Wired situation: How a trademark litigation affects the fashion world

After long back and forth, the luxury label Off-White wins the rights to a – now famous – cable tie label. How did it come about and what arguments made the difference? A summary of the case:

A luxury fashion label has been fighting for three years to get the trademark registration of a label that is actually – according to this same label – supposed to be removed before the garments are worn. Specifically, it is about a red cable tie that is attached to the popular sneakers. Off-White designs these in collaboration with Nike. But: “Sneakerheads” did not think much of the recommendation to remove the cable tie before wearing them; they continued to wear the shoes including the cable tie.

Normal label or unmistakable brand representation?

Against this background, Off-White wanted to register the accessory as a trademark. After all, it was an unmistakable brand feature that had to be protected against counterfeiting. For years, however, the U.S. Patent and Trademark Office (USPTO) did not agree with this assessment: The cable ties were a decorative product component that had the functionality of a label, but not a distinctive design element that served to identify the brand.

Off-White disagreed: the cable tie is no different from normal logos that identify the manufacturer of a fashion item. It creates a clear link with the trade mark and thus fulfils the requirements for the distinctiveness of a product. According to Off-White, only with a registration is it possible to effectively protect oneself against plagiarism, which often exists in the luxury fashion sector.

“Brand” as a purchasing argument in the luxury sector

According to Off-White, it must also be kept in mind that a clear brand presentation can and is a weighty purchasing argument, especially in the luxury segment. As is well known, the concept of a brand product as a status symbol does not only apply in the fashion world. The fact that the sneakers, including cable ties, are also frequently worn by celebrities and fashion influencers should also contribute to the fact that the path from red cable ties to Off-White is short. These arguments are said to have finally led Off-White to success and thus to trademark registration.

We continue to watch the trademark situation in the luxury fashion world with interest; Off-White alone is involved in a few more matters with the USPTO and not alone in this. The attempt to register the slogan “For Walking” (including inverted commas) initially failed. It remains to be seen whether Off-White will make further attempts to obtain a trademark registration.

One thing is certain, however: it is a major legal effort for an accessory that should actually be removed before it is worn.

CQI report (FCJ) – Informal discussions between ETSI members

The Federal Court of Justice (judgement of 18 January 2022 – Ref. X ZR 14/20 – CQI Report) had to decide the question whether proposed solutions discussed in informal discussions between ETSI members have been made available to the public and are thus prior art according to Art. 54 (2) EPC.

1. FACTS

One day before the priority date of the patent in suit, a meeting of a ETSI working group was held in Kansas City. After the meeting was over, four participants from different companies still had substantive discussions. In the process, the participants discussed an approach to a solution. One of the participants of the meeting developed this solution as a standardization proposal (NK33 in the invalidity proceedings) the following night and sent it to the standardization committee the next day (priority date of the patent in suit).

2. JUDGEMENT

The Federal Court of Justice has ruled that proposals exchanged merely in informal discussions between ETSI members are not prior art under Art. 54 (2) EPC.

In accordance with the previous case law of the Senate, a written document is public if it is intended for processing in public and has become accessible to a circle of persons which is not limited per se and not only to individual persons (FCJ, decision of 9 February 1993 – X ZB 7/92, GRUR 1993, 466 – Fotovoltaisches Halbleiterbauelement). For this to be the case, a non-specified group of persons must have been able to take cognizance of the content of the document prior to the priority date. Accordingly, these principles also apply to oral statements.

In the case of statements made in the context of a meeting of an ETSI working group, a distinction must therefore be made between formal meetings and informal discussions outside these. In contrast to informal discussions between individual participants, the course of the meetings is regulated by an ETSI guideline. According to this guideline, a meeting chair leads the meeting and points out the competition rules to the members. In accordance with the decision of the Federal Court of Justice, documents introduced by a participant in a formal meeting are not to be regarded as confidential on the basis of the ETSI guidelines. Something else only applies if the documents are marked as confidential.

In contrast, according to the decision of the Federal Court of Justice, statements made to a limited number of participants outside of formal meetings are generally not available to the public. Accordingly, a participant in the meeting is likely to assume that statements made outside formal meetings will be treated as confidential by the other participants in the discussion. This also applies if the statements are made to employees of competitors. It is to be assumed that the other participants in the discussion will at most discuss the proposed solution with colleagues in the company.

