmacies had issued a warning to the plaintiff and demanded that it cease and desist from this construct.

The Karlsruhe Regional Court gave the Chamber of Pharmacies the right to demand that the marketplace operator cease and desist. The decision is based on §§ 8, 3a UWG in conjunction with § 11 para. § 11 para 1a ApoG. The judges ruled that the marketplace operator acted unfairly because it brokered prescriptions to pharmacies and accepted or was promised an advantage in return.

According to the judges, the decisive factor is that the online marketplace operator can display the products and services in a self-selected order to a buyer who enters a search term. Through this, the marketplace operator would “broker prescriptions”. For this service, the marketplace operators contractually insured the payment of the basic fee, which violates Section 11 (1a) ApoG.

The court’s decision was supported by the protective purpose of the provision. In this context, the judges referred to the legal justification of Section 11 (1a) ApoG and explained that the primary purpose was to protect the “general interest in ensuring a proper supply of pharmaceuticals to the public”. 1a ApoG und erläutern, dass es primär darum ginge, das „Allgemeininteresse an der Sicherstellung einer ordnungsgemäßen Versorgung der Bevölkerung mit Arzneimitteln“ zu schützen. For this purpose, a network of pharmacies close to the place of residence is necessary. This network could also be endangered if the established pharmacies were under pressure to offer the products for sale in an online marketplace. This could potentially threaten local sales.

On the other hand, paying 10% of the net purchase price of the products to the marketplace operator violates § 8 ApoG. In the second sentence of the provision, it is stated, among other things, that rental agreements based on turnover or profit sharing are not permitted. This is exactly what the court saw in the 10% agreement. According to the court, a classical rental agreement is not necessary to violate the provision. Rather, it was sufficient that the contract concluded resembled a tenancy agreement. In the contract between the pharmacies and the online marketplace operator, the judges saw a contract with elements of a rental agreement, because a digital sales space was made available. And for this, money had to be paid, which is prohibited by the norm.

MIP Ranking: Dr Benjamin Pesch is awarded “Rising Star 2021” by leading specialist guide Managing Intellectual Property

We are pleased to announce that Dr Benjamin Pesch has been recognized as a “Rising Star 2021” in Gerrmany in the recently published edition of Managing IP.

This publicationfeatures the best up-and-coming IP practitioners in the field of patent litigation who have contributed to the success of their firms and their clients. We congratulate Benjamin on this award!

Managing Intellectual Property has already named the following Kather Augenstein IP practioners asIP Stars 2021 in Germanythis year.

HIgher Regional Court (OLG) Düsseldorf: Patent infringing offering by naming a reference object and other concerns

OLG Düsseldorf, judgement of 15.07.2021 – 15 U 42/20 In its decision, the 15th Senate had to solve several problems at once. The defendant contested not only patent-infringing conduct, but also the capacity to sue due to the formal invalidity of the declaration of assignment and invoked the disproportionality of the recall claim.

I. Facts

The patent in suit concerns a so-called workshop and repair pit in the form of a single- or multi-part cassette. The special feature of the protected pit is two water collecting channels which extend along the upper boundary of the longitudinal side walls and are covered by grates. The collection channels catch water running off the vehicle and dispose of it. The grates ensure trafficability.

The plaintiff has been the pantent holder of the patent-in-suit since 2017. By written agreement, the original holder granted the plaintiff a non-exclusive license free of charge and assigned to it all past and future claims for damages and disclosure. The defendant designs, calculates and sells workshop pits under the name P. The pits can be configured modularly and can be delivered and assembled by the defendant.

A project was advertised for the installation of a workshop pit at a motorway maintenance. The corresponding invitation for tenders provided for “drainage channels on the left and right” for the pit to be constructed, as well as the inclusion of drivable gratings. After submitting a bid, the defendant was awarded the contract. The construction plans prepared thereafter were marked with the defendant’s logo.

