In preparation of Brexit, the European Commission published its Draft Withdrawal Agreement on 28 February 2018, which sets out the arrangements for the withdrawal of the United Kingdom (UK) and Northern Ireland from the European Union (EU). Title IV of the Withdrawal Agreement is in Articles 50 to 57 suggesting a framework for continued protection of intellectual property in the United Kingdom after Brexit.

The suggested provisions on intellectual property are preserving the interest of the industry in maintaining legal positions obtained by registered or granted EU rights. Holders of European trademarks, community designs and community plant varieties, registered or granted before the end of the transmission period (31 December 2020),shall become the holder of a comparable registered and enforceable intellectual property right in the UK. Such right is to be obtained automatically without re-examination, providing the priority of the Community right to be free of charge for the holder. Continued protection of European intellectual property rights in the UK and maintaining priority of such rights is/and was an important demand of the European IP community. An automatism providing that holders of European intellectual property rights obtain equal protection under a UK national right would ensure obtained legal positions in the respective rights and avoid cost intense Brexit filings. Whether the Commission will prevail with its demand that trademarks are not liable to revocation because the EU trademark had not been put into genuine use in the UK is to be seen.

The EC’s position however becomes clear: robust protection for EU granted intellectual property in the UK after Brexit. Therefore, the draft agreement also ensures that trademarks having a reputation in the EU shall enjoy equivalent rights in the UK and that the UK shall ensure that international registrations designating the EU continue to have the protection in the UK. For registered designs and plant varieties the term of protection shall be at least equal to the remaining period of protection under EU law and the unregistered community design shall enjoy protection as an enforceable intellectual property right in the UK. The draft agreement also provides for continued protection of databases in the UK.

The draft is yet to be discussed with the EU Council and the Brexit Steering Group of EU Parliament level before transmission to the UK. Although not every aspect has been set out to the very last detail the suggested provisions on intellectual property are a solid point of departure for further discussions and negotiations.

Christian Wulff, a former German Federal President who resigned in February 2012, caught the attention of the public in May 2015 with his announcement that he was back together with his ex-wife Bettina Wulff. Following this, the press published a photograph of him pushing a cart at the parking lot of a supermarket next to his wife, Bettina Wulff. Mr. Wulff felt hurt in his right to privacy. He filed a lawsuit aiming to prohibit the publication of this private photo. In first and second instance Mr. Wulff was successful; the German Federal Court now overruled the previous decisions and decided that Mr. Wulff’s right to privacy were not infringed by the publication of the photo.

Legal Assessment

The German Constitution protects both individuals’ private sphere and the freedom of press. Moreover, the German Copyright Act for Art Work and Photography (“Kunsturhebergesetz”) stipulates that the press may publish photos where the depicted person has agreed with its publication (Section 22). Without such consent, publication is only allowed if the image refers to history, and where no legitimate interest of the depicted person is infringed (Sections 23(1) no. 1 and Section 23(2) of the same law). The German Federal Court thus had to decide between the principles of the German Constitution, and whether the legal conditions for the lawfulness of publication of the photo without consent of Mr. Wulff were fulfilled in the present case.

On 6 February 2018, the German Federal Court ruled that the publication of the photo is lawful. The image refers to a historic figure and could thus be published without his consent, pursuant to Section 23(1) no. 1 of the German Copyright Act for Art Work and Photography. The interest in Mr. Wullf’s person has not expired with his resignation in 2012, but instead, Mr. Wulff remains a public figure, still attends public events and is recognized in his position as a former Federal President of Germany. Moreover, no legitimate interest of Mr. Wulff exists in avoiding the publication of the photo. The picture was taken in a public space and is to be attributed to Mr. Wulff’s social sphere. It does not show Mr. Wulff in an unkind or private way, but would rather convey the image of a providing father.

Another key reason for the decision of the Federal Court was the fact that Mr. Wulff informed the public himself about his private and family life not only in the past but also in the present, which shows his content to having these issues publicly discussed. Furthermore, the journalistic worth of the article is the discussion about the distribution of roles between man and woman and especially between husband and wife, which is a discussion of public interest.