3. PRACTICAL ADVICE

As a rule, plaintiffs in invalidity proceedings already have the problem of proving the content of conversations. According to this decision, the content of informal discussions, with exceptions, is not likely to be public and thus not prior art according to Art. 54(2) EPC, so that questions of proof will not even be relevant.

This decision is in line with previous Federal Court of Justice case law (GRUR 2013, 367 – Messelektronik für Coriolisdurchflussmesser; GRUR 1993, 466 – Fotovoltaisches Halbleiterbauelement). In the present case, however, one may question whether approaches to a solution, which are discussed in informal discussions but without a corresponding confidentiality agreement between different members of ETSI, are treated as confidential by all participants in the discussion. The decision reflects the rather generous attitude of the Federal Patent Court that conversations or documents were often to be considered confidential.

However, the European Patent Office follows a different standard in this question. The Boards of Appeal regularly assume the confidentiality of a conversation only if there is a confidentiality agreement or special circumstances (T 1085/92; T 1081/01).

Whether discussions between representatives of ETSI members are considered confidential by the participants leaves room for discussion. In any case, informal discussions are likely to promote technical progress, because it is precisely in these discussions that entirely new approaches can be discussed without directly discussing elaborated proposals in a large group. Apparently, the Federal Court of Justice does not want to take away the ground from these informal discussions. Participants in such discussions should nevertheless be careful about what ideas they disclose outside of public meetings if they have not already filed a patent application for the idea.

Carsten Plaga

ECJ referral question of the Munich District Court I on preliminary injunction proceedings – Will the standard for preliminary injunctions in patent law now change?

In a reference for a preliminary ruling pursuant to Art. 267 TFEU, the Regional Court of Munich I (Landgericht München I), in a decision of 19 January 2021, had referred the question to the ECJ as to whether preliminary injunctions in patent law may always require that proceedings on the validity of the patent have been concluded. The ECJ has now ruled that this is incompatible with EU law. As a result, the validity of the patent in suit will probably also have to be discussed more intensively in injunction proceedings. It could also now become questionable whether a decision in validity proceedings would create new urgency. In detail:

1. BACKGROUND

The Regional Court of Munich I had referred the following question to the ECJ: “Is it compatible with Union law for higher regional courts to generally refuse to issue interim measures for the infringement of patents if the patent in dispute has not yet gone through opposition or nullity proceedings in the first instance and has been confirmed therein?”. The background to this question for reference was the reaction to the changed case law of the Munich Higher Regional Court on the requirement of a secured validity of patents in preliminary injunction proceedings. When issuing a preliminary injunction in a patent infringement case, it is generally necessary that, in addition to the actual injunction claim (injunction patent infringement), there is also a reason for the injunction, which then includes not only urgency, but also the substantiation of a sufficiently secured validity of the injunction patent. According to the previous decision practice of the Higher Regional Courts, it is not sufficient for the issuance of a preliminary injunction in patent infringement proceedings that the asserted patent was granted by the granting authority after detailed examination. Beyond this circumstance, the Higher Regional Courts, particularly in Düsseldorf and Munich, generally additionally require that the patent granted has been examined for patentability a second time in opposition or nullity proceedings in the first instance before issuing a preliminary injunction due to its infringement. However, there are numerous exceptions to this principle. For example, according to case law, it may be sufficient in individual cases if a patent is recognized by well-known competitors (e.g. by taking licenses), or if the defendant only submits unsuitable prior art. However, neither the referring chamber of the Regional Court dealt with these and other exceptions, nor did the ECJ address them. The decision is therefore solely focused on the case where none of the numerous groups of exceptions are present and no other arguments are available.

