Download our IP brochures on design protection in Europe and trademark protection in Europe.

We will address some issues regarding the complex relationship between trademarks and designs.

We have seen a lot of cases in the past, and also recently, of conflicts between trademarks and designs involving icons such as the STABILO pencil, or the VESPA scooter, or the RUBIK’s cube.

Absolutely. It’s not only conflicts but about overlap and even overreach! I think, this comparison is fascinating because it’s not about conflicts only but about coexistence.

There are remarkable similarities between brand and design protection in Europe. Both may cover the same subject matter – the shape of a product, for example – and, once registered, both provide for EU-wide protection.

Also, when it comes to customs, both can be enforced if handled properly. As regards procedural aspects, both have the same remedy and jurisdiction. But there is one big difference between trademark and design protection.

Yes, trademarks are checked for absolute grounds while, in Europe, designs are not examined on the merits. So, you should be less sure about the scope and strength of your design right in comparison with a trademark having passed the strict office examination.

That’s true. However, with trademark owners, challenges arise post-registration: You must monitor your market and competitors and start using your mark. The scope and strength of your trademark are flexible, depending on your own efforts, whereas with designs – like patents – this is static post-registration.

In other words: While you should invest some time and money when creating a design in order to make sure it’s new and has individual character over any other prior design at the time of filing, you have to invest after filing a mark – enforcing, monitoring, advertising.

What does a perfect plan look like? Filing both IP rights simultaneously? Or would the filing of one IP right adversely affect the other one? Would it be better to wait with your trademark filing in order not to jeopardize your design filing?

I would start by filing the mark if I had to choose. There is a 12-month grace period under European design law, allowing clients to test the market. So, filing a mark during that period would not compromise the design.

That’s true, and also, there is no novelty test and no prior use defence. This means, if a third party registers your right, then that party would have the benefit of the earlier right and that must be avoided.

Thank you for your attention – we appreciate you stopping by. Should you wish to learn more, please visit our website and download our IP brochure.

Connect with Prof. Dr. Tilman Müller-Stoy: https://www.bardehle.com/en/team/mueller-stoy-tilman

Today’s quick tip is about preliminary injunction proceedings for patent infringement in Germany.

According to the established case law of the most prominent German appellate courts in Duesseldorf and Karlsruhe, a successful PI request – as a rule – requires a battle-tested patent. That means the patent must have survived first-instance opposition or nullity proceedings. The appellate court of Munich joined the club at the end of 2019, aligning its case law to Duesseldorf and Karlsruhe, and lifted a PI granted by the first-instance Munich court.

On January 19, 2021, the first-instance Munich court retaliated and challenged the appellate courts practice before the CJEU. Specifically, the Munich court referred the question to the CJEU whether the appellate courts’ practice to generally reject a PI request in case the patent in suit has not yet survived first instance opposition or nullity proceedings is in line with Art. 9 para. 1 of the European Enforcement Directive. Notably, the first-instance Munich court does not raise the question of what the appropriate alternative test for validity should be. Also, in its referral, the first-instance Munich court does not elaborate on exceptions already accepted in the case law of the mentioned appellate courts.

Thus, it remains to be seen whether the CJEU will be able to provide practically satisfying guidance on this basis. It will probably take 1.5 years from now or longer until an opinion by the CJEU will be available. In the meantime, the Hamburg courts might become the courts of choice for bringing PI requests for patent infringement in Germany as they have not yet aligned with Duesseldorf, Karlsruhe and Munich.

Connect with Dr. Christof Karl: https://www.bardehle.com/en/team/karl-christof

Hello, everyone. Many of you know that you can attack a patent by opposition proceedings or national revocation proceedings. But did you know that you can act even before a patent is granted? One such tool is called “third-party observation”, and we’re going to talk about it today. My name is Christof Karl and I’m here with my colleague Preston Richard. So, Preston, what is a third-party observation?

Many IP offices, including the European patent office, allow third parties to file observation against the patentability of an invention. This is to assist the patent examiner, but can also be used by the competitor to prevent the grant of a patent, or at least limit the scope of the invention.

And, in fact, such a third-party observation can be filed by anyone, even anonymously. The advantage of doing so anonymously is that you don’t necessarily get on the radar of the applicant as a potential infringer, or you might have a good relationship with the applicant which you don’t want to jeopardize.

But non-anonymous filing can also have its advantages. For example, a non-anonymous filing at the European Patent Office will result in expedited proceedings, therefore providing an early certainty for the client. In both cases, the party which files the observation is not informed of the outcome. Therefore, you have to monitor the progress of the application and, if necessary, file further submissions. This takes us to an important question: When to file a third-party observation, or wait for the grant of the patent and then file an opposition instead?

Well, the advantage of a third-party observation is that you can prevent that the patent issues in the first place. So, for example, if you are ready to launch a product and you identify a patent application the claims of which would cover that product, you can file such an observation, in the hope that you can, at least, reduce the scope of the claim, or even prevent that the patent is granted at all.

Another scenario where a third-party observation is advantageous or recommended is when you want to oppose based on the grounds of lack of clarity, conciseness, or lack of unity of claims. Since these objections cannot be raised in an opposition, it becomes crucial to file them in an observation before the patent is granted.

The main disadvantage of third-party proceedings is that you are not actually a party to the proceedings. That means, in a case where you need to be able to always counter any arguments made by the applicant, for example in oral proceedings, in this case, it might be advisable to hold back the additional prior art that you may have identified and not burn it in the third-party-observation. On the other hand, if you have, for example, a clearly anticipating prior-art document, putting it on file in a third-party observation may be very effective.

