Recent Case Law
inGerman Trademark Law

2016characterized by IP®

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CONTENT
Foreword ................................................................................................................................................................................... 2I.

Protectability/cancellation proceedings ......................................................................................................3
1. Proof of secondary meaning by means of demoscopic expert opinions ...............................................3
Federal Court of Justice, order of 21.07.2016 – I ZB 52/15 (Federal Patent
Court) – Sparkassen-Rot ..............................................................................................................................3II.

Infringement proceedings............................................................................................................................5
2. Recall obligation of the manufacturer from distribution channels as an“accessory obligation” in the case of a cease and desist order from a court .......................................5
Federal Court of Justice, order of 29.10.2016, I ZB 34/15 – RESCUE TROPFEN .....................................5
3. Liability for third-party statements in online offers ..................................................................................7
Federal Court of Justice, judgment of 03.03.2016, I ZR 140/14 –Angebotsmanipulation bei Amazon ..........................................................................................................7
4. A shape of goods used as a trademark .....................................................................................................9
Federal Court of Justice, judgment of 21.10.2015, I ZR 23/14 – Bounty .................................................9
5. Composing of an application and forfeiture for company symbols .....................................................11
Federal Court of Justice, judgment of 05.11.2015, I ZR 50/14 – ConText .............................................11
6. Exhaustion in the case of parallel import of pharmaceuticals ..............................................................13
Federal Court of Justice, judgment of 02.12.2015, I ZR 239/14 – Eligard ..............................................13

III.

Licenses .......................................................................................................................................................15
7. Insolvency-proof nature of a trademark licence .....................................................................................15
Federal Court of Justice, judgment of 21.10.2015, I ZR 173/14 – Ecosoil .............................................15

FOREWORDAt EISENFÜHR SPEISER, trademark competence isIn this case law review, the trademarks practice grouppooled across the firm in the trademarks practice group.

has compiled and prepared eight current practice-related

The attorneys-at-law and patent attorneys regularly

decisions from the last couple of months for you.

exchange information regarding new developments incase law and practice. Together, the practice group

The courts dealt in particular with specific types ofdraws on a wealth of experience of over 50 years. And

trademarks such as the abstract colour trademark or theour clients benefit from this.

three-dimensional trademark and its distinctiveness, aswell as the closely related issue of the scope of

The most up-to-date case law is also taken into accountprotection. Furthermore, the courts also had to deal within the Commentary on European Trade Mark Regulation

parallel imports of pharmaceuticals, statements on(Eisenführ/Schennen, UMV, Carl Heymanns Verlag

online sales platforms, conflicting company symbols or2017), published by EISENFÜHR SPEISER in coopera-

the forfeiture of claims due to trademark infringement.

tion with Detlef Schennen, Chairperson of a Board of
Appeal at the European Union Intellectual Property

April 2017

EISENFÜHR SPEISER

Office (EUIPO), now already in its fifth edition.

2

Foreword

I.

PROTECTABILITY/CANCELLATION PROCEEDINGS
1. Proof of secondary meaning by means of demoscopic expert opinions
Federal Court of Justice, court order of 21.07.2016 – I ZB 52/15 (Federal Patent Court) –Sparkassen-Rot
BACKGROUND
If a sign registered as a trademark is lacking the intrinsic

secondary meaning pursuant to Section 8 (3) Trademark

distinctive character, which is one of the prerequisites for

Act are fulfilled. Whether such registration by means ofregistration pursuant to Section 8 (2) No. 1 German Trade-secondary meaning was legal can be reviewed retroactively

mark Act, such a mark can still be approved for registrationin cancellation proceedings.

if it is known as trademark and if the prerequisites of a

DECISION
The starting point of the proceedings was that thethe decision of the DPMA [German Patent and Tradeumbrella organisation Sparkassen-Finanzgruppe (Savings

Mark Office], which, with its decision of 24 April 2012,

Bank Finance Group) obtained a cease and desist order

had dismissed the requests for cancellation filed inagainst the Santander Group regarding the use of theOctober 2009 against the abstract colour trademark “red”

abstract colour “red” for services of a financial institutionof Deutscher Sparkassen- und Giroverband e. V.

in the field of retail banking. Defending this, Santander
filed a request for cancellation of the attacking trademark

The decision of the Federal Court of Justice provided

DE 30211120 “Rot [red] (HKS 13)” of Deutscher

clarification with regards to a number of practice-related

Sparkassen- und Giroverband e. V. [German Savings

issues:Banks Association]:1.