2. GROUNDS OF DECISION

Specifically, the ECJ deals with the question whether Art. 9 (1) of Directive 2004 / 48 (“Enforcement Directive”) is to be interpreted as precluding a national case law according to which the grant of provisional measures for the infringement of patents is in principle refused if the patent in suit has not survived at least first instance opposition or nullity proceedings. The ECJ first states that according to Art. 9(1)(a) of Directive 2004 / 48, Member States should ensure that the competent courts have the possibility to order a provisional measure against the alleged infringer at the request of the applicant in order to prevent an imminent infringement of an intellectual property right. (1) a) of Directive 2004 / 48, Member States should ensure that the competent courts have the possibility to order a provisional measure against the alleged infringer at the request of the applicant in order to prevent an imminent infringement of an intellectual property right. According to Art. 9 (1) a) in conjunction with recitals 17 and 22 of the Directive, the Member States would have to provide in their national law the possibility for the competent national courts to order a provisional measure after an examination of the particular circumstances of the individual case and in compliance with the conditions provided for in Art. 9. Furthermore, according to Art. 9 (1) a) of the Directive in question in conjunction with Recital 22, the provisional measures provided for in national law should enable the immediate cessation of the infringement of an intellectual property right without having to wait for a decision on the merits. Those measures are justified in particular where any delay would demonstrably cause irreparable harm to the holder of such a right. Thus, the time factor is of particular importance for the effective enforcement of intellectual property rights.

The above case-law and decision-making practice would, however, establish a requirement that would deprive Article 9 (1) a) of Directive 2004/48 of any practical effectiveness, since national law would be precluded from ordering, in accordance with that provision, an interim measure to put an immediate end to the infringement of the patent in suit, which it considers to be valid and infringed. Such a requirement could also result in potentially infringing competitors of the proprietor of the patent at issue deliberately refraining from attacking its validity in order to prevent the patent from benefiting from effective judicial protection, with the result that the mechanism of interim relief provided for in Article 9 (1) of Directive 2004 / 48 was deprived of its substance. Furthermore, the objectives pursued by Directive 2004 / 48 would confirm that a national jurisdiction of this kind would not be in conformity with it. This is also argumentatively supported by the tenth recital of the Directive, which would indicate that it is intended to approximate the laws of the Member States in order to ensure a high, equivalent and homogeneous level of protection of intellectual property in the internal market. A domestic procedure designed to bring to an immediate end any infringement of an existing intellectual property right would be ineffective and thus fail to achieve the objective of a high level of protection of intellectual property if its application were subject to a requirement such as that described in the question referred for a preliminary ruling.

Furthermore, the ECJ states that patents carry a presumption of validity from the time of publication. Thus, they would also enjoy protection fully encompassing Directive 2004 / 48 as of that date. With regard to the risk that the defendant would suffer damage in the proceedings for interim relief by the granting of provisional measures, it must be noted that according to Art. 3 (2) of Directive 2004 / 48, the measures, procedures and remedies necessary for the enforcement of intellectual property rights must be applied in such a way as to avoid the creation of barriers to legitimate trade and thus provide a guarantee against their abuse. Consequently, the Union legislature has already provided legal instruments which make it possible to reduce dangers of this kind altogether and to protect the defendant accordingly. It is further argued that the principle of interpreting national law in conformity with the Union would be subject to certain limits. Thus, there would be an obligation on the national judge to refer to Union law when interpreting and applying the relevant provisions of domestic law. In the present case, the German legislation at issue would not contain any provisions according to which the issuance of an interim measure to prohibit a patent infringement would require a court decision in a state of the law proceeding, so that these provisions would be entirely in line with the directive in question.

3. CONCLUSION

The ECJ has ruled on the isolated question of referral: Successfully surviving validity proceeding is thus no longer required as a rule. What are the implications for practice? It can be assumed that the burden of proof regarding the validity of patents will shift back to Defendant, the actual or alleged infringer. Defendant would therefore be advised to prepare himself even more than before with appropriate prior art searches in order to be able to present a strong legal attack at the latest in the case of an application for a preliminary injunction.

According to previous case law, a decision on the validity of a patent has often opened a new urgency, since without this decision a request for a preliminary injunction usually did not have a high chance of success. Whether this possibility of a new urgency still exists is likely to depend on the individual case on the possible attacks against the patent. Particularly in the case of an already ongoing legal action, there may still be a lot to be said for waiting for its outcome.

It is regrettable, however, that the very extensive and balanced case law of the German courts, which precisely allows a deviation from the principle of the necessity of a decision on the validity of a patent, was not considered and not included in the decision.