The pit that was eventually installed at the motorway maintenance indisputably realizes all the features of the main claim, so it also has water collection channels and grates. The defendant advertised the pit installed there on its website by stating that they supplied the “complete technical workshop equipment, inter alia a “P. According to the advertisement the pit consisted of a steel Finished Work Pit with Roll Cover, Drainage Channels and Waste Oil Disposal”.

There was therefore a consensus that the defendant had supplied a pit. What remained in dispute was whether the defendant also supplied and installed the water collection channels and walkway grates.

II. Higher Regional Court fully confirms the decision of the Regional

Like the Regional Court, the Higher Regional Court affirmed the capacity to sue with reference to the fundamental freedom of form of the declaration of assignment. The transfer of annex claims as a material transfer agreement is possible without any form even if the causal transaction underlying the assignment required form.

The Higher Regional Court judged two actions to be patent infringing. Firstly, it considered advertising with a patent-infringing reference object to be an offer within the meaning of § 9 Patent Law (Patentgesetz). The defendant thus gave the impression that it could supply such a pit. The decisive factor was that the public could infer the non-advertised features from other objective aspects. The decisive factor was that the public could infer the non-advertised features from other objective aspects. That is why the free accessibility of this information was irrelevant. Secondly, the submission of the offer, since it was made in response to the invitation for tenders, also constituted an offer within the meaning of the Patent Law as it prepared and promoted the conclusion of a contract for a pit with precisely these patent-infringing properties.

Without taking evidence, the Higher Regional Court came to the conclusion that the defendant also supplied the water collection channels and the grates and thus put a patent-infringing pit on the market. It did not consider the facts presented by the plaintiff to be in need of proof, as the defendant had not countered the plaintiff’s submission with sufficient substantiation. The plaintiff’s extensive and conclusive submission (inter alia, entering into the contractual obligation to supply in accordance with the invitation for tenders; construction plan with defendant’s logo; billing with pit type designation in accordance with the invitation for tenders) was countered by a blanket assertion that the defendant’s managing director had pointed out that the defendant could not or would not deliver a pit with channels and grates. Particularly in view of the submission of the tender in response to the specific invitation for tenders, this did not convince the court.

The defendant had argued for the first time on appeal that the recall was disproportionate because the disassembly would be very costly and would lead to the complete destruction of the system. It is therefore not to be expected that customers would comply with the recall. However, the defendant did not provide a reason for the alleged destruction. The Higher Regional Court rejected the objection as being out of time and also saw no evidence for the recall being disproportionate. Since a recall claim only required a serious request to the commercial owners and not a successful recall, it was irrelevant that the recall might prove unsuccessful. In addition, the milder remedy of removing the channels and grates was not equally effective, as this would only be a temporary remedy. In accordance with the established Düsseldorf ruling practice, the Higher Regional Court also found a claim against commercial end-users, as destruction was not obvious and resale could therefore not be ruled out.

III. No surprise from Düsseldorf

The freedom of form of the declaration of assignment irrespective of the underlying causal transaction is quite the prevailing opinion. It also does not contradict the protective purpose (protection against haste) of § 518 BGB. For this is sufficiently guaranteed at the level of the causal transaction under the law of obligations.

The fact that the Higher Regional Court saw an offer in the advertising of a reference object is consistent with the very broad and purely economic understanding of the offer within the meaning of Sec. 9 (2) No. 1 Patent Law. In contrast to § 145 of the Civil Code, for § 9 Patent Law it is sufficient for a demand to be created, the satisfaction of which is promised by the offer. By advertising the reference object and submitting the offer in the award procedure, the defendant succeeds in doing exactly that.

