S5-Intellectual Property Law PDF

Legal aspects of the protection of intellectual property (patent, trademark, copyright) 授课教师：Moritz Griesel 制作人：邹挺嘉；金妙妙；付馨醇；段嘉玲 Intellectual Property Law Notes Intellectual Property Law Notes ..................................................................................

Legal aspects of the protection of intellectual property (patent, trademark, copyright) 授课教师：Moritz Griesel 制作人：邹挺嘉；金妙妙；付馨醇；段嘉玲 Intellectual Property Law Notes Intellectual Property Law Notes .........................................................................................................................1 Part 1 知识产权法总体概述 .................................................................................................................................4 1. Introduction （引入部分，了解即可） ....................................................................................................4 1.1 Which rights are to be distinguished? ...............................................................................................4 1.2 Subject of property rights ..................................................................................................................4 1.3 Systematization Intellectual Property law （框架了解即可） .....................................................4 2. Basic Principles ...............................................................................................................................................5 2.1 Introduction .......................................................................................................................................5 2.2 Economic Principles (1) ......................................................................................................................5 2.2 Economic Principles (2) ......................................................................................................................5 2.2 Economic Principles (3) ......................................................................................................................5 3. General regulatory principles .........................................................................................................................6 4. General regulatory aspects to consider ..........................................................................................................6 Part 2 Trademark Law ............................................................................................................................................7 I. Introduction .....................................................................................................................................................7 II. Overview 大纲 ...............................................................................................................................................7 1. Chart: Distinctive signs （该表为索引作用） ............................................................................................8 2. General Information 基本信息......................................................................................................................9 2.1 Why do we need trademark protection? 保护商标的原因 ...........................................................9 2.2 What functions does trademark protection serve? 商标保护有哪些功能？ ............................ 10 3. Legal Sources ............................................................................................................................................... 10 4. Different types of trademarks and their functions ...................................................................................... 11 5. Preconditions, scope and restrictions of the protection of trademarks (2)................................................. 18 5.1 Subject of protection of the property right, Sec 3 (1) TMA ............................................................ 18 5.2 Special grounds for exclusion from protection under Sec 3 (2) TMA ................................................ 18 5.3 Proprietors of filed and registered trademarks, Sec. 7 TMA........................................................... 20 5.4 The representability of the mark in the register, Sec 8(1) TMA ...................................................... 20 5.5 Absolute grounds for refusal, Sec 8 (2) TMA .................................................................................. 21 5.6 Absolute grounds for refusal, Sec 10 TMA...................................................................................... 23 5.7 Relative grounds for refusal, Sec.9 et seqq TMA ............................................................................ 24 5.8 Registration and publication, Sec 41 TMA ...................................................................................... 24 6. Existence and cancellation of the trademark .............................................................................................. 25 6.1 Registered trademark ..................................................................................................................... 25 6.2 Used mark ....................................................................................................................................... 26 7. Scope of protection .................................................................................................................................. 26 7.1 General requirement, Sec 14(1) TMA ............................................................................................. 26 7.2 Specific requirement, Sec 14(2) TMA ............................................................................................. 28 7.3 Limitations on Trademark rights through uses permitted by law ................................................... 30 7.4 Legal consequences of infringement of a trademark right ............................................................. 33 8. Transfer, exploitation and licenses ............................................................................................................... 33 8.1 Transfer ........................................................................................................................................... 33 8.2 Licenses ........................................................................................................................................... 34 9. The Union trademark ................................................................................................................................... 35 Part. 3 copy right ..................................................................................................................................................... 36 1 introduction........................................................................................................................................................... 36 1.1 Function of the copyright law regime ........................................................................................................ 36 1.2 Parties and their interests ........................................................................................................................... 37 1.3 “Urheberrecht” vs. copyright ..................................................................................................................... 