It’s not easy to think of a concept – similar to Albert Einstein’s theory of relativity – that, counterintuitively, involves the relativity of apparently fixed quantities. However, the German Federal Supreme Court (BGH) and the European Court of Justice (ECJ) may have produced such a phenomenon: their case law on the distinctiveness and thus the protectability of the names of famous buildings as trade marks. The two decisions have implications for a large number of commercially relevant cases, such as trade marks for fan merchandise or event trade marks. The lack of distinctiveness of a mark should therefore be carefully examined.
Third-party domains that are identical to your own company name not only redirect (potential) online customers to another website; they also severely impair your company’s ability to carry out effective advertising and marketing. Could an application for deletion of a domain that disrupts your business in this way assist? Or do you just have to live with the disadvantages and even change the name of your company if necessary?
A common way for a company to get rid of troublesome trade mark registrations by a potential competitor is to file for cancellation on the basis of non-use. This situation can prove particularly dangerous for companies that are in the process of developing the product for which the mark is intended. In such cases, how can genuine use of the mark be demonstrated in the product development phase? Alternatively, when is non-use justified so that the trade mark cannot be cancelled? This issue is relevant not only to new trade mark applications, but also to the acquisition of existing trade marks for a future product.
Are there any issues to consider when drawing up a list of goods that a trade mark is intended to cover? Surely cosmetics are cosmetics! Food supplements are food supplements! And medicines are just medicines! If a trade mark is genuinely used for these products, could it still be subject to revocation on the grounds of non-use in relation to a different classification of goods?… For example, if the use of a mark for food supplements is in fact a use for pharmaceuticals? Ensure you consider carefully the list of goods covered by your trade mark!
There may be a number reasons for mentioning a third party’s trade mark in your own advertising. But be careful that such advertising cannot be mistaken for that of the trade mark owner. It is also important not to mislead people about the nature of your business relationship with the trade mark owner. It is helpful to know how damages are quantified in such cases.
When formulating a new brand, developers often modify the terms of certain significant features of a product or ingredient, with this modification resulting in a new word. It is no longer simply descriptive, as would be the case if the original word was used, and it can therefore be registered as a trade mark. Problems arise when competitors have already had the same idea! Especially if they have a prior trade mark using the same or similar content. So what can one do, in this situation, to avoid getting into trouble later on? An unpublished decision of the Oberlandesgericht München (Munich Higher Regional Court), obtained by the author, provides important guidance.
Any company can opt to use a weak mark that directly highlights the special characteristics of its products or services, though such a mark may well be denied registration, because it is considered merely descriptive of products or services. But if it does make it into the trade mark register, it cannot be denied protection altogether. So is it worth taking the chance and investing in weak brands?
Climate/environmental neutrality are advertising buzzwords used to express the environmental credentials of a company. They can be found in advertisements as well as on the products themselves. Whether and when such claims are exaggerated and may mislead consumers is currently being clarified by the courts. A status update is therefore in order.
Uniqueness and memorability are the benchmark for environmental slogans. It is not easy to achieve this, but when the environmental slogan works, it communicates in a way that is hard to beat. And if it can do so exclusively, it becomes part of that brand. Stadtwerke Berlin [Municipal Utilities Berlin] believed it was home and dry with its slogan. And rightly so?
There are 2,054 folk festivals in the world called OKTOBERFEST. The oldest, largest and most famous is, of course, the Oktoberfest in Munich. So it is understandable that the city wanted to trade-mark the name of its own festival within the European Union. However, many other organisers have seen this as a threat to the identical names of their own festivals, leading them to fight the registration of the trade mark for Munich. Have they been successful?