Christopher Weber

Hüveyda Asenger

Protection of trade secrets in patent litigation (Sec. 145a Patent Act) – practice in Dusseldorf

With the introduction of Section 145a Patent Act (August 18, 2021), the legislator has created a possibility to protect trade secrets in patent litigation by applying the Trade Secrets Protection Act accordingly.

In the meantime, first decisions have been issued on the basis of Section 145a Patent Act. However, numerous substantive and procedural questions are still open. For example, the 4b. Chamber of the Regional Court Dusseldorf, for example, has issued general instructions in one case on how to proceed in practice, at least at the Düsseldorf patent litigation chambers.

1. MOTION

These general instructions leave it to the applicant to decide whether the request for protection of trade secrets is made with the relevant pleading or in advance. However, if the motion for protection of trade secrets is filed with the pleading, the motion should be specially marked so that the court does not inadvertently serve it on the opposing party. In addition, a redacted and a marked version of the pleading should be filed.

What is interesting about the general references is that the specific information to be covered by the order have to be included in the motion. Accordingly, a reference to passages in the pleading or exhibits would not be sufficient. This would have the advantage that the order would thus also apply to future pleadings without having to file a new motion. This point should make the procedure much more practicable, partly if the motion for protection is filed at the beginning of the patent litigation. However, this also entails that both parties have to discipline themselves in subsequent pleadings to identify the information covered by the order and additionally file a redacted version.

2. REASONABLE STEPS TO KEEP THE TRADE SECRET

In most cases, the main focus in justifying the motion is likely to substantiate the reasonable steps to keep the trade secret under Sec. 2 of the Trade Secrets Act secret. This applies to the information for which the applicant seeks protection. How high the requirements for the reasonable steps are, depends on the individual case. It has already been shown that courts pay particular attention to this point.

In advance, the question naturally arises as to whether the information is secret according to Sec. 2 no. 1 a) Trade Secret Act. On the applicant’s side, it has therefore also be ensured that the information is not disclosed with the motion for protection of trade secrets, i.e. that the motion or the pleading is only sent to the court and not to the opposing party in an unredacted form. If the opposing party receives the information before the court has decided on the order, the requirements under Sec. 2 no. 1 a) Trade Secret Act may no longer be met.

3. PROCEDURE

In accordance with the reference in Sec. 145a Patent Act, the course of proceedings is governed by Sec. 20 Trade Secret Act. This is reflected in the general instructions of the 4b. Chamber of the Regional Court Dusseldorf. As a result, this means that irrespective of the success of the motion, the opposing party will receive the information which, from the applicant’s point of view, needs to be kept secret. The applicant can only counter this by filing the application for protection of secrets in advance. However, the applicant is then faced with the dilemma that, according to the general instructions, on the one hand he should name the information specifically in the motion, but on the other hand he does not want to disclose the information through the motion. In such cases, it will then depend on how concretely the information has to be included in the motion. The Practice will show this. First of all, however, this leads to an undesirable uncertainty for the applicant.

4. OPEN QUESTIONS

The general information provided by the 4b. Chamber still leave unanswered the question of whether an order for the protection of trade secrets is also conceivable, for example, in execution proceedings. This is disputed in the literature. Financial information and rendering of accounts regularly contain sensitive information that constitutes a trade secret. The question therefore has a high practical relevance. The Regional Court Mannheim recently affirmed the applicability of Sec. 145a Patent Act to execution proceedings. At least some of the literature takes the opposite view, so the question remains exciting.

Carsten Plaga

HEITEC versus HEITECH – Kather Augenstein for HEITECH Promotion GmbH successful at the European Court of Justice in Luxembourg

The European Court of Justice in Luxembourg (ECJ) rules on the forfeiture of trademark claims

In the trademark dispute between the plaintiff, HEITEC AG, on the one hand, and the two defendants, HEITECH Promotion GmbH and its managing director RW, on the other hand, the ECJ has now given its judgment on 19 May 2022. The Federal Court of Justice had stayed the proceedings and referred legal questions to the court concerning the forfeiture of claims under trade mark law with a view to interpreting them in conformity with EU law.