Unlike the courts of lower instances that had stillfound with regard to the proof of secondary meaningthat it is not always necessary for a consumer survey
to result in a degree of association for this trademarkof at least 70%, the Federal Court of Justice, subsequent to a parallel decision regarding the well-known
colour trademark “Langenscheidt yellow”, has foundand confirmed that “no degree of market acceptancesignificantly greater than 50% is required.”This trademark had been registered for services of2.

With regard to the methodology for preparing expert

class 36, namely financial services and various banking

opinions regarding secondary meaning, the Federal

services for private clients, since 11 July 2007 as a markCourt of Justice clarified that demoscopic expert

enforced via secondary meaning on the basis of an expert

opinions must not be taken into account if the initial

opinion regarding secondary meaning.

question was suggestive. In particular, the initialquestion must not already suggest the character of

In proceedings which took more than six years, the Firstthe mark that indicates the origin of said mark.

Senate of the German Federal Court of Justice confirmed

I. Protectability/cancellation proceedings / 1. Proof of secondary meaning

3However, the Federal Court of Justice deemed as per-ciation, which was prepared in 2013, to be sufficient,missible an initial question of the subsequent expert

although the decision was made only some two years

opinion of the German Savings Banks Association thatlater. For longer periods, especially during appeal

asked whether the depicted abstract colour “red” isstages, it may be appropriate to repeat a survey re-

known to the surveyed persons in connection with thegarding secondary meaning in due time.

financial services (account management, transfers,
account statements, savings, loans, building society

4.

The decision was also able to provide clarification

savings) also presented in the form of a list. With theregarding the fact that, in each individual case, it may

initial question, it is to be determined only whether thebe permissible to evaluate the services claimed by thesurveyed person has ever perceived the mark at issue

owner of the trademark by way of a single survey.

in connection with the claimed goods and services.

Since, when assessing the secondary meaning pursu-

Only afterwards can the group of persons knowing theant to Section 8 (3) Trademark Act (MarkenG), themark be asked whether they see this as an indication

degree of market acceptance has to be routinely

for a certain company.

proven for each individual good or service of theregister of goods and services for which the registra-

As a result, on the basis of the aforementioned initialtion of the mark as trademark is desired, it is to bequestion, the expert opinion of the German Savings

expected in this case that an exception could be madeBanks Association was able to identify a degree of

only because there was an intrinsic correlation be-awareness of 54% after all, ultimately justifying thetween the individual financial services. If it is clear that

secondary meaning and thus the registration. The fact

several services of different kinds are typically pro-that a degree of market acceptance of even more thanvided by a single company (here: banking services for

60% could be proven, by means of surveying in theprivate clients) then the relevant public will expect – if

demoscopic expert opinion, was ultimately no longer

it makes use of the most important of these services

relevant.

(here: maintaining a current account) – that the company offers additional services upon request (here:

3.

Another interesting question is at what stage of theissuing debit and credit cards, loans, investments,

proceedings to submit the expert opinions to proveetc.). Given these special conditions, by way of excep-

secondary meaning even at the time of the decision.

tion, a package of services may also be the subject

In this respect, the Federal Court of Justice deemed

matter of a single survey regarding the secondary

the expert opinion of the German Savings Banks Asso-meaning of a mark.

ASSESSMENT
In view of proceedings, it is interesting to see that thethe European Court of Justice, which sees the burden ofFederal Court of Justice has left it open as to whether the

proof as lying exclusively with the trademark owner.

trademark owner or the party requesting the cancellation

Clarification is to be expected in the years to come in thishas the burden of proof regarding the claim that theregard.

trademark registered on the basis of secondary meaning
was registered unjustly. However, since the Federal Court

Furthermore, guidelines have now been prepared withof Justice deemed it sufficient that one of a total of 13

respect to posing questions in public surveys; these are todemoscopic expert opinions of 2013, in part contradicting

be complied with in the future, especially with regard to theeach other, had determined a sufficient degree of market

initial question. Such clarifications regarding the posing of

acceptance, there are indications – notwithstanding thequestions in combination with the confirmation of thesignificant methodological criticism regarding some of thepercentage thresholds for the registration by means ofremaining expert opinions – that the Federal Court ofsecondary meaning have resulted in significant forecasting

Justice has not yet completely adopted the point of view ofreliability. (Förster)4

I. Protectability/cancellation proceedings / 1. Proof of secondary meaning

II.