It is also not surprising that the Higher Regional Court rejected the objection of disproportionality, which was correctly raised by the defendant in the proceedings. Disproportionality pursuant to is to be interpreted narrowly as a legal exception. Sec.140 (4) Patent Act is to be interpreted narrowly as a legal exception. Disproportionality can only be assumed if the interests of the infringer or justified interests of third parties are outweighed. In the context of the recall claim, however, only extreme exceptional cases are conceivable. Since no success is owed in the context of the recall claim, the (alleged) lack of success cannot play a role for the disproportionality.

by Sophie Prudent

Video: Lecture by Dr Peter Kather and Dr Christof Augenstein at this year’s Autumn Seminar of the German Patent Attorneys Association

This year’s autumn seminar of the BDPA on the topic “Patent infringement in focus – strategic aspects from avoidance to enforcement” took place on 07. and 08. October 2021 in Dusseldorf. The series of events was broadcast via livestream.

We are pleased about the great response and interest in the presentation by Dr Peter Kather and Dr Christof Augenstein on the topic of “German patent infringement litigation – tactics disclosed in dialogue”. As a follow-up, the BDPA now makes the complete video recording available here. [German]

JUVE Patent Ranking 2021: Kather Augenstein again among the top IP boutique firms and leading IP specialists in Germany

Every year, law firms are subjected to comprehensive evaluations in rankings. We are very pleased that our boutique law firm was again able to defend its ranking of previous years in the current edition of the high-quality JUVE Patent Ranking 2021. We are still awarded four stars, the second highest rating, and listed in the third highest group of patent attorneys.

Furthermore, we are again represented in the category Leading Consultants/Leading Individuals. In addition to our senior partner Dr Peter Kather, this year, our partner Christopher Weber is additionally highlighted as a leading advisor among litigators in patent law in Germany.

Special thanks go to our peers and clients, who gave special commendations to no less than four of our partners and IP specialists, recognising Dr. Peter Kather as “experienced and outstanding”, Miriam Kiefer as “very client-oriented”, Christopher Weber as “technically adept, internationally positioned and highly focused”. Clients also underlined the working method of our name giver Dr Christof Augensteinas “terrific, how fast he is in the case”.

“The special honor of our firm is never the result of a single person, but rather of our entire team. The current JUVE Patent Ranking 2021 is based on feedback from our clients and peers, we see this as an incentive for future success and thank the experts for their recommendations”, says Dr Christof Augenstein.

Update: Austria is close to Ratification of the Protocol on Provisional Application of the Agreement on a Unified Patent Court

In its report of 11 November, the Parliamentary Committee on Research, Innovation and Digitisation of the Republic of Austria has unanimously decided to recommend to ratification of the Provisional Application of UPC Agreement (PAP-Protocol) to the plenary (see attached report). The PAP-Protocol is now listed at position 12 on the agenda of the 19 November 2021 session of the Austrian Parliament,. so it is very likely that the Parliament will adopt the PAP end of this week.

The establishment of the Unitary Patent (“patent with unitary effect”) and associated Unified Patent Court will ensure that patentees can enforce and defend their patents before a single court – the Unified Patent Court. Austria was the first member state to agree to the multilateral Agreement on a Unified Patent Court (UPC) (deposit of the instrument of ratification on 6.8.2013).

In order for the Unified Patent Court to be operational from the very beginning, extensive preparations have to be made. This requires a provisional applicability of parts of the UPC in a preliminary phase before entry into force.

For this purpose, the Preparatory Committee of the Unified Patent Court has submitted the Protocol on Provisional Application (PAP). The present Protocol is now to become applicable to Austria by means of the present legal act.

The provisional implementation during a “run-up” period allows to make extensive preparations so that the Unified Patent Court can already start its work on the first day of entry into force. This would be a further step on the way to the Unified Patent Court, which is then expected to start its work at the end of 2022/beginning of 2023.

We already posted a detailed report on the decisions in Germany in our blog in July this year. We offer the entire analysis for download in English.

On the current status of the UPC, our partner Christof Augenstein interviewed the Chairman of the Preparatory Committee, Alexander Ramsay, during the AIPPI Online Congress on 12 October, 2021. In its latest issue 11,The Global IP Matrix had pre-published a summary by Dr Augenstein on the current status of the UPC to set the scene for Panel 31.