1. Facts of the case

Specifically, the plaintiff is defending itself against the defendant’s use of the corporate mark “HEITEC”. The defendant has been using the company sign “HEITECH” since 2004 at the latest. On 6 February 2009, it filed an application for its EU trade mark, which was registered on 20 November 2008. Although the plaintiff had been aware of the application for this trade mark since 7 July 2008, it did not issue a warning to the defendant until April 2009 and filed an action with the Nuremberg-Fürth Regional Court on 31 December 2012. However, this was not served until 23 May 2014, i.e. more than five years after the defendant HEITECH Promotion GmbH had been warned, inter alia due to the plaintiff’s delay in paying the court costs.

2. Legal background

The primary issue is the legal question of the forfeiture of the trademark claims asserted by HEITEC.

After the Nuremberg-Fürth Regional Court and the Nuremberg Higher Regional Court held that the claims asserted in the action had been forfeited, the Federal Court of Justice saw the need to stay the proceedings and to submit the respective legal questions to the ECJ for a preliminary ruling.

Specifically, the question was whether the warning by the owner of the earlier trade mark, i.e. HEITEC, already prevents forfeiture or whether the involvement of an authority or court action is required for this.

In addition, the Federal Court of Justice (FCJ) wanted to know from the ECJ whether, for the calculation of the five-year acquiescence period within the meaning of the relevant European directives, the filing of the appeal with the court or the receipt of the appeal by the opponent of the claim is decisive in the case of a judicial remedy. Finally, the question was whether forfeiture also covers subsequent claims under trade mark law, such as claims for damages, information and destruction, in addition to claims for injunctive relief.

Pursuant to Section 21 MarkenG, claims for injunctive relief under trade mark law are generally excluded if the proprietor of a trade mark or business designation has tolerated the use of that trade mark for a period of five consecutive years with knowledge of that use. This provision is based on Article 9(1) and (2) of the EU Trade Mark Directive (EU) 2015/2436.

3. Decision and reasons for the decision

According to the ECJ, the relevant provisions of European law – Article 9 of Directive 2008/97 and Articles 54, 110, 111 of Regulation No 207/2009 – must be interpreted as meaning that “an act, such as a warning notice, by which the proprietor of an earlier trade mark or other earlier right opposes the use of a later trade mark without, however, taking the steps necessary to bring about a legally binding solution, does not put an end to acquiescence.” Accordingly, a warning notice does not terminate the forfeiture period.

Put simply: a warning notice is thus not sufficient to allege an infringement of trade mark rights; rather, what is required is legal or official action.

With regard to the question whether the filing or the service of the action is decisive for the time of forfeiture, the ECJ agreed with our argumentation and ruled that – even if the filing is in principle decisive – the plaintiff must not be negligent, but must push the proceedings so far that the action is also served. Thus, in view of legal certainty, it was not to the plaintiff’s credit if he initiated proceedings but then – possibly even intentionally – left them in a state of suspense. Nevertheless, according to the ECJ, it should matter whether the plaintiff had done everything within the five-year period to effect service. In the present case, HEITEC AG had indeed filed a statement of claim in due time on 31 December 2012. However, the court repeatedly approached HEITEC AG’s representative to point out deficiencies that prevented the service of various statements of claim. For example, HEITEC AG did not pay the advance on court costs until approximately one year later.

Finally, according to the ECJ’s judgment, forfeiture also extended to all ancillary or consequential claims, such as possible claims for damages, information or the destruction of goods.

4. Significance of the Judgment

The ECJ’s case law above all concretises the scope of use of corresponding business signs and standardises limits for the assertion of claims under trade mark law by the owners of earlier rights. Against the background of the legal clarity thus created, this judgement is therefore very welcome.

In essence, the decision corresponds to the decisions preliminary instances. In particular, it is gratifying that the ECJ has now clarified that a warning notice cannot interrupt the forfeiture period and that forfeiture also covers claims for damages. The European Court of Justice rules on forfeiture of trademark claims

brand eins Ranking – Kather Augenstein again among the best business law firms in Germany 2022

In its recent issue “Was kommt?” (What’s next?), the business magazine brand eins awards Kather Augenstein as top business law firm 2022 and recommends the Düsseldorf IP boutique in the patent law category again with the highest possible number of four stars.