INFRINGEMENT PROCEEDINGS
2. Recall obligation of the manufacturer from distribution channels as an“accessory obligation” in the case of a cease and desist order from a court
Federal Court of Justice, court order of 29.10.2016, I ZB 34/15 – RESCUE TROPFENBACKGROUND
The Federal Court of Justice had to decide whether it isproduct recall with its customers. The existence of such

sufficient for a party liable to cease and desist to merelya recall obligation had thus far been assessed inrefrain itself from distributing products with a corre-different ways by the upper district courts. Now, thesponding labelling in the future, the distribution of which

Federal Court of Justice, by way of a decision in penalty

products has been forbidden to it by a court, or whether

proceedings, has made a decision regarding the mattersuch a cease and desist order also implies the obligationof dispute, determining that in principle such a recallof the manufacturer to stop all further sales of theobligation does exist, unless the recall is unreasonable inincriminated products in the distribution channels via a

individual cases.

DECISION
The parties disputed the lawfulness of the designation

District Court. The Upper District Court determined a“RESCUE” for the distribution of Bach flowers products.

fine of a total of EUR 45,000; EUR 15,000 for the recall

In using this designation, the plaintiff saw a violationthat was not executed, and EUR 30,000 for theagainst the Health Claims Regulation. In 2013, theadvertising activities with the additional “RESCUE”

Munich Upper District Court banned the manufacturing

designations. The Federal Court of Justice confirmed

company from advertising or distributing the products

the fine determined by Munich Upper District Court and“RESCUE TROPFEN” and “RESCUE NIGHT SPRAY”,

explained in its reasoning that the party liable to cease

which were designated as spirits. The defendantand desist should have prompted the pharmacies tocomplied with the injunction order, however, such

return the goods. Even though the party liable to cease

products continued to be sold in the pharmacies

and desist is generally not responsible for the independ-

supplied by the defendant. In addition, the defendantent actions of third parties, it is required to exert ancontinued to advertise the additional “RESCUE” Bachinfluence on third parties whose actions are economi-

flowers products not cited in the judgment of Munichcally advantageous to it if said party is to seriously

Upper District Court, distributing them under the

anticipate a violation, and if it has legal and actual

designation “RESCUE SPRAY” and “RESCUE NIGHT

options to influence the behaviour of third parties.

TROPFEN”.
The fine due to the use of the designations “RESCUE
Due to the recall that was not executed and the use of

SPRAY” and “RESCUE NIGHT TROPFEN” was rightly

the similar designations, the plaintiff initiated penalty

imposed, although specifically only the words “RESCUE

proceedings pursuant to Section 890 of the German

TROPFEN”

Code of Civil Procedure, which failed before Munichbanned, since what is characteristic for the ban is in theDistrict Court I, but were successful before the Upper

designation “RESCUE.”

and“RESCUENIGHT

SPRAY”

II. Infringement proceedings / 2. Recall obligation of the manufacturer from distribution channels

were

5

ASSESSMENT
With the decision of the Federal Court of Justice it is

the German pharmacies (of which there are approxi-

now clarified that, as a general rule, a party liable tomately 20,000) immediately after delivery of thecease and desist must not limit itself to mere inaction.

decision of the second instance.

Furthermore, it is to be assumed that a recall obligationin principle does not only exist for a cease and desist

The consequences for the consulting practice are quiteorder from a court, but also for a contractual cease andfar-reaching. For example, a person who as a party liable

desist declaration with a penalty clause, unless theto cease and desist makes a cease and desist

parties agree otherwise. The fact that the parties should

declaration with a penalty clause after a warning, with aby all means consider agreeing otherwise in individualnote that this does not involve a recall obligation fromcases is shown strikingly by the initial adversary

theproceedings on which the decision of the Federal Court

preliminary injunction being requested against him or a

distribution

channels,risks,

forexample,aof Justice is based. Upon the appeal lodged by thecomplaint being initiated, because issuing such a cease

defendant, the Federal Court of Justice presented theand desist declaration is in general not subject to any

case to the European Court of Justice, which decided

conditions. A person who successfully files for andthat grandfathering exists for the “RESCUE” products

serves a preliminary injunction has to take into accountuntil 2022. The defendant and party liable to cease andthat the respondent will recall the products from thedesist will therefore presumably not have to pay the finedistribution channels immediately, which can cause

imposed on it. Moreover, the plaintiff will have tosignificant costs, and, should the preliminary injunction

reimburse the costs of the proceedings initiated by it

fail to last, could also cause significant costs for theand would also have to reimburse the costs of the recall

applicant (Section 945 German Code of Civil Procedure).