38 1.4 Copyright in the European Union .............................................................................................................. 39 1.5 Copyright and tangible goods .................................................................................................................... 40 2 The work as an object of protection...................................................................................................................... 41 2.1 Term........................................................................................................................................................... 41 2.2 Personal creation........................................................................................................................................ 41 2.3 Intellectual content..................................................................................................................................... 42 2.4 (Tangible) Shape........................................................................................................................................ 42 2.5 Types of work, Sec 2 (1) GCA .................................................................................................................. 43 3 Authorship ............................................................................................................................................................ 45 3.1 General Principle ....................................................................................................................................... 45 3.2 Employee ................................................................................................................................................... 45 3.3 Ghostwriter ................................................................................................................................................ 46 3.4 Presumption of authorship ......................................................................................................................... 46 3.5 Co-authorship, Sec 8 GCA ........................................................................................................................ 46 4 Scope of protection + rights of use (1) ................................................................................................................. 47 4.1 General Principle ....................................................................................................................................... 47 4.2 Relationship between moral rights and exploitation rights ........................................................................ 47 4.3 Moral rights, Sec 11 et seqq GCA ............................................................................................................. 48 4.4 Exploitation rights, Sec 15 et seqq GCA ................................................................................................... 49 4.5 Right of communication to the public ....................................................................................................... 50 4.5.1 权利用尽原则（Exhaustion Doctrine）★★★........................................................................... 50 4.5.2 Right of communication to the public ............................................................................................ 53 2. limitations to copyrights protection 版权保护的限制 ....................................................................................... 56 5.1 general principles ....................................................................................................................................... 56 5.2 Time-related limitations 时间限制 ........................................................................................................... 57 5.3 Content-related limitations ........................................................................................................................ 57 3. Succession to copyright （不重要） ................................................................................................................. 60 4. related rights 相邻权 .......................................................................................................................................... 61 7.1 General principles ...................................................................................................................................... 61 7.2 Single related rights ................................................................................................................................... 61 考试要求： ............................................................................................................................................................. 65 Part 1 General overview of intellectual property law 1. (The scope of the examination for this course is the trademark law and copyright law sections; the patent law section is not examined.) However, in order to prevent the omission of knowledge points, an overview of intellectual property law in general, as mentioned in the first lesson, has been included.) 2. Introduction （Introductory part, just know it） 1.1 Which rights are to be distinguished? 1) 2) 3) 4) 5) 6) 7) Property Right (Sec 903 G Civil Code) = Ownership of the tangible object Design = appearance of the product Ownership to design the appearance of the product Trademark = product name as word / imageword combination / image Corporate Identity (corporate logo) Patent / Registered design = technical solution Copyright = personal intellectual creation [Copyright = protection of an individual's intellectual creations] Protection of know-how? = Trade secret? (Proprietary technology? Trade secrets?) 1.2 Subject of property rights A. Commercial property rights (or business property rights) a. Technical property rights based on intellectual & industrial creation for commercial purposes E.gPatent, Registered Design Purpose of technological property rights based on intellectual and industrial creation for commercial purposes: patents, registered designs b. Labeling rights E.g- Trademark, Business designations, title protection rights （Labeling rights, e.g., trademarks, trade names, property protection rights） c. Aesthetic creations rights E.g - Design B. Copyrights Protection of intellectual creation based on cultural achievement E.g- Copyright 【Summary】 Commercial property rights, that is, patents or trademarks, must exist for commercial purposes, i.e., for commercial use; however, Copyrights do not need to exist for commercial purposes, i.e., they do not need to be used for commercial use, and they can exist independently. 