Law firm for IP strategy

Not only words, figurative elements and their combinations constitute signs that can potentially be registered as trademarks. Section 3 (1) of the German Trademark Act (MarkenG) also refers to a variety of other signs that can potentially serve as an indication of origin and for which registration as a trademark is possible, such as sounds, three-dimensional designs and colours. The following article is dedicated to the latter.

So-called repeat filings, often intended to circumvent the obligation to put the trademark to genuine use and thus taking advantage of further grace periods for the refiled trademarks, might seem attractive in particular to reduce costs. However, they also involve the risk of finding bad faith at least under EU law. The concept of bad faith is not legally defined but is shaped by the respective case-law. In this respect, the “Monopoly” Judgment of the General Court sets forth relevant principles and provides important strategic guidelines. Furthermore, the recent decisions of the Cancellation Division of the EUIPO regarding the trademarks of the famous artist Banksy representing one of his best known artworks, the Flower Thrower, demonstrate the importance of having a sound strategy behind any trademark filing. In the following, we will have a closer look at these cases to illustrate the possible risks of repeat filings and to provide some advice on risk-minimizing trademark filing strategies.

If a business is held liable by another for an (alleged) infringement of their business identifier, the question always arises as to whether and how one can defend oneself against such claims. In most cases, consideration is then given to whether the business identifier lacks the distinctive character required for its protection. Or the question is raised as to whether the business identifier is used in the course of trade for a specific business operation close enough to the other party’s business. Or the questions of priority or similarity of signs and much more is dealt with. It is relatively seldom considered whether the business identifier may not enjoy protection at all because it is misleading and how this can be most effectively asserted in court. This article sheds a little light on this topic.

The year 2024 not only provides an extra day in February, but above all one thing: sports, sports and more sports. Germany is host to two major sporting events: the European Men's Handball Championship and the European Men's Soccer Championship, making it a year filled with thrilling athletic spectacles. Then there is the European Women's Handball Championship, taking place inter alia in Switzerland and Austria, and of course the Summer Olympics in Paris. As always, numerous companies are ready and waiting to benefit from the pulling effect of such major events. Reason enough for us to shed some light on what you need to bear in mind with event-related advertising measures and what obstacles need to be overcome when it comes to so-called “ambush” marketing. We would like to take this opportunity to thank Frida Felixmüller, who joined us during her legal clerkship, for her great support with this article.