activity (Section 717 (2) German Code of Civil Procedure)(Sander)

if the defendant had actually recalled its products from6

II. Infringement proceedings / 2. Recall obligation of the manufacturer from distribution channels

3. Liability for third-party statements in online offers
Federal Court of Justice, judgment of 03.03.2016, I ZR 140/14 – Angebotsmanipulation
bei Amazon(Parallel decision regarding competition law due to misleading information, Federal
Court of Justice, judgment of 03.03.2016, I ZR 110/15 – “Herstellerpreisempfehlung bei
Amazon“)
BACKGROUND
According to settled case law of the Federal Court ofadvertisement, is in general free to prove that it was in

Justice, any person shall be held liable to cease andfact not able to influence the content of the objected

desist as the interfering party in the case of an

advertisement (see for example Federal Court ofinfringement of absolute rights – without being theJustice, judgment of 10.02.2011, I ZR 183/09 – Irische

perpetrator or the participant – who contributes in any

Butter).

way deliberately and in an adequately causal fashion to
the infringement of the protected legal right. Since

In contrast, the case that was decided here does notliability for interference may not unduly be extended toconcern the situation whereby an advertisement was

third parties who did not themselves carry out the illegal

displayed by a third party completely without influenceinterference, liability of the interfering party assumes theof the company held responsible, but here the offer that

infringement of due diligence obligations. A company

is the subject of dispute was originally compiled by thethat, according to the external presentation of an

merchant held responsible in any case.

advertisement, purports itself to be responsible for said

DECISION
Under the category “Amazon Marketplace”, the online

notification pertaining to the retroactive change. The

trading platform “Amazon” offers merchants theGeneral Terms and Conditions of Amazon serve as thepossibility to offer their own offers via the platform. If

basis for this approach.

merchant A sets up a corresponding offer there, an offer
page is created and an offer number is assigned. If a

The plaintiff is the owner of the trademark “TRIFOO” -second merchant B would like to offer the sameregistered for “data processing systems and computers,

product, its generated offer page is automatically linked

interface systems and programs for computers.” The

to the offer page of merchant A. In this way, thedefendant operates a merchant shop on the trading

customer is intended to be provided with the option of

platform “Amazon Marketplace.” In this shop, it offereddirectly comparing prices for identical or seemingly

a “finger mouse” for “PC notebooks.” On 20 November

identical products between the different merchants on

2011, this offer was available on www.amazon.de with

“Amazon Marketplace.” Changes that merchant B

the information “Trifoo USB 2.0 finger mouse opticalmakes later on regarding the product description of its

mouse for PC notebook 800 DPI” and “sale andoffer are transferred to the (seemingly) identical offer ofshipping by e.”merchant A. Changes in the product descriptions ofautomatically linked offer pages thus have a direct

The Federal Court of Justice affirms the responsibility of

impact on all other offers linked thereto. The merchantthe defendant, thus the merchant having compiled thehaving prepared the original offer will not receive a

original

offer,

regarding

II. Infringement proceedings / 3. Liability for third-party statements in online offers

trademarkinfringement.

7

Merchants who offer products on the online trading

descriptions that are made independently by third

platform “Amazon Marketplace” have a responsibility toparties if the operator of the platform allows suchmonitor and review possible changes to productchanges to the offer.

ASSESSMENT
The judgment imposes strict due diligence obligations

For owners of industrial property rights, the judgmenton the merchant. Responsibility for the actions of third

signifies a substantial simplification of the assertion ofparties can already be affirmed if a change is made oflegal rights. The merchant compiling the offer can bewhich the content infringes upon industrial property

held liable as the infringer (for offers on “Amazon

rights. It is not necessary for the merchant compiling theMarketplace”). With this, identification of the “initiator”

original offer to have been aware of this subsequentof the infringement on trading platforms, which ischange or to have already been made aware of thepossible only with considerably difficulty, is not required.

possible infringement in order for the merchant to beheld responsible. Thus, it is not enough to point out to

The relevance of the judgment is likely to be limited due

the owner of the industrial property right that the action

to the specific linking of offers on the “Amazon

was carried out by a third party over which the merchantMarketplace” platform and such platforms that operate inpreparing the offer has no influence, which could

the same fashion. In view of the virtually great importancenevertheless be the case in view of facts. Consequently,of “Amazon Marketplace” there will nevertheless be an

the merchant compiling the offer has no choice but toimpact on a multitude of offers on the Internet. (Dekker)

check each and every single of its offers for potentialchanges and, if applicable, undo any changes violating
the law in a timely fashion. In this context, the Federal
Court of Justice deemed a period of two weeks
between said checks as too long.