Once a show-off, forever prey of paparazzi? Can – or should – the past consent of famous people to public discussions about their private life lead to their every step being followed and photographed? Most people would probably tend to answer negatively. In the present case, however, Mr. Wulff was the one who released to the press very private news about his relationship with his wife. This was the trigger to the paparazzi, as considered by the Federal Court. The present decision sends a clear sign: there is already a general public interest in following public figures; their privacy is thus already limited when compared to other people that do not occupy public positions. If they show they are open to being on everyone’s tongue, they shall carry the consequences.

Back in 2015 Constantin Film AG, the production company of the German movie „Fack ju Göhte“, filed an European Union trademark application (“EUTM”) for its movie title „Fack ju Göhte“ with the European Union Intellectual Property Office (“EUIPO”). The EUTM application was refused by the EUIPO based on an alleged infringement of public policy and common decency. On top of that, EUIPO was of the opinion that the title of the movie is an offensive insult that would damage the German highly respected writer Johann Wolfgang von Goethe posthumously. Constantin Film’s appeal against this decision was also not successful, so that they now brought that case before the General Court of the European Union.

The Facts: Protection of Word Trademarks

Since Article 7(1)(f) of the European Union trademark regulation (“EUTMR”) prohibits the registration of trademarks which infringe public policy or morality, the core key was whether the General Court of the European Union classifies the movie title as immoral in the sense of Article 7(1)(f)  EUTMR.  The purpose of Art. 7 EUTMR is in particular to ensure the public interest that adolescents will be protected from being confronted with words that are offensive or disturbing. Therefore the question whether or not immorality is given depends on the relevant public and that is the average consumer who the EUTM is meant to address.

Trademark registrations are prohibited for all signs that are degrading, vicious or racial. Since “Fack ju” can be understood as a misspelling of the expression “Fuck you”, an offensive expression that insults the dislike for another person which is usually used with the intention to hurt or degrade someone, examiners of the EUIPO saw the movie title and EUTM-application as an offensive insult of the German writer Goethe. In this respect the word „Fuck“ had already been confirmed as a violation of European trademark law in several other judgments. The EUIPO rejected in the past EUTM- applications like “fucking freezing!” and “FUCK CANCER”.

Constantin Film contradicted that the decision of whether the movie title actually conflicts with good morals or not has to be determined as a whole and not only by analyzing one part of it. They argue that the expression “Fuck you” has neither a sexual meaning nor can be considered as insulting in the present case, but is used as a synonym for school frustration in context with the word “Göhte”. It further argued that this understanding is confirmed by the cheerful and entertaining character of the movie which in no way refers to the writer in a disrespectful way.

The Ruling

As expected, the General Court of the European Union denied protection to the expression “Fack Ju Göhte” as a word trademark on 24 January 2018 and once again confirmed that immoral and degrading expressions cannot be protected by European trademark law.

The Court stated that neither the special spelling nor the intended irony can mitigate vulgarity. Moreover, a breach of public order or morality must be determined by the trademark itself and in connection with the goods and services for which it is to be registered. The goods and services in question are those of daily use, e.g. games and clothes so that not only people who watched the movie, but rather any person shall be taken as reference, and it cannot be guaranteed that these people in general would recognize the trademark as a title of a successful film and as a joke. As a result, the average consumer will rather see the sign as the commonly used English expression “fuck you”, which is immoral and therefore cannot be registered as a trademark pursuant to Art. 7(1)(f) EUTMR.




On 1 March 2018, new arbitration rules of the German Institution of Arbitration (“Deutsche Institution für Schiedsgerichtsbarkeit“, “DIS”) will come into force. The revised DIS Rules are designed to suit the needs of both domestic and international parties. They also aim to enhance the efficiency of arbitration, providing proceedings that are non-bureaucratic, flexible and open to party autonomy.