But it’s important to understand that both these routes can be taken. And since no official fee is involved in third party observations, it can be a low-cost option to attack an invention.

It should, nevertheless, be well-prepared, though, taking into account timing and strategy.

If you would like to know more about third-party observations, please free to contact us. Thank you.

Connect with Tobias Kaufmann: https://www.bardehle.com/en/team/kaufmann-tobias

In 1994, with its landmark decision G 1/93. the EPO’s Enlarged Board of Appeal gave birth to the principle of the “inescapable trap”: If an application is amended during prosecution with a limitation that is, post-grant, found to be not originally disclosed, and the limitation cannot be replaced without violating the prohibition of post-grant extension of protection, the patent must be revoked. Now, almost 20 years later, patents still regularly die due to this principle, with their innovative value not taken into account at all.

What can you do during prosecution to avoid that your future patents will fall into this trap?

Combine multiple dependent claims only if these are dependent upon each other.

Add features taken from the description literally to the claim. Don’t paraphrase.

Don’t add features from the drawings that are not spelled out in the description. Always check for literal support.

Irrespective of the foregoing, the most effective protection against the inescapable trap is an application that is drafted properly according to EPO disclosure practice. This includes having multiple dependencies in the claims, or in corresponding claim-like clauses in the description, and terminology in the description that does not need to be paraphrased or exchanged, when added to the claim.

Connect with Pascal Böhner: https://www.bardehle.com/en/team/boehner-pascal

What do we do if an infringement does not cover the whole product but only a part of the product? Take, for example, the light of a car, not the whole car. This has become a hot topic in patent litigation as there are new legal developments and a draft bill that is discussed. Before we speak about this draft bill, what is the current situation? Can you give us an overview?

In patent law, one has to distinguish between the various claims resulting from patent infringement. On the one hand, we have, for example, claims for recall and destruction which are excluded if they lead to disproportionate results. This is stipulated in Section 140a of the German Patent Act. And, on the other hand, we have the claim for injunctive relief which is almost automatically granted – and the chances to successfully raise a disproportionality defense are not very promising currently. There is a recent case by the FCJ, the “Wärmetauscher” case, in which the court said that you can, in principle, raise the defense of proportionality, but there are high hurdles and, in the case at hand, the application of this defense was denied. How is this in in trademark and design law?

It’s quite similar. My impression is only that it’s a more established and elaborated system. It’s not as hot, as new, as in patents. We have been discussing this for years. But as you said, we need to distinguish between recall and destruction, or damages, where you have these considerations, and injunctive relief, where it’s more complicated. Especially if you take a case, as I said before, the light of a car: Do we prevent the whole car from being distributed and manufactured, or only that light, if you cannot isolate them - you cannot take the light off the car very easily – in most cases, typically, you have the whole car being subject to a court decision.And, in some cases, granting grace periods has been discussed. Meaning that you get more time to actually comply with the judgment on the infringement, so you have more time to make changes, implement changes that are necessary. Is that something discussed in the patent bill as well?

Indeed. The draft bill suggests that the claim for injunctive relief is excluded insofar as its fulfilment would lead to disproportionate disadvantages for the infringer or for third parties considering the specific circumstances of the case. And “insofar” (in German “soweit”) indicates that the courts have discretion with regard to legal consequences, and the reasoning of the draft bill expressly mentions the possibility of ordering a grace period, for example to sell off infringing products, or to change the production so that the infringing functionality is deleted from the product.Which arguments do you have to make, and which facts do you have to present in trademark law and design law to make that case?

Infringers need to show actual facts and circumstances why complying with the court order immediately is not possible. So, the burden to show that is very high: You need to present facts and arguments showing that the change cannot be made easily and that, balancing all the interests, you need more time. For example, if you have to change your company name, your labels for products, etc., it may not be possible to make the changes now, right away. And then, you can argue “We need a grace period, we need more time to implement the changes.” And another question which is expressly mentioned in the draft bill: Can the owner of the protective right demand a compensation if the claim for injunctive relief is completely denied or partially limited, for example by means of a grace period?

There is little case law on that, confirming such of compensation. But I would say, it would be extremely difficult to get such compensation, because the claim for injunctive relief is limited insofar it would be disproportionate. So, you don’t really have a culpable infringement, which means that you would probably not get a compensation. But, if there is this draft patent bill, of course, even in trademark and design cases, there will be considerations whether we have to apply the same principles here on that topic. When exactly can we expect to have that bill in place?

That is a very good question. The draft bill is currently discussed, and a final vote by the German parliament, the Bundestag, is expected for the spring of 2021. But, of course, the wording may still change because there is an active and hot public debate. And public statements are being presented, for example, by the association of German car manufacturers. So, it will be interesting to see when and in what form there will be a change to the German law on proportionality and injunctive relief.

Connect with Dr. Georg Anetsberger: www.bardehle.com/en/team/anetsberger-georg

Learn more about patent prosecution: https://www.bardehle.com/en/competences/legal-areas/patent-prosecution

If you are active on the technology market, being sued for alleged patent infringement is a general business risk.

Of course, it is important to prepare suitable defense strategies, based on a diligently chosen design-around, or prior art that can be used to invalidate the asserted patent.

But at the same time, often literally the best defense is provided by a good offense.

If you have strong patents in your own portfolio that are crafted to provide a broad scope of protection, the threat to counter-sue can be a great lever.

Or, seen from an investment perspective: Your investments in your patent portfolio may pay off not only as a defense against being copied, but also – and this is often neglected – as a strategic defense against being sued by competitors.