8

II. Infringement proceedings / 3. Liability for third-party statements in online offers

4. A shape of goods used as a trademark
Federal Court of Justice, judgment of 21.10.2015, I ZR 23/14 – Bounty
BACKGROUND
A prerequisite for a trademark infringement is that thetion from descriptive uses of marks. In contrast, forcontested mark is used as a trademark. According toshapes of goods that are protected as trademarks, this

now well-established case law, this requires that theresults in the peculiarity that the target audience – inuse of the mark interferes with one of the trademark

comparison with word and figurative marks – is not sofunctionsinfringement

accustomed to seeing a “trademark” in a shape ofsituation. Frequently, this mostly concerns whether theprotectedbytherelevant

goods in the sense of an indication of origin, rather, theyfunction of the trademark as an indication of origin ismostly see only a (functional or pleasing) productinterfered with. In other words: It is crucial to know

design. The decision discussed in the following is about

whether the mark is used in such a way that the target

such a differentiation – the question as to whether theaudience sees in it an indication of the origin of thetarget audience sees in a shape of goods (only) amarked product from a certain company. For word andproduct design or at the same time (also) an indication

figurative marks, the focus is mostly on the differentia-

of origin.

DECISION
The plaintiff claims the following three-dimensional

It pertains to the typical shape of the “Bounty”

trademark registered among other things for “non-chocolate bar. The complaint contests the distribution of

medical candies”:

the following chocolate bars:

II. Infringement proceedings / 4. A shape of goods used as a trademark

9The court of appeal had dismissed the complaint

view of cancellation proceedings initiated in theessentially with the argument that the contested

meantime by the defendant against the trademark

chocolate bar shape does not constitute a trademark

claimed with the complaint) since the high degree of

use of the same. The Federal Court of Justice did notmarket acceptance is indicative of a secondary meaning

agree and allowed the complaint. In a first step, the

with

which

the

otherwise

opposing

protection

Federal Court of Justice refers to its previous case law

obstacles, such as a lack of distinctiveness, can beaccording to which the target audience is generally lessovercome.

accustomed to seeing an indication of origin, and thus
not only a functional and/or aesthetics-based productIn addition, the Federal Court of Justice came to thedesign, in a shape of goods. In the present case, thefollowing conclusion: If more than 50% of the target

plaintiff, however, had presented an expert opinion

audience see an indication of origin in the shape of therelating

which

original “Bounty” chocolate bar, the target audience willapproximately 53% of the target audience saw in thetoopinionalso do the same for the shape of the imitation product(pure, unpackaged) shape of the “Bounty” bar ansince its shape is to be seen as highly similar to theindication of the origin of the chocolate bar from ashape of the “Bounty” chocolate bar, which is protectedcertainas a 3D trademark. With this, the contested shape ofcompany

research(so-calledaccording”degreetoofmarketacceptance”).

goods also represents a trademark use thereof. The
infringement was subsequently to be affirmed.

This led to the Federal Court of Justice dismissing apetition regarding suspension of the proceedings (inASSESSMENT
The decision is stringent and logical. If a survey

the claimed trademark has acquired secondary meaning.

regarding secondary meaning proves that the target

In individual cases, the degree of similarity is what

audience sees in the shape of goods of the “original” anmatters in this context. For shape-of-goods trademarks

indication of origin – thus a trademark – the same can bethat have not acquired secondary meaning, the previous

assumed in view of an extremely similar shape of goods

case law prevails, according to which it is often difficultof an imitation product. However, the Federal Court offor the trademark owner to substantiate the “trade-

Justice – following its prior case law – clarifies that themark” use required for trademark infringement withsame assumption cannot necessarily be made forregard to respective imitation products. (Eberhardt)

opposing shapes of goods that are less similar, even if

10

II. Infringement proceedings / 4. A shape of goods used as a trademark

5. Composing of an application and forfeiture for company symbols
Federal Court of Justice, judgment of 05.11.2015, I ZR 50/14 – ConText
Drafting of an application; right arising from the company symbol, Sections 5, 15Trademark Act; forfeiture, Section 21 (4) Trademark Act
BACKGROUND
The decision initially deals with the question of permissi-

the relevant designations that are to form the basis ofble drafting of an application. In principle, a demand forthe infringement review. Unlike trademarks, where therelief aiming at cease and desist has to fulfil the following

focus is on the overall consideration, here special

two prerequisites: the application has to be sufficiently

principles apply that allow for the use of distinctive

defined, Section 253 (2) No. 2 German Code of Civil

company keywords and acronyms for company names

Procedure, and it has to correctly present the tangible

as suitable objects of comparison.

form of infringement, i.e. the application must not go
beyond the existing risk of a first or repeated infringe-

The question of whether the general forfeiture principles

ment.

are applicable in addition to the special rules of forfeiture
under trademark law is also discussed repeatedly. In

In addition, the mark-based evaluation of two company

principle, the special rules of Section 21 (1-3) Trademark

names is discussed. In the context of comparing two

Act do not affect the application of the general principles

company names, it is first of all necessary to determineof Section 21 (4) Trademark Act.