IP arbitration is a growing trend. Parties to a licensing agreement, to a technology transfer agreement or even competitors fighting over the amount of FRAND royalties for a Standard Essential Patent may wish to refer their dispute to arbitration to keep the dispute confidential and to have IP experts solve the matter as arbitrators. The DIS arbitration rules are not specific to any sector or type of dispute and are also suitable for IP disputes.

View the key amendments to the DIS arbitration rules in the following article by our Arbitration experts Dr. Mark C. Hilgard, Dr. Jan Kraayvanger, Armineh Gharibian, Dr. Nadine Pieper und Ana Bruder:

The Regulation (EU) 2017/745 on Medical Devices (MDR) entered into force in 2017. Although most of the provisions will only apply as of 26 May 2020, the time for impact assessments, such as content-related evaluations of the new legal text and approaches to the implementation of the MDR has begun. On 13 November 2017, the EC published its first roadmap for the implementation of the MDR.

The article linked below and written by our lawyers Geneviève Michaux and Chistoph J. Crützen highlights the key dates for the MDR and explains the roadmap towards implementation.

Now that the time of the year has come, it seems like everything is all about finding the perfect gift, decorating your house in the most beautiful Christmas colors, baking Christmas cookies and of course, going to Christmas markets. But even while we are enjoying the peaceful and contemplative atmosphere – and obviously to drink one or the other mulled wines we are not spared from being confronted with the German trademark law. Insofar we would like to conclude this year with  a decision of the German Patent Court which dates back to 2006, but which perfectly fits into the advent and Christmas season.

The Case

“Christkindlesmarkt” was registered as a German trade mark with the German Patent and Trademark Office (GPTO) for, among others, non-alcoholic and alcoholic beverages. On 10 December 2003, the GPTO cancelled this trade mark based on absolute grounds after a third party had lodged a cancellation request with the GPTO. The examiner of the GPTO took the view that the mark was not eligible for trademark protection, as the relevant public would perceive the mark only as an indication of goods offered on Christmas markets, which are also known as Christkindlesmarkt. The lovely street markets associated with the celebration of Christmas during the four weeks of advent have their origin in the South of Germany, but are now being held all over Germany. Accordingly, the German public would perceive products labeled with the term Christkindlesmarkt only as products which are typically offered on such Christmas markets, but not as an indication of origin for a specific undertaking. Therefore the mark should never have been registered with the GPTO.

The owner of the mark disagreed and filed a complaint against this cancellation decision with the German Federal Patent Court. The owner took the view that although Christmas markets are called “Christkindlesmarkt” in the South of Germany, this could only prevent registration of the mark for services like organizing and performing such Christmas markets, but not for the so labeled goods in question.

The Ruling

According to Section 8 (2) No. 1 of the German trade mark law (MarkenG), trade marks shall be excluded from registration which are devoid of any distinctive character for the goods or services. Accordingly, only marks with a distinctive character by their nature or by the use made of them are capable of distinguishing their goods from the goods of other undertakings and thereby capable of registration.

In this regard the German Federal Patent Court shared the opinion of the GPTO, namely that the mark in question did not fulfill the requirements of distinctiveness. It held that the term “Christkindlesmarkt” represented only a common synonym for the word “Christmas market”. The German Federal Patent Court concluded that the mark lacked distinctive character as the relevant public (in this case, the average German-speaking consumer) understood the sign Christkindlesmarkt as referring to Christmas markets (particularly to products sold on such markets). There was however no evidence that the general public would perceive the trade mark as a source-related indication of the goods and services in question. Traditionally held in the town square, Christmas markets have food, drink and seasonal items from open-air stalls accompanied by traditional singing and dancing. Popular attractions at these markets are candied and roasted almonds, traditional Christmas cookies such as Lebkuchen and of course the famous German Bratwurst. One of the other highlights of these markets is the mulled wine called Glühwein. This means in effect that when foods and beverages are labeled with the name “Christkindlesmarkt”, the public will not perceive this as an individual indication of origin of an undertaking, but rather that these goods are typical goods offered on Christmas markets.


The decision is in line with settled case law, therefore it did not come as a surprise. The term “Christkindlesmark” is in itself descriptive and lacks of sufficient distinctive character.