1.3 Systematization Intellectual Property law （understanding the framework is enough） 3. Basic Principles 2.1 Introduction ➢ ➢ ➢ Intellectual Property Law / Intellectual Property Rights (IPR) Objective approach: area of law that constitutes and shapes rights of disposal of intangible goods Subjective approach: IPRs assign an intangible good to a person for his or her exclusive use - absolute + subjective private rights + negative dimension + positive dimension Absolute + subjective private rights + negative dimensions + positive dimensions 【Summary】absolute refers to acts against anyone. Negative attribute: exclusion of others from use; positive attribute: use at one's own discretion IPRs require a balance between the interests of society and the interests of the individual with IPRs. 2.2 Economic Principles (1) 2.2 Economic Principles (2) ➢ ➢ Intangible Goods (Intangible commodities) - Objects of economic or ideal value, which don’t have a physical presence Why do we need regulation? - Problem 1: Information can be used in many places at the same time - Problem 2: Information is non-exclusive (is non-exclusive) - Problem 3: Information does not deteriorate (not consumed by use) 2.2 Economic Principles (3) ➢ Result: Property-Rights-Theory - Exclusive rights are required to put information to its most useful use (to make the most effective use of information)，There must be exclusivity rights ✓ Exclusive rights of the use of information are assigned to individuals ✓ Thus, exclusivity of the intangible good is “only” artificially created ➢ Follow-up Problem: Intellectual Property Law The individual’s interest in the protection of the information vs. the public interest in the dissemination of the information Intellectual Property Law (The individual interest in the protection of information, together with the public interest in the dissemination of information, forms the basis of intellectual property law.) 4. General regulatory principles ➢ ➢ ➢ Principle of absoluteness = Legal effects of the intellectual property right unfold vis-à-vis everyone Numerus Clausus = Intellectual property rights exist only to the extent that and as long as exclusive rights are codified ✓ Information is generally free, only certain expressions are protected by the protective laws = Freedom of information in the public domain Principle of territoriality = Intellectual property rights exist only for the territory of the state that has codified the protection accordingly (territoriality) 5. General regulatory aspects to consider ➢ Protected property ✓ “Outer” limitation (external conditions) ✓ “Inner” Limitation (endogenous conditions) (1) “Outer” limitation Patents are granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. ((Using the Patent Act as an example) What is an external condition of a patent?) (2) “Inner” limitation is the need to satisfy an external condition followed by some exclusionary condition, which finally is the core of the patent concept. This exclusionary condition is found in Article 1(3) of the German Patent Act. ➢ Scope of protection ✓ Duration of protection (protection time) ✓ Territorial scope (geography) ✓ Principle of exhaustion (the principle of single exhaustion) ➢ Conditions for the acquisition of rights ✓ Application and entry in a register (patent) ✓ Usage (trademark) ✓ Creation ipso iure (copyright) ➢ ➢ ➢ Rightholder / Entitled person ✓ Creator of the work ✓ applicant of the right to the register Legal consequences ✓ no-fault injunctive relief ✓ claims for damages ✓ Further claims ✓ criminal penalties for willful violation Rights of use and exploitation ✓ Licensing law ✓ Contract law (applications and registrations -patents-) Part 2 Trademark Law I. Introduction ➢ ➢ “Protection of trademarks and other distinctive signs” = legal provisions dealing with the protection of designations/signs used to identify natural or legal persons, companies or business establishments, but also goods or services Examples: II. Overview 大纲 1. Chart: Distinctive signs 2. General Information 3. Legal Sources 4. Different types of trademarks and their functions 5. Formal Requirements 6. Preconditions, scope and restrictions of the protection of trade marks 7. Existence and cancellation 8. Scope of protection 9. Transfer, Exploitation, licenses 10. The Union trademark 7 1. Chart: Distinctive signs （the table serve as an index） The sign is used commercially to identify… Type of distinctive sign Substantive protection requirements … products & services Trademark, Sec 3 TMA - ➢ ➢ Procedure for registered trademarks No procedure for use mark, but public recognition required … companies or parts thereof - ➢ Commercial Designation, Sec 5 (2) TMA Company signs, Sec 5 (2) TMA ➢ ➢ ➢ No procedure Start of use Public recognition in the absence of distinctive character Commercial Designation, Sec 5 (1) TMA Titles of works, Sec 5 (3) TMA ➢ ➢ No procedure = just start of use Public recognition in the absence of distinctive character Names, indications or signs protected as indications of geographical origin, Sec 126 TMA ➢ ➢ No procedure Eventual registration with the EC for agricultural products and foodstuff Certification marks, Sec 106a TMA ➢ ➢ Procedure for registered trademarks Designation as such at registration ➢ … works ➢ ➢ … geographical origin and designation of origin of goods or services … of goods or services for product and quality characteristics (quality marks) 8 2. General Information 2.1 Why do we need trademark protection? (reasons for trademark protection) 1) Distinguish products & provide proof of origin 【subtitle】”So if you want to go to a supermarket, then you probably look for certain product because they have go to and what is essential lyrics that they have certain name.” Mainly differentiated roles 2) Orientation in the market 3) Brands serve as a means of transporting information and emotions 4) Communication of companies with consumers on the market 5) Brands are more suitable subjects for marketing 6) Brands can have a considerable value in their own right (independent of the value of the company or enterprise) → in particular due to investments in product quality and advertising 9 2.2 What functions does trademark protection serve? (what are the functions of trademark protection) 1) Reference to the corporate origin of the good/service 【subtitle】 So first of all, of course, the reference that will be corporate region or be good for service. And we just need that because the public gets guarantee that the good for services Mark with it have been manufactured or provided. It's just transparency purposes. 【translate】That is the kind of reference we need, because the public can be assured that the service product with the mark is produced or provided. This is just for the sake of transparency. 2) Labeling differentiate something 【subtitle】The trademark serves to distinguish products from other products or from other server after the same company or from different companies. That's also quite important. 【translate】A trademark serves to distinguish a product from other products or other servers of the same or different companies. This is also quite important. 3) 4) 5) Quality, Guarantee, Trust Communication & Advertisement Investment protection The investment actually because some brands just have a great value. 