DECISION
In the present case, the Federal Court of Justice initially

offence the plaintiff wanted to include under thedeals with the question of the correct drafting of an

abstract part of the application. However, the required

application. The plaintiff had requested to ban thesufficient definiteness of the application is lacking

defendant from using the designation “Context” ininsofar as the abstract part of the application is no longer

isolation and had cited, in the “especially” supplement,

covered by the “especially” part. Accordingly, thethe complete company name of the defendant, Context

plaintiff, in line with remanding the matter to the court

Gesellschaft für Sprachen- und Mediendienste mbH.

of appeal, was given the opportunity to adjust its
application.

The Federal Court of Justice explained in this context
that a demand for relief that targets in its abstract partIn terms of content, this is about the evaluation of two

the use of the mark in isolation, here the use of the

opposing company symbols. Regarding the scope of adesignation “Context,” and in the “especially” part cites

company symbol of a company, the Federal Court ofthe designation within the company comprised of

Justice confirms that, in line with reviewing theseveral parts, here the designation “Context Gesell-

likelihood of confusion of two company names, it is toschaft für Sprachen- und Mediendienste mbH”, is insolely focus on the company keywords to the extent

itself contradictory and vague. Here, the Federal Court

that they show distinctiveness and to the extent thatof Justice explains that the “especially” part of athey are suitable to prevail as an indication for thedemand for cease and desist is intended to explain incompany. To the extent that a part of the commercial

more detail the abstract part of the application. Thus, thedesignation has separate protection under trademark

part is to show which form of the commission of anlaw, as it is the case in the present case for the

II. Infringement proceedings / 5. Composing of an application and forfeiture for company symbols

11designation “ConText” of the plaintiff, the focus was toFinally, the Federal Court of Justice expressly clarified inbe solely on this component. The same also applied inthis context that the general principles of forfeiture in

the present case to the component “Context” of thethe sense of Section 21 (4) Trademark Act are to becompany name of the defendant. All other company

applied for the assertion of claims arising from acomponents of the parties (“Communication” added tocompany symbol in addition to the rules regarding thethe company of the plaintiff and “Gesellschaft für

forfeiture of claims in Section 21 (2) Trademark Act.

Sprachen- und Mediendienste” added to the companyof the defendant) were thus less important during theoverallconsideration.

The

marks

were

therefore

deemed to be identical in this case.

ASSESSMENT
In terms of filing an application, one has to carefully

In view of the regulations of forfeiture, there is someensure that the “especially” part does not go beyond

disagreement regarding whether the special provisions

what is required in the abstract part of the application.

of Section 21 (1-3) Trademark Act also apply in addition

Since in the “especially” part of an application there is ato the general principles of forfeiture of Section 21 (4)more detailed explanation of what is to be included in

Trademark Act. This has now been decided by thethe application, particular attention should be paid to theFederal Court of Justice in the assertion of a claim

wording of the application. Insofar as the abstract part ofarising from a company symbol insofar as a parallel use

the application and the “especially” part contradict eachis possible, since this case is not a case that is covered

other, the application is to be dismissed on the grounds

by Section 9 of Directive 89/104/ECC as part of theof indefiniteness.

comprehensive harmonisation made therein. Accordingly, in this case a parallel use of the special and theIn view of the evaluation of the likelihood of confusion ofgeneral provisions is possible so that, in case of the non-two company symbols, there is the peculiarity here that,existence of the prerequisites of Section 21 (2)in the context of the comparison, the focus can be

Trademark Act, the defendant may also rely on thesolely on the company keywords to the extent thatgeneral rules in Section 21 (4) Trademark Act, if

these show the required distinctiveness and to theapplicable, which is designed to be a lot more flexible

extent that they can serve to identify the business. In

without

this context, it is not required that the company keyword(Holderied)

stating

fixed

periodsofacquiescence.

also be used in isolation. Rather, it is sufficient that it issuitable for referring to the business designated by it.