The ranking of the best commercial law firms is based on an independent analysis and survey among attorneys-at-law and in-house lawyers over 24 fields of law. A total of 2600 lawyers participated in the survey, and 411 firms made it onto this year’s list.

The complete result of the best in the industry was published in the current brand eins /thema (issue 23).

Click here for the interactive German map and the list of the best.

Congratulations to our Managing Partner Miriam Kiefer LL.M., for being recognised for the third year in a row as a leading IP lawyer in Managing IP’s international “Top 250 Women in IP” directory in the IP Stars 2022 ranking.

The list honours experienced female IP lawyers and IP litigators who have provided exceptional services to their clients and companies in the past year.

This year’s reference list includes more than 30 areas of law worldwide, for more information and access to the full ranking, click here.

RC Mannheim – Kather Augenstein successfully fights for protection of sensitive data also in enforcement proceedings

In a recently published decision of 13 October 2021 (ref. 2 O 73/20), the Regional Court Mannheim ruled on security measures under Sec. 145a Patent Act in conjunction with Sec. 16 et seq. Trade Secrets Protection Act in enforcement proceedings. Kather Augenstein thus succeeded for the first time in protecting sensitive client data from third parties, which would otherwise be freely accessible. This is particularly significant because information about patent-infringing products often discloses information about the profit calculation and thus the “silverware” of a company. The decision thus allows for the first time to restrict access to and exploitation of sensitive data within the patentee’s organisation.

The Regional Court Mannheim considers Sec. 145a Patent Act to be applicable to enforcement proceedings. The board justified this by stating that Sec. 145a Patent Act was decisive for determining the scope of application of Sec. 16 to 20 Trade Secrets Protection Act in patent litigation. It was therefore irrelevant that the provisions of Sec. 16 to 20 Trade Secrets Protection Act, in their original scope of application, applied only to main proceedings. The term patent litigation was to be understood broadly and would include enforcement proceedings, which, moreover, were not excluded from the scope of application in Sec. 145a Patent Act. Moreover, a possible restriction could not be inferred from the relevant explanatory memorandum to Sec. 145a Patent Act.

In contrast, it is prominently argued in the literature that Sec. 145a Patent Act does not apply to enforcement proceedings (Kühnen, Handbook of patent infringement, 14th ed. 2022, chap. D, marginal no. 117). 117). Decisions from Düsseldorf as to whether Sec. 145a Patent Act applies to enforcement proceedings are currently not known. In the lecture event “Düsseldorfer Richtergespräche”, the speakers did not comment on this. It therefore remains exciting whether Düsseldorf will follow the line from Mannheim.

In addition, the question may arise in the future as to in which cases courts will order additional measures pursuant to Sec. 19 (1) Trade Secrets Protection Act. In the present decision, the Regional Court Mannheim ordered additional measures within the framework of the required consideration. In doing so, the court referred in particular to the fact that the financial information and rendering of accounts were only for a specific purpose and therefore a restriction to the group of persons did not represent a disadvantage for the plaintiff. Only the future will show whether other courts will also take into account the purpose of the financial information and rendering of accounts. It will also be interesting to see how the interests of the parties will be weighed in the main proceedings in the future. However, the parties can avoid these questions from the outset, for example by agreeing on the restriction of persons out of court.

Carsten Plaga

“Metal on metal”, judgement on judgement: The copyright dispute between Kraftwerk and Moses Pelham

22 years, 10 judgements, all instances: Of all things, a two-second excerpt of the song “Metall auf Metall” of the band Kraftwerk triggered a long-running legal dispute that continues to this day and has significantly changed copyright law in Germany. What is it exactly about?

In the beginning, there is a so-called sample of the song “Metall auf Metall” by the band Kraftwerk. The hip-hop producer Moses Pelham took a two-second excerpt of the song, the so-called sample, and incorporated it into his song “Nur mir” (Only Me), but without the band’s consent. Kraftwerk did not like this at all – and sued Pelham for injunctive relief and damages for infringement of record producer and copyright.