3. Legal Sources 1) German Trademark Act 2) German Ordinance for the implementation of the Trademark Act 3) EU Directive on Trade Marks 4) Regulation on the European Union trade mark 10 4. Different types of trademarks and their functions Main Function Other Functions Not covered Trademarks,Sec 3 TMA Collective marks, Sec 97 et seqq TMA Certification marks, Sec 106a TMA ➢ ➢ ➢ ➢ serves as a commercial indication of origin in relation to the explicitly designated goods/services makes the goods or services identified by it distinguishable from those of other companies in terms of their commercial origin for consumers or end users Trademarkable signs whose owner is an association with legal capacity whose members use the mark to distinguish themselves from other companies or associations ➢ Certain characteristics of the goods or services so identified are guaranteed by the certification mark without attributing the goods or services to a particular company Transparency, Neutrality, Testing and monitoring obligations ➢ Quality ➢ Advertising ➢ Communication ➢ Investment protection Applies only to trademarks within the meaning of Sec 14 (2) No. 1, 3 TMA Distinguishing criteria: collective business origin, geographical origin, quality, other special characteristics the presence of one or more of the following characteristics is guaranteed 1.the material 2.the method of manufacture of the goods or the provision of the services 3. the quality, accuracy or other characteristics ➢ Marks consisting exclusively of quality marks as mere indications of quality or condition are not sufficient Geographical origin product identification function, which makes it possible or easier for the consumer to identify a particular product by means of a sign or a particular presentation of the goods e.g.: White lid of the Nutella jar, Drugs/pills that have certain colors, … 11 12 【First column of the table】 trade marks 【Law Reading Session】 Section 3 Signs eligible for protection as trade marks (German Trademark Act) (1) All signs, particularly words including personal names, designs, letters, numerals, sounds, threedimensional designs, the shape of goods or of their packaging as well as other wrapping, including colours and colour combinations, may be protected as trade marks if they are capable of distinguishing the goods or services of one undertaking from those of other undertakings. (2) Signs consisting exclusively of shapes or other characteristics 1. which result from the nature of the goods themselves; 2. which are necessary to obtain a technical result; or 3. which give substantial value to the goods shall not be capable of being protected as trade marks. 【subtitle】 When we consider the scope of Protection here, we can differentiate between the “outer” limitation and the “inner” limitation would be section 3, sub-section one and inner limitation is excluded from Protection would be sub-section 2. 【translate】When we consider the scope of protection, we may distinguish between "external" limitations, which are article 3, paragraph 1, and "internal" limitations, which are excluded from the scope of protection, which are paragraph 2. Back to the table on main features, other features and unmentioned sections (first column of the table, Trademarks Section3) 【subtitle】 [what is the main function of a trademark?] Well it serves as a commercial indication operation in relation to the explicitly designated groups or services and makes the good service identify, identifiable and makes it distinguishable from those other companies, security some their commercial origin. [What is the primary function of a trademark?] The function of a trademark is to operate as a commercial identification of a clearly designated group or service, to make the goods and services recognizable, identifiable, and to distinguish them from other companies, warranties, commercial sources, etc. [How can it distinguish it? ] Well it makes use of all signs in particular words including personal names, designs, letters, numerous sounds and so on. So quite broad scope application here. [How is it distinguished?] All signs, especially words, include names, designs, letters, countless sounds, etc. Thus, the range of applications here is quite broad. 13 [Other Functions] (contents of the table） 1) Quality 2) Advertising 3) Communication 4) Investment protection [Not covered]（contents of the table） product identification function, which makes it possible or easier for the consumer to identify a particular product by means of a sign or a particular presentation of the goods 【2nd column of the table】 Collective marks 【Law Reading Session】 Section 97 Collective marks (1) All signs eligible for protection as a trade mark within the meaning of section 3 may be registered as collective marks if they are liable to distinguish the goods or services of the members of the proprietor of the collective mark from those of other enterprises in terms of their origin from a given enterprise or their geographical origin, their nature, quality or other properties. A collective mark shall be described as such when the mark is applied for. (2) The provisions of this Act shall apply to collective marks unless otherwise provided in this Part. Article 97 Collective Marks (1) Subject to section 3, all signs which qualify for protection as trade marks may be registered as collective marks if they are capable of distinguishing the goods or services of the members of the proprietor of the collective mark from those of other undertakings in respect of their origin, geographical origin, nature, quality or other attributes. In an application for a collective mark, it shall be described as a collective mark. (2) The provisions of this Act shall apply to collective marks except as otherwise provided in this Part. [On the Nature of Collective Marks] （Distinction from Trademark） 【subtitle】 The collective mark is just a special trend. And now it collective mark does not serve as a commercial indication of origin in relation to a good or service. it serves as a distinguishing sign from one collective of companies to other companies associations. So it is a collection of companies rather than a collection of goods and services. (Collective marks are just a particular trend. Nowadays, a collective mark does not serve as a commercial sign of origin in relation to goods or services. It is therefore a collection of companies rather than goods and services.) [Other Functions] (contents of the table） Distinguishing criteria: collective business origin, geographical origin, quality, other special characteristics [Not covered]（contents of the table） 14 Marks consisting exclusively of quality marks as mere indications of quality or condition are not sufficient (A quality mark that is merely a sign of quality or condition is not sufficient) 【Third column of the table】 Certification marks 【Law Reading Session】 Section 106a Certification marks (1) The proprietor of the certification mark shall certify in respect of the goods and services for which it was applied for, one or more of the following characteristics: 1. the material; 2. the mode of manufacture of goods or performance of services; 3. the quality, accuracy or other characteristics, with the exception of geographical origin. The mark shall be capable of distinguishing goods and services which are certified from goods and services which are not so certified. A certification mark shall be described as such when the mark is applied for. (2) The provisions of this Act shall apply to certification marks to the extent that this Part does not provide otherwise. [On the Nature of the Certification Mark] 【subtitle】 Certification mark is not about identification of