12

II. Infringement proceedings / 5. Composing of an application and forfeiture for company symbols

6. Exhaustion in the case of parallel import of pharmaceuticals
Federal Court of Justice, judgment of 02.12.2015, I ZR 239/14 – Eligard
BACKGROUND
Since the European Court of Justice in its decision

shown in their attempt to plead legitimate interest in theBristol-Myers Squibb established the five conditions ofsense of Section 24 (2) Trademark Act. Pharmaceuticalexhaustion for a permitted parallel import of pharmaceu-

companies as trademark owners of the productticals, this area of law has calmed down somewhat.

description could then oppose repackaging. However,

However, the civil courts repeatedly have to deal withthe limitations of this exceptional rule are closelynewdefined. In addition, legitimate interest was denied insituations.

The

interestofpharmaceuticalcompanies not to make it easy for parallel importers is

the present judgment of the Federal Court of Justice

DECISION
In the present decision, the Federal Court of Justice,

have to be labelled in the German language. The plaintiff

among other things, had to decide whether a parallel

had already argued this in the regulatory approval

importer was to trust in the approval document of theprocess. The responsible authority, however, opposed

responsible authority. A pharmaceuticals distribution

the requirement in an official notification. The subse-

company responsible for Germany brought an action

quent approval document for the defendant, however,against a parallel importer due to trademark infringe-

did not expressly state that labelling of the syringes

ment and violation against provisions of fair competition.

does not have to take place in the German language.

The claims were asserted by way of the establishedrepresentative action with the authorization of the

The Federal Court of Justice concluded from thepharmaceuticals company as the trademark owner. The

objective explanatory value of the approval document

dispute was based on characteristics of the pharmaceu-

that the authority deemed labelling the syringes in atical product. The pharmaceutical product consists offoreign language to be sufficient. Labelling the syringes

two syringes that are packaged in a tray packaging within the German language would have required opening

deep-drawing film and that are sold in a folded box.

the tray packaging with deep-drawing film. However,After opening the tray packaging, the pharmaceuticalthis would have had an immediate impact on the shelfproduct has to be used immediately. Otherwise, its

life of the product and posed a risk to the safety of the

shelf life is at risk.

pharmaceutical product. From the circumstances, it canbe deduced that the authority took this into account in

What was indisputable and not part of the dispute was

the proceedings. In this regard, the approval documentthat labelling the tray packaging with deep-drawing film

had an effect that is binding on the civil courts. If theand the folded box has to take place in the German

plaintiff deems the document to be null and void,

language. In fact, the plaintiff asserted that according toproceedings would have to be initiated in an administra-

the labelling requirements for pharmaceuticals (Section

tive court by way of action of opposition.

10 (1, 8) German Pharmaceuticals Act) the syringes also

II. Infringement proceedings / 6. Exhaustion in the case of parallel import of pharmaceuticals

13

ASSESSMENT
The decision of the Federal Court of Justice is to be

impropriety provisions is denied by the Federal Court ofagreed to. A requirement to also label the syringes inJustice. Thus, the manufacturers will have to seek their

the German language would result in it not being

fortuneinappealingtheapproval

documentinpossible to parallel import this pharmaceutical product.

proceedings in an administrative court. The future will

The necessary opening of the tray packaging with deep-show whether an administrative court will affirm adrawing film would require the immediate application ofpharmaceutical company’s right to bring an action for a

the pharmaceutical product. In the overall consideration

claimed violation against the obligations to labelof all interests, the basic principle of the free movement

pharmaceutical products. This is by no means a certain-of goods (Section 34 TFEU) and pharmaceutical productty. Initially, only the addressee of the document (namely

safety regarding the shelf life have to be given priority

the parallel importer) or the party that is to be protected

here. The plaintiff attempts to argue that labellingby the labelling requirements has the right to bring an

requirements are in the public interest; however theseaction. These are the consumers, and not the pharma-

are already sufficiently guaranteed. The folded box as

ceutical company as the trademark owner. However,well as the tray packaging with deep-drawing film are

the Federal Court of Justice in its decision affirms thelabelled in the German language. Thus, the defendant

pharmaceutical company’s right to bring an action.

was right to trust in the lawfulness of the approval

According to the Federal Court of Justice a – quasi

document; especially because the authority was aware

downstream – review under trademark law of the ap-of the issues.

proval document would be considered only if an administrative court were not to follow this decision. There

The attempt of the plaintiff to assert an alleged violationis still much excitement in the legal area of parallel

against the labelling requirements as a legitimate

importing! (Ehlers)interest in the sense of Section 24 (2) Trademark Act or

14

II. Infringement proceedings / 6. Exhaustion in the case of parallel import of pharmaceuticals

III.