Going through the instances

The view that this was indeed an infringement of rights, i.e. that only Kraftwerk was allowed to distribute these two seconds of music, was endorsed by the Hamburg Regional Court and Higher Regional Court in 2004, 2006 and 2008, and finally by the Federal Court of Justice. Sampling, the term used in technical parlance for the re-use of sound tracks from existing pieces of music, was thus completely illegal according to the courts.

However: in its 2008 judgement, the Federal Subreme Court also addressed §24 German Copyright Act (UrhG) a.F.: Free Use. This regulation described that artists may use copyrighted works without asking the author for consent. However, only by way of suggestion and if the new work is sufficiently different from the old one.

The legal dispute between Pelham and Kraftwerk would later bring this regulation down. However, the Federal Court of Justice and the Higher Regional Court of Hamburg first established that Pelham could also have replayed the sequence – so that the sampling would not have been needed at all and § 24 UrhG a.F. could not apply in the present case

The tide turns for Pelham and “Nur mir” (Only me)

Pelham did not put up with the Federal Supreme Court decision either and went before the Federal Constitutional Court. There, he was proven right: The Federal Supreme Court had interpreted §24 German Copyright Act (UrhG) a.F. too narrowly, and Pelham’s artistic freedom had been unjustifiably interfered with. In addition, provisions of European Union law had to be taken into account. This is where the matter becomes more complicated: the European Court of Justice (ECJ) then informed the court, when asked, that free use according to § 24 German Copyright Act (UrhG) a.F. was not compatible with the InfoSoc Directive, which entered into force on 22 December 2002. Rather, in the case of distribution by Pelham after that date, there was an infringement of rights. Was this actually the case during the period in question? The Hamburg Higher Regional Court examined the question and answered in the affirmative.

An end in sight?

Actually, the proceedings could have ended here – Pelham would not have infringed Kraftwerk’s rights before 22 December 2002, but after that date they did. But: in its decision this year, the Hamburg Higher Regional Court allowed an appeal: since 7 June 2021, a so-called pastiche barrier has been in force in Germany with § 51a German Copyright Act. The still unclear definition of pastiche refers to the imitation of one work in another, but in an artistic or even supportive or appreciative manner. This opens up a new time period, which must also be taken into account, for which a possible infringement of rights – which the Hamburg Higher Regional Court does not currently see – could exist.

However, since the interpretation of the pastiche term under Union law in particular is not yet clear, the Higher Regional Court has allowed an appeal – the members of the band around founding member Ralf Hütter only accepted it on 13 May.

It remains exciting in a case that has always raised very fundamental questions about the relationship between artistic freedom and copyright protection and promises to continue to do so.

Patent Law Modernisation Act: Miriam Kiefer LL.M. lectures via online seminar at JETRO

The Japan External Trade Organization(JETRO) invited our Managing Partner Miriam Kiefer LL.M. to report on the latest developments of the Second Patent Law Modernization Law.

On 14 June 2022, Miriam Kiefer gave the participants an overview of the reform of the patent law in Germany in her 90-minute lecture. The subsequent discussion on the development of case law at the instance courts reflected the importance of the reform for businesses.

On the background:

Years have passed since the last major reform of industrial property protection by the Act on the Simplification and Modernisation of Patent Law of 31 July 2009. In order to ensure Germany’s outstanding position as a location for the protection of intellectual property in the field of industrial property rights also in the future in European and international comparison, it was necessary to review whether the current legal regulations still meet the requirements that effective and balanced protection of industrial property rights requires.

The result of the review of the regulations in this field of law was adopted by the German Parliament (Bundestag) in the form of the Federal Government’s draft lawon the simplification and modernisation of patent law (as amended by the Legal Affairs Committee) on 10 June 2021 (video), confirmed in the second Federal Council (Bundesrat) examination on 25 June 2021 and on 10 August 2021 in the Federal Law Gazette published.

The law reform focuses on three areas: First, the new law stipulates that in exceptional cases, injunctive relief for patent infringement may be limited for reasons of proportionality. Thus, Section 139 para. 1 sentence 3 Patent Act (PatG) now stipulates that the infringement of a patent does not necessarily entitle the infringed party to injunctive relief, but that this relief may be limited in exceptional cases by considerations of proportionality. In the case of a limitation of the right to injunctive relief, the infringed party shall be entitled to appropriate monetary compensation.