products, services or companies, not in collectives of companies but to provide proof of certain quality characteristics. For example, super characteristics of the goods or services. So identify guarantee by this more working market out attributing the goods or services. A certification mark is not intended to identify a product, service or company, or a company collectively, but rather to provide proof of certain qualitative characteristics, for example, the superlative properties of a good or service. The certification mark thus ensures that the goods or services are more competitive in the marketplace. [Main Functions of the Certification Mark] ➢ Certain characteristics of the goods or services so identified are guaranteed by the certification mark without attributing the goods or services to a particular company ➢ Transparency, Neutrality, Testing and monitoring obligations certification mark guarantees certain characteristics of the goods or services identified without attributing the goods or services to a specific company transparency, neutrality, testing and monitoring obligations [Other Functions] (contents in the table） The presence of one or more of the following characteristics is guaranteed 1.the material 2.the method of manufacture of the goods or the provision of the services 3. the quality, accuracy or other characteristics [Excluding] Geographic origin 5. Formal Requirements 15 A. Requirements concerning the application, Sec 32 TMA (German Trademark Act) (1) Applications for the registration of a trade mark in the Register shall be filed with the German Patent and Trade Mark Office. […] (2) The application shall contain: - a request for registration - information permitting to identify the applicant, - a representation of the trade mark, which is not subject to the ground for refusal specified in section 8 (1), and - a list of the goods or services for which registration is being requested. Excursus: Classification for trademarks as required by Sec 32 (2) no. 4 TMA Summary: Classification of trademarks under Article 32(2)(4).4 TMA ➢ ➢ ➢ ➢ uniform classification database as agreed on in Nice-Agreement Goods and services must be assigned to their respective classes at the time of application 45 different classes, 73.000 keywords Differentiation according to the subject matter of the goods / services Excursus: Forms of trademarks 小结：商标的形式 ➢ Word marks (Sec 7 GOTMA) = consisting of one or more words or of characters such as letters, numbers or special characters; all customary forms of reproduction are included ➢ Figurative marks, word/figurative marks (Sec 8 GOTMA) = marks with word and figurative elements (combination marks), where the color indication and color design are important for determining the subject matter of protection ➢ Three-dimensional marks (Sec 9 GOTMA) = similar requirements as set out in Sec 8 GOTMA ➢ Abstract color marks (Sec 10 GOTMA) = subject matter of protection are colors and color combinations of single or multiple colors detached from concrete representations and figurative limitations (=> NOT colored trademark representations of another form of mark) ➢ Sound marks (Sec 11 GOTMA) = the application must be accompanied by a representation on a data carrier or a graphic representation of the sound mark (e.g. musical notation, mp3 file, ...) ➢ Tracer marks (Sec 12 GOTMA) = they are used in particular for cables and are subject to the same standards as other graphic design elements, designs and presentations ➢ Position marks (Sec 12 GOTMA) = the object of protection is the placement of the sign in a specific, always identical position ➢ Further forms of trademarks: Motion marks, multimedia marks, pattern marks, hologram marks, tactile marks, light marks, smell marks & taste marks 16 B. Formal filing requirements pursuant to Sec 36 TMA (1) The German Patent and Trade Mark Office shall examine whether 1. the application for the trade mark satisfies the requirements for the accordance of a date of filing in accordance with Sec 33 (1); 2. the application complies with the other conditions of filing; 3. the sufficient amount of fees has been paid; and 4. the applicant may be a proprietor of a trade mark in accordance with Sec 7 【Attached】 Article 33, paragraph 1 Section 33 Date of filing, right to registration, publication of the application (1) The date of filing of the application for a trade mark shall be the date on which the applicant has filed the application containing the information specified in section 32 (2) at the German Patent and Trade Mark Office. The receipt of the application documents by a patent information centre which has been designated to accept trade mark applications by notice published by the Federal Ministry of Justice and Consumer Protection in the Federal Law Gazette shall be deemed as receipt by the German Patent and Trade Mark Office. What happens, if the requirements pursuant to Sec 36 (1) TMA are not met? ➢ Problem with Sec 36 (1) no. 1 TMA? => Solution in Sec 36 (2) TMA! ➢ Problem with Sec 36 (1) no. 2 TMA? => Solution in Sec 36 (4) TMA! ➢ Problem with Sec 36 (1) no. 3 TMA? => Solution in Sec 36 (3) TMA! ➢ Problem with Sec 36 (1) no. 4 TMA? => Solution in Sec 36 (5) TMA! Section 36 Examination of the conditions of filing (1) The German Patent and Trade Mark Office shall examine whether 1. the application for the trade mark satisfies the requirements for the accordance of a date of filing in accordance with section 33 (1); 2. the application complies with the other conditions of filing; 3. the sufficient amount of fees has been paid; and 4. the applicant may be a proprietor of a trade mark in accordance with section 7. (2) If deficiencies of the application ascertained in accordance with subsection (1) no. 1 are not remedied within a period set by the German Patent and Trade Mark Office, the application shall be deemed to have been withdrawn. If thedeficiencies ascertained are remedied within that period, the date on which the deficiencies were remedied shall be accorded as the date of filing. (3) If class fees are not subsequently paid within a period set by the German Patent and Trade Mark Office, or are not paid in a sufficient amount, or if the applicant does not specify which goods or service classes are to be covered by the amount of fees paid, first the leading class and then the other classes shall be accounted for in the order of the classification. In other respects, the application shall be deemed to be withdrawn. (4) If other deficiencies are not remedied within a period determined by the German Patent and Trade Mark Office, the German Patent and Trade Mark Office shall refuse the application. (5) If the applicant cannot be a proprietor of a trade mark in accordance with section 7, the German Patent and Trade Mark Office shall refuse the application. 