3D MARKS
as a trademark—viz, as a sign indicating that bunnies of such shape originate from the same or economically related undertakings. Interestingly, the claimant submitted a market survey which revealed that the broad majority
as a trademark—viz, as a sign indicating that bunnies of such shape originate from the same or economically related undertakings. Interestingly, the claimant submitted a market survey which revealed that the broad majority
of the public perceived the shape as a trademark. T e claimant, then, argued that, due to the similarities between the confl icting bunnies, the result could be transferred to public perception of the challenged bunny. T e Supreme Court rejected this argument, stating that such transfer was admissible only where the infringing sign was almost identical to the sign-in-suit.
Apparently, the enforcement of ‘complex’ 3D trademarks will continue to present diffi cult issues, not only in Germany but also in Europe in general.
of the public perceived the shape as a trademark. Te claimant, then, argued that, due to the similarities between the conflicting bunnies, the result could be transferred to public perception of the challenged bunny. Te Supreme Court rejected this argument, stating that such transfer was admissible only where the infringing sign was almost identical to the sign-in-suit.
Apparently, the enforcement of ‘complex’ 3D trademarks will continue to present difficult issues, not only in Germany but also in Europe in general.
Philipe Kutschke advises and litigates in IP-related matters, in particular in the fi eld of trademarks, copyrights and designs. Besides his work as a lawyer, he lectures on trademark and design law at the Technical University of Munich and regularly publishes articles concerning IP-related topics.
T e current situation for protection and enforcement of 3D trademarks consisting of the shape of a product or its packaging may be summarised as follows: ‘unusual’ shapes with inherent distinctiveness are protectable as European Community trademarks and national trademarks. When secondary meaning must be shown this will be easier on the national level than Europe-wide.
Enforcing 3D trademarks requires a showing of likelihood of confusion, which is particularly diffi cult in cases of complex trademarks made up of diff erent elements: shape, colour, etc. Protection of product shapes requires careful
Te current situation for protection and enforcement of 3D trademarks consisting of the shape of a product or its packaging may be summarised as follows: ‘unusual’ shapes with inherent distinctiveness are protectable as European Community trademarks and national trademarks. When secondary meaning must be shown this will be easier on the national level than Europe-wide.
Enforcing 3D trademarks requires a showing of likelihood of confusion, which is particularly difficult in cases of complex trademarks made up of different elements: shape, colour, etc. Protection of product shapes requires careful
3D MARKS
consideration of the available alternatives. Trademarks and designs are relevant IP rights. When it comes to litigation, the rights holder has to decide how to enforce his rights. For designs he has to make a detailed analysis of prior art to determine validity and scope of protection, the latter being ‘fi xed’ and independent from third parties’ products.
In respect of trademarks, the rights holder also has to consider third party products that are currently on the market. Although the question of whether a sign infringes a trademark is ultimately a legal issue to be assessed by the court, it is advisable to conduct a market survey regarding the allegedly infringing sign in order to demonstrate public perception of a product. ■
consideration of the available alternatives. Trademarks and designs are relevant IP rights. When it comes to litigation, the rights holder has to decide how to enforce his rights. For designs he has to make a detailed analysis of prior art to determine validity and scope of protection, the latter being ‘fixed’ and independent from third parties’ products.
In respect of trademarks, the rights holder also has to consider third party products that are currently on the market. Although the question of whether a sign infringes a trademark is ultimately a legal issue to be assessed by the court, it is advisable to conduct a market survey regarding the allegedly infringing sign in order to demonstrate public perception of a product. n
Dr Philipe Kutschke is a certified IP lawyer and commercial mediator at Bardehle Pagenberg, Munich. He can be contacted at:
philipe.kutschke@bardehle.de
Dr Philipe Kutschke is a certified IP lawyer and commercial mediator at Bardehle Pagenberg, Munich. He can be contacted at:
philipe.kutschke@bardehle.de
www.worldipreview.com
www.worldipreview.com
World Intellectual Property Review Annual 2012
World Intellectual Property Review Annual 2012
85
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