Secondly, the new Sec. 83 para. 1 sentence 2 Patent Act, according to which the Federal Patent Court shall give notice within six months from service of process, is intended to accelerate the nullity proceedings. This is intended to better synchronise nullity proceedings with infringement proceedings before the civil courts.

Thirdly, the new reference in Sec. 145a Patent Act to the provisions on the protection of trade secrets (GeschGehG) in patent litigation is an important step to ensure the protection of trade secrets also in patent infringement proceedings.

Miriam Kiefer LL.M. and Dr Christof Augenstein will be presenting further seminars with JETRO in the second half of the year, this time on the subject of UPC.

In the past, Dr. Christof Augenstein has already given a lecture in Tokyo on the subject of patent infringement proceedings at the invitation of JETRO. Patent infringement proceedings in Germany held.

JETRO (Japan External Trade Organisation), was established in 1958 by the Japanese Ministry of International Trade and Industry (MITI) to support and promote Japanese export efforts. In the 21st century, JETRO’s focus has shifted to promoting foreign direct investment in Japan and helping small to medium-sized Japanese companies maximise their global export potential.

JETRO has 76 overseas offices in 55 countries worldwide and 48 offices in Japan, including headquarters in Tokyo and Osaka. In Germany, JETRO is represented with three offices in Berlin, Düsseldorf and Munich.

On June 14, 2022, Miriam Kiefer gave the participants an overview of the reform of the patent law in Germany in her 90-minute presentation. The subsequent discussion on the development of case law at the courts of instance reflected the importance of the reform for companies.

Background:

Years have passed since the last major reform of industrial property protection by the Act on the Simplification and Modernization of Patent Law of July 31, 2009. In order to ensure Germany’s outstanding position as a location for the protection of intellectual property in the field of industrial property rights in the future as well in European and international comparison, it was necessary to review whether the current legal regulations still meet the requirements that effective and balanced protection of industrial property rights demands.

The result of the review of the regulations in this area of law was published in the Federal Government’s bill on the VSimplification and modernization of patent law (as amended by the Committee on Legal Affairs) on June 10, 2021 passed by the Bundestag (video), confirmed on June 25, 2021, in the second Federal Council review, and on August 10, 2021, in the Federal Law Gazette published.

The reform of the law focuses on three areas: First, the new law firmly establishes that in exceptional cases, injunctive relief for patent infringement may be limited for reasons of proportionality. Thus, § 139 para. 1 sentence 3 PatG now that the infringement of a patent does not necessarily entitle the infringed party to injunctive relief, but that this relief is subject to a proportionality test. In the event that the right to injunctive relief is limited, the injured party shall be entitled to appropriate monetary compensation.

Secondly, the new Section 83 para. 1 sentence 2 PatG, according to which the notice of the Federal Patent Court shall be given within 6 months from service of the action, serve to accelerate the nullity proceedings. This is intended to better synchronize nullity proceedings with infringement proceedings before the civil courts.

Third, the new reference in Sec. 145a Patent Act to the provisions on the protection of trade secrets (GeschGehG) in patent litigation is an important step to ensure the protection of trade secrets also in patent infringement proceedings.

Miriam Kiefer LL.M. and Dr. Christof Augenstein will conduct further seminars with JETRO in the second half of the year, this time on the subject of UPC.

In the past, Dr. Christof Augenstein has already given a lecture in Tokyo on the subject of patent infringement proceedings at the invitation of JETRO. Patent infringement proceedings in Germany held.

JETRO (Japan External Trade Organization), was established in 1958 by the Japanese Ministry of International Trade and Industry(MITI) to support and promote Japanese export efforts. In the 21st century, JETRO’s focus has shifted to promoting foreign direct investment in Japan and helping small to medium-sized Japanese companies maximize their global export potential.

JETRO has 76 overseas offices in 55 countries worldwide and 48 offices in Japan, including headquarters in Tokyo and Osaka. In Germany, JETRO is represented by three branches in Berlin, Düsseldorf and Munich.