Federal Court of Justice: quick release skewer – Campagnolo’s legacy

The Federal Court of Justice had to decide whether the patent in suit was novel and inventive compared to quick release skewer known from the prior art due to the special design of a part (the lever) (Federal Court of Justice, judgement of 15.06.2021 (Ref. X ZR 61/19) – Laufradschnellspanner).

1. THE PATENT IN SUIT

The patent in suit relates to a quick release skewer for bicycles. This quick release skewer is characterized in that the lever is arranged to be movable in the axial direction. As a result, the lever is movable against the pretension of a pretension spring from an engaged position to a rotated position. In the engaged position, the rotary lever transmits a clamping force. In the rotational position, on the other hand, the angular setting of the lever can be adjusted independently of the tension state of the quick release skewer.

The patent in suit is thus distinct from the cited prior art. Known were quick release systems in which the clamping force was applied by turning over an eccentric. However, the disadvantage of this system was that the clamping length first had to be adjusted with the clamping nut. Since the clamping force could only be checked by turning over the eccentric, it normally took several attempts until the user had found and set the suitable clamping length Abs. und ).[0003]and [0004] (cf. para. [0011]). In addition, the eccentric had to be loosened in order to change the position of the lever (cf. para. [0011]). [0011]).

The patent in suit has therefore set itself the task of providing a quick release skewer for bicycles which is easier to operate (cf. para. [0005]). Abs. [0005]). The advantage of the invention is that, on the one hand, the quick release skewer can be easily operated in that the clamping force of the quick release skewer is determined by the clamping piece and thus the lever, without the need to set a pretension. Secondly, the angular position of the lever can be freely selected, independently of the tension (cf. para. [0010]). [0010]).

2. PRIOR ART

The plaintiff countered the novelty of the patent in suit with several publications (K4, K5, K5a and K9). These have in common that they show clamping devices with a lever, but not a use for fastening a wheel to a bicycle, although the clamping devices would in principle be suitable for this. Moreover, the functional principle shown in the prior art has been known for several decades.

The documents K6 and K8 were discussed as the closest prior art for assessing the inventive step. In both cases, quick release skewers are disclosed which also do not have an eccentric but are tensioned via the lever without having to set a pretension beforehand. The K6 differs from the K8 in that the latter has a lever which is removable. This has the advantage that the wheels are better protected against theft. The K8’s lever, on the other hand, was fixed, with the disadvantage that it could have an unfavourable end position. The K6 and K8 thus do not disclose the clamping lever in question.

However, the design of the clamping lever according to the patent in suit had already been known for decades, in particular for machine tools. In combination, the known quick release skewer and the clamping levers known from other fields disclose all the features of the patent in suit.

3. DECISION FEDERAL COURT OF JUSTICE

The Federal Court of Justice decided in agreement with the Federal Patent Court that the patent in suit is novel and inventive compared to the claimed combinations.

The patent in suit is novel because the claims do not directly and unambiguously disclose a use of the clamping devices for wheels of bicycles. Moreover, the patent in suit was inventive over the closest prior art (K6 and k8). Against the background that, on the one hand, the functional principle of the clamping lever in other fields and, on the other hand, the device of the quick release skewer had already been known for decades, there was a need for an additional suggestion for the skilled person to use the clamping lever in connection with quick release skewer.

In its reasoning, the Federal Court of Justice further stated that there was already no reason for the skilled person to further develop the K6 in the direction of the patent in suit, because the lever was removable in the K6, so that the problems to be solved did not exist. On the basis of the K8, the skilled person also had no incentive to use the clamping lever as a solution.

4. SUBSUMPTION

The decision is convincing both in its result and in its reasoning. It is in line with the previous case law on inventive step.

The special feature in the present case was that the functional principle had been known for several decades, but had not been used in the devices, which had also been known for several decades.