17 5. Preconditions, scope and restrictions of the protection of trademarks (2) 5.1 Subject of protection of the property right, Sec 3 (1) TMA Section 3 Signs eligible for protection as trade marks (1) All signs, particularly words including personal names, designs, letters, numerals, sounds, three-dimensional designs, the shape of goods or of their packaging as well as other wrapping, including colours and colour combinations, may be protected as trademarks if they are capable of distinguishing the goods or services of one undertaking from those of other undertakings. P.: Worldmarks (monogram, letter mark, letterhead logo) All customary forms of representation have to be considered 【subtitle】does it makes sense when you have just a word to protect only a certain to type of writing, or does it make you more sense to pack every kind of protection? (Does it make more sense to protect a specific type of writing or to package every single word to protect it?) when you're having a physical product and you want to put your trademark apple on it, but you don't write it like apple does it with a capital A and “pple” in small letters, but you just write it with only capital letters, didn't make any difference.Summary：(Upper and lower case letters do not justify distinguishing a trademark because it does not affect comprehension.) P.: Figurative marks 图形商标 Scope of protections is limited to the specific color request in registration 【subtitle】I think it's limited to the specific color that it is registered. Because the consumers remember the specific colors and they don't want to change it. 5.2 Special grounds for exclusion from protection under Sec 3 (2) TMA Section 3 (2) Signs consisting exclusively of shapes or other characteristics 1. which result from the nature of the goods themselves; 2. which are necessary to obtain a technical result; or 3. which give substantial value to the goods shall not be capable of being protected as trademarks. 18 【subtitle】these are special grounds for exclusion of protection. 1. The shape or character of the goods themselves The goods specific form, Sec 3 (2) no. 1 TMA = Excluded from protection are signs which consist exclusively of shapes or other characteristic features which are due to the nature of the goods themselves Extensive Interpretation by the CJEU: the ground for refusal already applies if the sign represents characteristics of the product which are typical for the type of product Rittersport-case: The Federal Court of Justice (BGH) found, that the shape of the packing simply followed the shape of the product => No protection under trademark law 【subtitle】The shape of the packing is depose the shape of the product, we cannot have trademark Protection. Even if you have any kind chocolate bar, it's. more or less in some quadrangle form, so you can't think of any different form. 2. Technically necessary forms The technically necessary form, Sec 3 (2) no. 2 TMA = Trademark protection is excluded if the sign consists exclusively of shapes or other characteristic features necessary to achieve a technical effect  In order to examine the functionality of a sign, the essential characteristics of a shape must be assessed with regard to the technical function of the specific product in question  Rubik's cube: Is the technical function of a three-dimensional puzzle protectable as a trademark? 【subtitle】You can only map the course if you have again this 3 dimensional form. So they need simply need to have a certain form. And now if this is technically necessary, of course you cannot protect that as well. (You can only realize the effect if you have a three-dimensional form. So they need to have a certain form. It's technically necessary and certainly not protectable under trademark law.) 3. Having substantial value The value-based form, Sec 3 (2) no. 3 TMA = Trademark protection does not cover the substantial value that it gives to the product  However, the aesthetic value must be so important that the public sees the aesthetic 19 design itself as the actual tradable good  Possible criteria: Nature of the category of goods in question; artistic value of the shape in question; distinctiveness compared to other shapes commonly used in the respective market; significant price difference compared to similar products; elaboration of a marketing strategy that highlights the aesthetic qualities of the respective product 【subtitle】can be protected as copyright or design. 5.3 Proprietors of filed and registered trademarks, Sec. 7 TMA  Natural Persons  Legal Persons  Partnerships in so far as they are equipped with the capacity to acquire rights and enter into liabilities 【subtitle】Basically anyone can be a trademark owner 5.4 The representability of the mark in the register, Sec 8(1) TMA Section 8 Absolute grounds for refusal (1) Signs eligible for protection as a trade mark within the meaning of section 3 which are not capable of being represented on the Register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of protection shall be excluded from registration. 【subtitle】only once in the register that is important. And 2 principles follow from that. The first one is the principle of irreversible that they might apply before. So due to the fact that we have definitely leave established a trademark, we cannot change it afterwards. So we can apply it for another trademark for protecting, but we cannot change the already existing trademark. Because your trademark is actually assigned to distinguish yourself from other companies. And no one would recoginse you if you change your trademark. Then this distinctive character would not be there anymore. So it just wouldn't make sense to allow that. the content authorities and the public must be able to clearly and unambiguously. Determine the subject of Protection just from what is in your registration. And just from what is in your register, it must be able to assess the scope of protection of this specific framework.  Requirement of particularity of the representation of the mark, Sec 32 (2) 20 no. 2 TMA = the subject matter of the application must be sufficiently, concrete, clear, unambiguous and self-contained => not merely abstract, arbitrary or otherwise indefinite Section 32 Requirements concerning the application (2) The application shall contain: 1. a request for registration, 2. information permitting to identify the applicant, 3. a representation of the trade mark, which is not subject to the ground for refusal specified in section 8 (1), and 4. a list of the goods or services for which registration is being requested.  CJEU: “The requirement of graphic representation serves, in particular, the purpose of defining the mark itself in order to determine the precise subject matter of the protection which the registered mark confers on its proprietor” CJEU:  To be assessed in the individual case 5.5 Absolute grounds for refusal, Sec 8 (2) TMA Section 8 (2) The following trade marks shall not be registered 1. which are devoid of any distinctive character for the goods or services; 2. which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, or other characteristics of the goods or services; 3. which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services; 4. which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services; 5. which are contrary to public policy or to accepted principles of morality; a) lack of distinctive character, Sec 8(2) no.1 TMA  Comprises all circumstances under which the addressed public does not perceive a sign as an indication of origin 21  Normative understanding = the inherent (concrete) capacity of a sign to be perceived by the public as a means of distinguishing the goods/services in