This year’s ECTA ®ETREAT workshop on “TRADE MARKS AND DESIGNS: CASE LAW OF THE EUIPO BOARDS OF APPEAL AND OF GERMAN COURTS” was again successfully moderated and co-organised by Müller Schupfner & Partner. The event took place online in the afternoon of 10 March 2021. Up to 340 participants attended the event with three top-class presentations. This year, it was necessary to forego the usual reception sponsored by Müller Schupfner & Partner in the premises of the German Patent and Trade Mark Office.
The President of ECTA (European Communities Trade Mark Association), Ms. Anette Rasmussen, gave the welcome address. The workshop was again moderated by Ms Marie-Christine Seiler, Junior Partner at Müller Schupfner & Partner and Vice Chair of the ECTA Harmonization Committee.
As one of the three keynote speakers, Mr Lars Meinhardt, Judge at the Munich Higher Regional Court and member of the Trademark and Competition Senate there, again reported on highly topical issues in German trade mark infringement proceedings. On the one hand, the focus was on questions of the burden of proof with regard to exhaustion under trade mark law, in particular in the case of product counterfeiting within a selective distribution system. On the other hand, Mr Meinhardt discussed the requirements for the unregistered use mark on the basis of the (appealed) OLG Munich decision on the protection of the gold tone (Lindt-Hase). Furthermore, he presented the current BGH decision INJECT/ INJEX in more detail, which deals with the question of the significance of descriptive sign elements within trade marks.
Subsequently, Mr Harri Salmi, member of the 2nd and 3rd Boards of Appeal of the EUIPO, presented a comprehensive overview of interesting and recent decisions of the Boards of Appeal issued on different “grounds for invalidity” based on Article 25 (1) of the Community Design Regulation. Cases in which the Boards of Appeal ultimately based their decisions on an identical or divergent overall impression of the designs to be compared, for which, however, in the view of some participants, partly divergent indications and lines of argumentation were used, such as in the case of a contested design of a bread slice or a washing sponge, were particularly interesting for discussion. In addition, Mr Salmi provided clear information on general principles concerning Community designs, such as the relevant informed user and the disclosure of an earlier design and its presentation in evidence.
The third speaker, Mr Christoph Bartos, member of the 3rd and 4th Boards of Appeal of the EUIPO, again gave an informative and interactive presentation on the latest case law of the Boards of Appeal of the EUIPO in EU trade mark law, in particular on trade mark registration and opposition proceedings in the procedural area and with regard to absolute and relative grounds for refusal. Cases in which the Grand Board of the EUIPO dealt with trade mark applications in bad faith or trade marks with only a small scope of protection as well as with the conceptual comparison of trade marks consisting of a single letter should be highlighted. The public was divided on decisions on the registrability of sound marks of different lengths. However, there was mostly unanimous agreement on the decisions presented on the confusability of signs and goods or services of opposing trade marks.
The participants asked the speakers a lot of questions and the organisers were pleased to receive a lot of positive feedback.
Marie-Christine Seiler