We wish you all a Merry Christmas and Happy Holidays!

On 21 November 2017, the German Federal Patent Court decided about a license fee for the HIV-Drug Isentress for which it has granted a compulsory license in 2016.

Background of the Case

In 2016, Shionogi & Company Ltd, owner of the European Patent EP 1 422 218, accused Merck & Co. of violating this patent by selling the HIV drug Isentress. The drug has been generating worldwide sales of around USD 1.5 billion annually since 2012. Shionogi filed a lawsuit with the Regional Court of Düsseldorf. Merck opposed by applying for a compulsory license with the German Federal Patent Court and also requested a provisional allowance order under section 85 of the German Patent Act. In a preliminary ruling, the German Federal Patent Court ordered Shionogi to grant a compulsory license to Merck & Co. The German Federal Patent Court based its decision on the fact that Merck & Co. had made a license offer to Shionogi for a worldwide license and that there is a substantial public interest due to the paramount importance of the drug for patients with HIV infections – please see our previous post on this decision for more information ( This preliminary ruling was confirmed by the German Federal Court of Justice in July 2017.

The Ruling

The German Federal Patent Court now decided about the amount of the compulsory license fee and held that Merck & Co. has to pay a license fee of 4% on the sales of the drug Isentress. The written reasons for this decision have not yet been published.

Court of Justice of The EU Ruled on Trade Marks Used Only to Indicate Quality Standards

Trade marks will not only be associated with the company they origin from, but might also be associated with certain quality or ethical standards. Certain associations are using their trade marks only to license it to producers who fulfill a certain standard. While some jurisdictions recognize such use of a trade mark as sufficient to maintain trademark protection, the European Union Trade Mark Regulation (EUTMR) does only mentioning the term “genuine use” of a trade mark. On 8 June 2017, the Court of Justice of the European Union (CJEU) has decided whether using a trade mark only to indicate certain quality or ethical standards can be seen as “genuine use”.

The Facts

The Verein Bremer Baumwolle (VBB), an association under German law, owns an individual European Union trade mark (EUTM) displaying a cotton flower. The VBB concludes license agreements under this trade mark with associated producers of textiles who oblige themselves to comply with certain quality standards concerning the cotton they use. The defendant, a German manufacturer of textiles, displayed this trade mark on its products without having an appropriate license to do so.

VBB sued the defendant for trade mark infringement. The defendant brought a counterclaim for declaration of invalidity of this trade mark. In first instance the Düsseldorf District Court found infringement , but the Düsseldorf Court of Appeals referred the case to the CJEU with the following questions: Is the use of a trade mark as a label for quality a “genuine use” in regards to an individual trade mark? Must such a trade mark be declared invalid, if the holder of said trade mark does not ensure the quality standard by carrying out periodic quality controls?

First Question

According to the CJEU, the essential function of a trade mark is to guarantee that all goods or services marked by the sign come from the same undertaking or economically linked undertakings. It might be a secondary purpose of a trade mark to ensure a certain quality, but the “genuine use” of a trade mark is only to guarantee that the goods origin from the same or an economically linked entity. Therefore, the proprietor is not using the trade mark in terms of the EUTMR, if it is only licensing the trade mark to ensure a certain quality. This is particularly relevant, because, if there is no “genuine use” of a trade mark for five years, the trade mark proprietor might face an application for revocation of its trade mark.

Second Question

In relation to the second question, the CJEU stated that an individual trade mark is not to be declared invalid, if the proprietor does not conduct quality controls on a regular basis. While this is a reason for invalidation of collective trade marks, it cannot be applied to individual trade marks because these trade marks are not designed to guarantee a certain quality standard. Individual trademarks might be declared invalid, however, if the public is made to believe that there will be quality controls while the trade mark proprietor never intended to conduct them.


The judgment is apparently guided by the fact that the EUTMR provides two specific instruments to mark products that come from certain undertakings. There is the possibility to file a collective trade mark to display that the user of the trade mark is a member of a certain association that follows certain standards. Further, as of 1 October 2017, a certification trade mark could be used to show that certain standards are met. The CJEU apparently tries to ensure that individual trade marks cannot be used to circumvent the requirements for collective and certification trade marks.