question as originating from a particular company and thus distinguishing those goods/services from those of other companies 【subtitle】 In order to assess the distinctive character, we have to look at every possible branch economy and not just at the branch of the company provides products or services. we have to not assess that from our own view, but from the point of view of the public. b) Descriptive indications, Sec 8 (2) no. 2 TMA  Indications, which are used in a descriptive manner at the time of filing the application  Serve in trade to designate the kind, quality, intended purpose or other characteristics of the goods or services claimed (Used in trade to designate the type, quality, intended purpose or other characteristics of the goods or services for which a claim is made [Identification criteria])  Aim: all signs or indications describing characteristics of the claimed goods/services should be freely usable by all economic operators  Signs or indications which are customary in the current language or in established practices of the trade to designate the goods at the time of filing the application for registration, are not subject to protection At the time of filing the application for registration, signs or marks customarily used for the designated goods in the language in force or under established trade practices are not protected  Generic designations or generally linguistic or customary designations for the goods/services (Common name or common language or customary name of goods/services)  Only excluded from registration if they are used by several companies to designate certain goods/services 【subtitle】It is just information, actually, and we can't protect information on the intellectual property law. 实际上，这只是信息，我们不能用知识产权法来保护信 息。 Example: It's about chocolate brand that is called Kinder, and “kinder” in German is for children. Now the problem is that everybody else like the junior public even me we also use the “kinder” for our children, of course now if we would protect kinder then we would have a big problem in our side, because what the company means with kinder is actually that they don't want to sell the product especially to kinder, cause seems to be 22 quite tasty for the for everyone. And now if, you would protect the common designation like kinder. And we would have a problem now every day. The teacher did not go into detail on the rest of the classifications, so you can interpret Sec 8 (2) TMA on your own. c) Exemption: establishment of the TM within the affected trade circles, Sec 8 (3) TMA (3) Subsection (2) no. 1, 2 and 3 shall not apply if, prior to the point in time of the decision on registration, the trade mark has become established in the affected trade circles in consequence of the use made of it with respect to the goods or services for which the application was filed. (Subparagraphs 1, 2 and 3 of paragraph (2) shall not apply if, before the decision to register is made, the mark is already established in the affected commercial circles by virtue of its use for the goods or services for which the application is made.)  Applicable only to Art. 8 (2) no. 1, 2, 3 TMA! Only applicable to -- Sec. 8 (2) no. 1, 2, 3 TMA！ (1. which are devoid of any distinctive character for the goods or services; 2. which consists exclusively of science indications; 3. which consists exclusively of sign notifications which have become customary in the current language.) Example: Kinder-chocolate  Kinder=Children=>simple description of possible consumers  Basic principle: no protection due to Sec 8 (2) no.2 TMA  Exemption: Sec 8 (3) TMA => “everybody knows Kinder-chocolate” Relevant point in time: filing with the Trademark Office 相关时间点：向商标局 提交申请 d) Deceptive signs, Sec 8 (2) no.4 TMA 欺骗性标志  Signs that are likely to mislead the public, e.g. about the nature, type, composition and effect, geographical origin of the goods/service  The perception of the average consumer is decisive (covered earlier, not in detail here) 5.6 Absolute grounds for refusal, Sec 10 TMA Section 10 Well-known marks 23 A trade mark shall be excluded from registration if it is identical with or similar to an earlier trade mark that is well known in Germany within the meaning of Art. 6 of the Paris Convention and if the further prerequisites of Sec 9 (1) no.1, 2 or 3 TMA are met. If the other prerequisites of Article 9(1), paragraph 1, 2 or 3 of Article 6 of the Paris Convention are met, the mark will be excluded from registration. 【subtitle】the registration shall be excluded with the trademark similar to a market that is well known before. (Similarity to prior trademarks with high market recognition should be excluded from registration.) 5.7 Relative grounds for refusal, Sec.9 et seqq TMA Section 9 Trade marks that have been filed or registered as relative grounds for refusal (1) The registration of a trade mark may be cancelled 1. if it is identical to an earlier trade mark applied for or registered and the goods or services for which it was registered are identical with the goods or services for which the earlier trade mark was applied for or registered; 2. if a likelihood of confusion exists, including the likelihood of association between the trade marks, for the public because of its identity with or similarity to an earlier trade mark applied for or registered and owing to the identity or similarity of the goods or services covered by both trade marks; or 3. if it is identical with or similar to an earlier trade mark applied for or registered if the earlier trade mark is a trade mark which has a reputation in Germany and the use of the registered trade mark would without due cause take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark which has a reputation. 【subtitle】 These conditions are so abstract that the authorities generally follow article 8 in their judgment, rather than article 9. 5.8 Registration and publication, Sec 41 TMA Section 41 Registration, publication and trade mark information (1) If the application satisfies the requirements for application, and if it is not refused in accordance with section 37, the trade mark applied for shall be entered in the Register. 24 (2) The registration shall be published. Publication may be in electronic format. (3) For further processing or use for the purposes of trade mark information, the German Patent and Trade Mark Office may transmit the information recorded in the Register to third parties in electronic format. The transmission shall not take place in so far as inspection is excluded pursuant to section 62 (4). 【 Summary 】 The procedure of registration, less important. At this point, the trademark registration is complete. 