The Federal Court of Justice correctly decided that the fact that the known functional principle was not transferred to the devices according to the patent in suit meant that the skilled person needed an additional suggestion from the prior art in order to use the known functional principle in the known device. The reasoning is in line with the case law of the Federal Court of Justice that it must be determined according to the individual case to what extent and with what concretion the skilled person needs suggestions in the prior art in order to further develop a known solution in a certain way(Federal Court of Justice GRUR 2014, 647, para. 25 – Farbversorgungssystem;Federal Court of JusticeGRUR 2017, 498 – gestricktes Schuhoberteil).

This does not mean, however, that due to the long standstill in the prior art the invention cannot have been obvious. Rather, the standstill in the prior art merely means that the factual proximity to the teaching according to the invention alone is not sufficient to negate the inventive step, but that the skilled person needed an additional suggestion to the teaching according to the invention. This already follows from the principle that the age of a citation is only one of several criteria (Federal Court of Justice GRUR 2017, 498, para. 29 – Gestricktes Schuhoberteil).

5) PRACTICAL ADVICE

This decision shows once again that it is advisable for an invalidity plaintiff to provide as much information as possible on the suggestion of further development of a technology. A standstill in the prior art should regularly lead to the fact that a further inducement for the skilled person was required and the mere proximity between the closest prior art and the patent in suit should not be sufficient in such cases. In individual cases, it may also be helpful to explain a possible standstill in the prior art with other (non-technical) motivations, provided there were reasons for this.

Carsten Plaga

#GemEinsameSpitze: As a member of the Big Band of Clara Schumann Music School Christof Augenstein wins the 10th German Orchestra Competition 2021

The jury also awarded the Big Band a special prize for the outstanding interpretation of contemporary Beethoven interpretations. Due to the pandemic, the 10th German Orchestra Competition (DOW) took place this year under the slogan “#VirtuellVirtuos”, for the most part digitally throughout Germany.

During a period of five months, a total of 55 orchestras in 15 categories and with an impressive size of around 3000 musicians took part in the competition supported by the German Music Council. All formations from the 15 categories – including chamber, symphony, accordion and wind orchestras, youth orchestras, wind and guitar ensembles, plucked string orchestras and big bands – had to qualify for the start at the state level beforehand.

What usually takes place by live performance for the jury work, this year had to be elaborately accompanied by mobile filming teams. From June to the end of October, video recordings were made on site at the orchestras. Finally, in december, a jury made the assessments for all categories. The results were announced on december 15, 2021 via Livestram on Youtube.

In addition, special prizes were awarded for the outstanding interpretation of a contemporary Beethoven composition. For the compulsory work, composition commissions with a reference to Beethoven’s music were awarded in each category.

We are very pleased that our partner Christof Augenstein, as a member of the Big Band of the Clara-Schumann Music School Düsseldorf and under the direction of Romano Schubert, not only won Bundesorchesterwettbewerb für Big Bands selbst gewonnen, sondern auch den Sonderpreis für die hervorragende Interpretation der zeitgenössischen Beethoven-Auftragskomposition „A Birthday Song for Ludwig van“ von Mike Herting, erhalten hat.

Dear Christof, congratulations on this special award!

The complete announcement of the results by Prof. Dieter Kreidler, chairman of the orchestra’s advisory board and member of the jury, is available in the video here (“time code, 20:30”).

A video of the musical interpretation and performance of the winning orchestra in category E, Big Band is available here.

The German Orchestra Competition:
The German Orchestra Competition is the central promotional measure of the German Music Council for orchestral music in Germany and is aimed at amateur orchestras of various instrumentations and ages. The comparison of performances and the encounter of the orchestras give the musicians the opportunity to present their musical skills and their artistic expressiveness. The German Orchestra Competition is organised every four years by the German Music Council. It is financially supported by the Federal Government Commissioner for Culture and the Media.

Making music together is one of the most popular forms of cultural leisure activity and civic engagement. More than four million people make music and sing in their free time in Germany’s orchestras and choirs.