akedemiks

2008 INTERNATIONAL CONFERENCE ON JUDICIAL PROTECTION OF IPR
9-11 JULY 2008, SHANGHAI
HOSTED BY THE SUPREME PEOPLE‘S COURT
Defences in Trademark Law
Joachim Bornkamm
No Defence of Prior Use – Registration in Bad Faith
ƒ In both patent and trademark law priority is essential
ƒ In patent law you may continue to make use of a technology if
you can show that you were using this technology before priority
date.
ƒ No equivalent in trademark law
ƒ Only defence available: trademark was registered in bad faith
BGH, Judgment of 10 Jan 2008 - I ZR 38/05 - AKADEMIKS
ƒ Plaintiff: US company producing urban street wear (hip hop
fashion)
ƒ June 1999: Plaintiff registers AKADEMIKS trademark in the US:
AKADEMIKS, JEANIUS LEVEL PRODUCTS, AKADEMIKS
STADIUM;
ƒ from June 2002: Plaintiff registers AKADEMIKS trademarks in
Europe
ƒ Defendant: German company producing hip hop fashion
ƒ September 2000: Defendant registers AKADEMIKS
ƒ February 2003: Defendant issues warning to plaintiff
BGH, Judgment of 10 Jan 2008 - I ZR 38/05 - AKADEMIKS
ƒ Plaintiff turns the table and takes defendant to court
ƒ Court of first instance decided in favour of plaintiff, Court of
Appeal dismissed the action, our Court decided in favour of
plaintiff
ƒ Registration of trademark in bad faith
German case law: two constellations
ƒ Either: violating vested rights of another knowingly
In this case: no vested rights
ƒ Or: Using the exclusionary power of the registered mark in bad
faith
In this case: Copying of product line shows bad faith; in fashion
business a success in the US is carried to Europe
Trademark Registered by Agent
ƒ Scenario: Company with a registered trademark X in country A
wants to start business in country B. Cooperation with local agent.
Agent registers trademark X in country B.
ƒ Community Trademark Regulation:
Article 11- Prohibition on the use of a Community trade mark registered in the name of an
agent or representative
Where a Community trade mark is registered in the name of the agent or representative of
a person who is the proprietor of that trade mark, without the proprietor's authorization,
the latter shall be entitled to oppose the use of his mark by his agent or representative if he
has not authorized such use, unless the agent or representative justifies his action.
Article 18 - Transfer of a trade mark registered in the name of an agent
Where a Community trade mark is registered in the name of the agent or representative of
a person who is the proprietor of that trade mark, without the proprietor's authorization,
the latter shall be entitled to demand the assignment in his favour of the said registration,
unless such agent or representative justifies his action.
BGH, Judgment of 10 April 2008 - I ZR 164/05 - audison
ƒ Plaintiff: Italian company producing high standard hifi equipment
for cars
ƒ Registered trademark in Italy since 1991: audison
ƒ Plaintiff and defendant had been working together from 1992 to
2000 building up a distribution system in Germany
ƒ Sales were started, but parties never came to terms as to distribution
contract
ƒ During the last phase of their cooperation defendant registered
trademark audison in Germany
ƒ Court of first instance dismissed the claim for an injunction and for
the assignment of the trademark to the plaintiff. Court of Appeal
granted injunction and assignment. Our Court upheld the Appeal
decision
BGH, Judgment of 10 April 2008 - I ZR 164/05 - audison
ƒ Even though parties had never come to terms as to distribution
contract defendant was acting as plaintiff’s agent in Germany
ƒ Parties had discussed a joint venture, but had not succeeded. In case
of a joint venture there would not have been a principal agent
relationship
ƒ Defendant had not only acted as a distributor or retailer, but was
involved in building up a distribution system
ƒ Condition for principal agent relationship
- Contractual relationship between principal and agent
- Agent is more than a business partner who buys producer’s
products occasionally in order to sell them
- Agent is less than a equal partner
- Agent is under an obligation to safeguard the interest of the
principal
Classical Defences in Trade Mark Law
ƒ No trade mark use (descriptive use): No infringement when sign is
not used as a trade mark
ƒ Exhaustion: The use of the trade mark cannot be prevented once the
marked goods have been put on the market in the Community with
the consent of the trade mark owner (Judgment by ECJ in
Silhouette case)
ƒ Trade mark must be used (no infringement if trade mark has not
been used for five years)
BGH, Judgment of 1 April 2004 - I ZR 23/02 - Gazoz
Gazoz
BGH, Judgment of 15 July 2005 - I ZR 37/01 - Aluminumräder
BGH, Judgment of 7 Oct 2004 - I ZR 91/02 – Lila-Schokolade
BGH, Judgment of 7 Oct 2004 - I ZR 91/02 – Lila-Schokolade
BGH, Judgment of 7 Oct 2004 - I ZR 91/02 – Lila-Schokolade
BGH, Judgment of 8 Feb 2007 - I ZR 71/04 – bodo Blue Night
Blue Night