6. Existence and cancellation of the trademark 6.1 Registered trademark Section 47 Duration of protection and renewal (1) The duration of protection of a registered trade mark shall be 10 years, calculated from the date of filing the application (section 33 (1)). (2) The registration of the trade mark shall be renewed for a further ten years, at the request of the proprietor of the trade mark or any person authorised to do so by law or by contract, provided that the renewal fee has been paid. (3) The renewal of the duration of protection may also be effected by payment of a renewal fee and a class fee for each class to be renewed as from the fourth class of the classification of goods and services. Receipt of payment is deemed to be a request by the proprietor of the trade mark or an authorised person in accordance with subsection 1. Begin of TM Protection: date of filing (Sec 47 TMA), payment of application fee, filing of an application meeting the minimum requirements of Sec 32(2) TMA. 2. Term of TM protection: 10 years, Sec 159(1) TMA (Duration of protection 10 years) 3. BUT: The validity of a registered trademark can be extended at will by paying renewal fees (Sec 47 TMA) 【subtitle】So basically we can protect our trademark forever if we are applying on time and pay the respect fees. And this is the reason why there's actually no end to trade my Protection, at least in theory. 4. At the request of the proprietor of the trade mark, the registration shall be cancelled in the Register at any time for all or for a part of the goods or sevices in respect of which it is registered, Sec 48 (1) TMA (At the request of the 25 owner of a trademark, a registered trademark may be cancelled in the register at any time for all or part of the goods or services for which it was registered.) 6.2 Used mark as a non-registered right automatically ceases to exist for the future with the definitive discontinuation of use or with the loss of validity for use (As an unregistered right, it automatically terminates in the future with the eventual discontinuance of use or loss of validity of use.) 7. Scope of protection 7.1 General requirement, Sec 14(1) TMA Section 14 Exclusive right of the proprietor of a trade mark, claim for injunctive relief, compensation claim (1) The acquisition of trade mark protection in accordance with section 4 shall grant to the proprietor of the trade mark an exclusive right. (The acquisition of trademark protection under article 4 shall confer exclusive rights on the trademark owner.) a) Existing trademark protection, Sec 4 no.1-3 TMA ◼ Registered Trademark ◼ Use Mark ◼ Mark with public recognition b) Infringing action = act of use ◼ Comprehensive understating ◼ List of possible actions in Sce 14(3) TMA. ◼ List of possible preparatory acts in Sec 14(4) TMA ◼ These acts of use are reserved to the trademark right holder! (3) (3) If the prerequisites of subsection (2) are met, it shall in particular be prohibited (If the prerequisites of paragraph (2) are fulfilled, it shall be prohibited, in particular, to) 1. to affix the sign to goods or their wrappings or packaging; (attach the logo to the goods or their packaging) 2. to offer goods under the sign, to put them on the market, or to stock them for the 26 above purposes; 3. to offer or provide services under the sign; (provision of services) 4. to import or export goods under the sign; (import or export of marked goods) 5. to use the sign as a trade name or commercial designation or part of a trade name or commercial designation; (Use of the logo as a trade or business name or part of a trade or business name) 6. to use the sign in business papers or in advertising; (use of the logo in commercial documents or advertisements) 7. to use the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising (OJ L 376 of 27 December 2006, p. 21). (use of the logo in comperative advertising in a manner contrary to Directive 2006/114/EC of the European Parliament and of the Council of December 12, 2006 on misleading and comparative advertising) c) Use in commercial transaction ◼ Activity must also be intended to promote the company’s own business purpose or that of a third party ◼ Activities in the private sphere are not included d) Identical/trademark-related use of the trademark ◼ ECJ: Use as a trademark is regularly present if the function of origin or a further function of the trademark is impaired ◼ Example 1: Use of a trademark on a scaled-down toy model => use (+), trademark-related use (-) 【subtitle】The CJEU said, well, we have a use here of course, however, it is not a trademark related use. We do not have this identical trademark related use of the trademark. (The CJEU said that there was use here, however, it was not a trademark-related use. We do not have this same trademark-related use.) But the Lecturer Has a Different Point of View：I actually can't really understand what they said that because it doesn't make any difference. I mean, it's a big trademark or small trademark to make any difference. Still it's a trademark. -- In fact, I don't really understand what they're saying, because it doesn't make any difference. I mean, it doesn't make any difference whether it's a big trademark or a small trademark. But it's still a trademark. (The facts of the case are roughly that a toymaker used another toymaker's trademark in a reduced size as its own, and that it was in the business of manufacturing similar toys and related parts) -◼ Example 2: Use of the prominent word "Maya the Bee" together with a 27 picture from the TV series on a product packaging => Use (+), trademarkrelated use (+) ◼ 【subtitle】The courts decision was along the opposite lines of Example 1 Example 3: Use of a first name for the model designation of a pair of ladies' trousers "Damen Hose Marilyn" => Use (+), trademark-related use (-) e) No consent of the trademark owner Consent is conceivable through an exclusive or non-exclusive license as well as by simple consent (Consent can be achieved through exclusive or nonexclusive as well as simple consent) 7.2 Specific requirement, Sec 14(2) TMA Section 14 (2) (2) A third party shall be prohibited in trade, with regard to goods or services, without the consent of the proprietor of the trade mark, from (prohibiting 3rd parties from trading in goods or services without the consent of the trademark owner) 1. using a sign which is identical to the trade mark for goods or services which are identical to those for which it enjoys protection; 2. using a sign if the sign is identical or similar to a trade mark and is used for goods or services that are identical or similar to those covered by the trade mark and there is a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trade mark; or 3. using a sign identical with or similar to the trade mark for goods or services if the trade mark is a trade mark which has a reputation in Germany and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark which has a reputation. (The use of a sign identical or similar to the mark on goods or services, if the mark is one that is well known in Germany and there is no justification for the use of the sign that unfairly exploits or damages the distinctive character or reputation of the well known mark.) Goods and services shall not be regarded as being similar to each other merely on the ground that they appear in the same class under the classification system prescribed in the Nice Classification. Goods and services shall not be regarded as being dissimilar from each other merely on the ground that they appear in different classes under the Nice Classification. (Goods and services should not be regarded as similar to each other merely because they belong to the same category under the classification system set out in the Nice 28 Classification. Goods and services should not be regarded as different f