On 24 April 2017, the Beijing Intellectual Property Court (“ the Court”) published 18 classic cases concerning trademarks filed in bad faith. One of these cases dealt with a invalidation action filed by Tiffany and company (“Tiffany”), the luxury jeweler.

Tiffany prevailed in the invalidation action brought in 2013 against Chinese trademark registration no. 8009772 for “蒂 凡尼” (pronounced as “Di Fan Ni” in Mandarin) on wallpaper, carpets etc. in Class 27 in the name of Shanghai Zhendi Decoration Materials Co., Ltd. (“Shanghai Zhendi”). After the Trademark Review and Adjudication Board (“TRAB”) rejected the registration, Shanghai Zhendi appealed to the Beijing IP Court.

The Beijing IP Court held that Tiffany’s “TIFFANY” mark registered in respect of jewellery and precious stones had become well-known prior to the application date of the subject “蒂凡尼” mark. Not only is the “蒂凡尼” mark phonetically similar to “TIFFANY”, there is also only one Chinese character difference between Tiffany’s mark and the corresponding Chinese mark “蒂凡尼”. The  contested mark therefore constituted an imitation of Tiffany’s marks.

Tiffany Case Takeaway

This is a classic case about deterring bad faith registrations under Chinese Trademark Law. In deciding whether the mark concerned would mislead the public and cause detriment to the rights of the well-known trademark owner, the Court  considered all factors, such as the extent of the reputation of the well-known mark, the similarity between the marks, how related the designated goods are, the intention of the owner of the mark concerned, etc.

In the case at hand, Tiffany’s extensive and substantial use of the mark “TIFFANY” and of its Chinese mark “蒂凡尼” had resulted in a strong reputation in the market and an immediate correlation of any similar or identical mark to goods associated with the company, namely jewellery. Apart from registering the mark “蒂凡尼”, Shanghai Zhendi had also registered the English mark “DIFFANY” and the combination mark “蒂凡尼壁纸 DIFFANY” (essentially “Di Fan Ni Wallpaper DIFFANY”) and used the mark “蒂凡尼” together with “DIFFANY”. Shanghai Zhendi’s intention to ride on the reputation of Tiffany’s well-known mark could therefore not have been more obvious. The Court considered that the relevant public would likely associate the two marks, so that the source of the goods would be mistakenly be attributed to Tiffany and Tiffany’s rights would consequently be damaged.

Good News to Brand Owners

The outlined case demonstrates the Chinese Court’s determination to reject or invalidate trademarks which amount to acts of copying another’s well-known mark in bad faith. Yet this cannot be achieved without the vigilance of the legitimate trademark owners who need to be proactive, and take action as soon as such registrations are detected.

According to reports published on 11 June 2017, the German Federal Constitutional Court has requested the Federal President of Germany to refrain from signing the law that is necessary to ratify the Agreement on a Unified Patent Court (UPC). The president has agreed to comply with this request. The president’s signing is the last step required for a law to come into force after it has already passed both legislative chambers in Germany.

Reasons for the Request

The German Federal Constitutional Court has based its request on account of two challenges to the law ratifying the UPC, namely a constitutional complaint and a parallel request for expedited proceedings filed by the same complainant. The decision to ask the president to postpone the signing, indicates that the Federal Constitutional Court might not view the challenges as outright unsuccessful. The Court has not yet announced a date when its decisions will be issued.


The reasons brought forward in both challenges are unknown. Reports suggest that the challenges are based on concerns that the contemplated proceedings before the UPC might not comply with due process of law. Some voices claim that the decisions of the opposition division of the European Patent Office (EPO) would not be subject to review by state courts, and that the boards of appeal of the EPO would not be sufficiently independent from the administration of the EPO.

A Look Ahead

It is unlikely that the president will sign the law before a decision of the Federal Constitutional Court will have been handed down. Accordingly, the ratification of the UPC in Germany will likely be postponed to an unknown date.

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.