LICENSES
7. Insolvency-proof nature of a trademark licence
Federal Court of Justice, judgment of 21.10.2015, I ZR 173/14 – Ecosoil
BACKGROUND
The “Ecosoil” decision of the Federal Court of JusticeRegarding the facts: after the previous parent company

deals with the fate of trademark licences in the case ofand licensor had become insolvent, the current plaintiff

insolvency of the trademark owner and licensor. The

had acquired the rights to the EU trademark “Ecosoil.”case decided by the Federal Court of Justice dealt with

Subsequently, the plaintiff then called on the subsidiary

the question of the continued existence of the licenceand licensee to cease and desist the use of theafter the sale of the insolvent trademark owner.

trademark “Ecosoil.” The subsidiary defended itself witha licence to use the trademark “Ecosoil” that was

For the party acquiring the trademark owner andgranted to said subsidiary and all other affiliatedlicensor, this was a rude awakening: it believed to havecompanies by the previous parent company in line withacquired unencumbered trademark rights; however, ina uniform market presence. At that time, the licence

the end it had to accept the continued existence of thewas granted in a simple fashion (meaning not exclu-

trademark licence previously granted by the former

sively, excluding other licensees), without consideration,

trademark owner. However, the licensee had reason topermanently and not subject to cancellation.

be happy. The licensee may continue to use the licencedespite the insolvency and sale of the licensor.

DECISION
The licensee may also use the licence that was

The licence substantiated via a contract guaranteeing

permanently granted to the licensee by the later

the permanent right of use (according to a legal lease) is

insolvent parent company after the transfer of theinsolvency-proof as a right in rem if the main services oftrademark rights to the party acquiring the parent

the licence agreement were completely fulfilled by bothcompany. The licence agreement entered into prior toparties prior to the start of the insolvency. The main

the insolvency continues to exist between the original

services are on the one hand the granting of the licencerights owner and the licensee; the party acquiring theby the licensor and on the other hand the use of theparent company, and new trademark owner, could havelicence by the licensee. In the “Ecosoil” case, theseentered into this contract only with the consent of theprerequisites were given. With this, an option of thelicenseeinsolvency administrator to refuse the obligations arisingfrom the licence was also eliminated (Section 103

The effectiveness of the licence also does not require

Insolvency Act).

for the licence to be registered. It is also not required forthe party acquiring the company to have concrete

In passing, the Federal Court of Justice also clarified thatknowledge of the content of the licence regarding thein principle a licence agreement is to be requested, buttrademarks acquired by said party (interpretation ofthat in the present case the meeting minutes were

Section 23 (1) p. 2 EU Trademark Regulation).

sufficiently clear to act as proof for granting the licence.

III. Licenses / 7. Insolvency-proof nature of a trademark licence

15

ASSESSMENT
The rather complex “Ecosoil” decision of the Federala licence; in particular, it did not confirm the general

Court of Justice ultimately creates more legal certainty

applicability of the right for segregation of the licensee

for the licensee when insolvency proceedings arethat exists for rights in rem (Section 47 Insolvency Act).

initiated against the licensor. This is to be welcomed

Nevertheless, the court clarified that, besides thesince, especially in the age of digital media, intellectual

exchange agreement without consideration that servesproperty rights are often among the greatest assets of a

as a basis in this context, it also expressly identified thecompany, for example in the form of the name of theacquisition of a licence as another construct for thecompany.

insolvency-proof

designoflicenceagreements.

(Overhage)
The Federal Court of Justice did not make a universally
valid statement regarding the insolvency-proof nature of

16

III. Licenses / 7. Insolvency-proof nature of a trademark licenceAUTHORS
Nicole Dekker
Dr. jur. Julian Eberhardt, LL.M.
Nicol Ehlers, LL.M.
Harald Förster
Yvonne Holderied
Dr. jur. Stefanie Overhage
Ulrich Sander

EDITING & LAYOUT
Katrin Hellmann

Further members of our team can be found atwww.eisenfuhr.com/de/findPhoto credits
Title page
Registered trademark symbol,
fotolia.com/jules,
File: #66109180
Trademark word cloud,fotolia.com/ijdema,
File: #47035951
Justitia with blue sky,
iStock.com /liveostockimages,
Stock photo ID: 114161816

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