Photo of Ana Elisa Bruder

Ana Hadnes Bruder is a professional support lawyer in the Litigation & Dispute Resolution and Intellectual Property practices of the Frankfurt office.

Ana is a Brazilian and Portuguese lawyer. She is also registered with the Frankfurt bar and has the authorization to practice law in Germany. Before joining Mayer Brown, Ana gained experience representing foreign clients in judicial proceedings in Brazil and also worked as in-house counsel for a leading French company in the tourism sector in Paris, where she worked with litigation, intellectual property, internal compliance and expansion projects in Europe and Brazil. Other than German and her mother language Portuguese, she speaks English, French, Italian and Spanish.

Ana represents clients in litigation and arbitration procedures involving commercial, intellectual property, liability and antitrust matters. In the field of intellectual property, Ana advises clients regarding trademark and patent infringement proceedings, acquisition and licensing of IP rights, research and development and cooperation agreements, including any antitrust aspects involved. Ana also provides guidance in the field of data protection.

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.

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:

Athlete showing medalsThe Olympic Games 2016 which take place in Rio de Janeiro, Brazil, from 5 to 21 August are supported by a huge volume of marketing and advertising campaigns. As many countries have done before, Brazil enacted special legislation to protect the Olympic symbols and expressions specific to the games hosted in Rio. The protection offered in these Olympic-special legislations often can go beyond what would normally be available under trademark or copyright protection laws. For example, the London Olympic Games and Paralympic Games Act 2006 created a sui generis right of association to prevent the use of any representation that is likely to suggest an association between the London Olympics and goods or services.

Germany, as another example, also put some special legislation into place. However, a company that had offered “Olympic discounts” in its advertisements during the 2008 games was found not to infringe the German Olympic Protection Act. The German Federal Supreme Court ruled that, unlike trademark protection, the Olympic Protection Act did not grant legal protection to the advertising function of the Olympic symbols. Therefore, a mere time-related reference like “Olympic discounts” did not lead to infringement.

The Brazilian Olympic Act

Under the Brazilian Olympic Act (Federal Law No 12,035/2009), as amended by the Brazilian Federal Law No 13,284/2016, the Olympic symbols are granted special temporary protection. These include emblems, flags, anthems, mottos, mascots and torches used by the International Olympic Committee, the International Paralympics Committee and the Association Rio 2016, charged with the organization of the Games. The protected symbols also include various expressions such as Olympic Games, Paralympic Games and Rio 2016 – in any language. However, unlike the London Olympic Act, for example, the Olympic symbols are all subject to protection under trademark law. The protection period shall begin with registration of the symbols with the Brazilian National Institute of Industrial Property (INPI) and extend until 31 December 2016.

The use of such symbols is prohibited, even for non-commercial purposes, except if authorized by the International Olympic Committee or the Association Rio 2016. Furthermore, the act prohibits the use of terms and expressions that, albeit outside the list of protected symbols, are sufficiently similar to them to the extent that they are able to invoke an undue association of any products and services whatsoever, or even any event or company, with the Rio 2016 Games or the Olympic Movement.

During the time of protection, requests for registration of trademarks that constitute a reproduction or an imitation of the official symbols or are likely to cause any confusion or association with the organizing entities or the official symbols, shall be rejected. In addition, the INPI shall inform the responsible entity for the registration of domain names in Brazil,, of all registered trademarks, so that any requests for registration of domain names containing terms or expressions identical or similar to the trademarks be refused ex officio.

Enjoy the Games!

Even though the legislation may have arrived a bit late (Federal Law No 13,284/2016 was published on 10 May 2016), the Olympic Act provides a solid framework for the protection and enforcement of intellectual property rights related to the Olympic games. So, all that is left for corporate sponsors or fans of the Olympics is to enjoy the Games!


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.


The EU Trademark Regulation (2015/2424/EU) (the “new Regulation”) amending the Community Trademark Regulation (the “old Regulation”) entered into force on 23 March 2016. Among other things, it brought about new rules concerning the transit of counterfeit trademark goods through the EU.

The Old Rules

The transit of goods was not specifically dealt with under the old Regulation. The latter contained only general provisions about the rights conferred by a Community Trademark, and what should be considered an infringement of a trademark. Section 9 para. 2 of the old Regulation listed infringement actions that could be prohibited by the trademark owner, including, for instance, affixing the sign to goods or to the packaging thereof, offering the goods, putting them on the market or stocking them for these purposes under that sign, among others. The transit of goods from countries outside the EU through the EU territory was not included in the list of infringement actions.

Based on Section 9 of the old Regulation, the Court of Justice of the European Union issued a few decisions according to which:

  • the mere transit of products containing the trademark or a similar sign did not per se constitute a trademark infringement. An infringement would only exist if the party having requested the transit (“the shipper”) took concrete actions to put the trademarked goods on the market, for instance, by selling or offering to sell the goods within the EU during transit (C-405/03, Class Unilever case);
  • in the absence of a trademark infringement, the customs authorities would not be entitled to take action pursuant to the Regulation (EC) No. 1383/03 (now Regulation (EU) No. 608/2013) on the customs enforcement of IP rights (C-446/09 and C-495/09, Philips/Nokia cases),
  • however, trademark owners were entitled to prevent the release for free circulation of trademarked goods into the EU without their authorization, even if the goods were not yet released for consumption, but instead were detained in a tax warehouse until the import duties were paid (C-379/14, Bacardi case).

The trademark owner was the one bearing the burden of proving the trademark infringement.

The New Regulation

Under the new Regulation, trademark owners are now expressly allowed to oppose the transit of goods bearing without authorization the EU trademark or a sign essentially similar, even if the goods are not released for free circulation or intended to be put on the European market. This new rule is codified in Section 9 para. 4 and also specifically addressed in Recital No. 16 of the new Regulation. Trademark owners may further contest other customs situations such as transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission. Customs authorities are entitled to take the actions laid down in the Regulation (EC) No. 608/2013 on the customs enforcement of IP rights, such as detaining shipments suspected to infringe a EU trademark.

However, Section 9 para. 4 also establishes that such a right of the EU trademark owner shall cease to exist if, during the proceedings to determine whether the trademark has been infringed according to the Regulation No. 608/2013,  the shipper provides evidence that the trademark is not protected in the country of final destination. According to Recital No. 17 of the new Regulation, this rule is intended to strike a balance between fighting counterfeiting and the need to protect the free trade of legitimate goods.

New Challenges for Trademark Owners?

At first glance, the new rules seem to strengthen the rights of trademark owners. However, the changes might also create difficulties, especially in cases in which the final destination of the goods is not declared in the customs declaration. In this case, in practice, the trademark owner will not know whether or not it is entitled to have the customs authority detain the shipment. If it decides to have the shipment seized and start infringement proceedings, it will run the risk that the shipper declares a country of destination in which the trademark is not protected. This might expose the trademark owner to the risk of liability towards the shipper.

iStock_000052002718_XXXLargeOn 11 April 2016, the German Federal Cartel Office (FCO) announced that the German League Association (Ligaverband) and the German Football League (Deutsche Fußball Liga, DFL) have committed that no single pay-TV buyer can win exclusive live broadcasting rights to Bundesliga league games for the 2017/2018–2020/2021 seasons. The FCO made this “No Single Buyer” rule a precondition to green-light the proposed tendering model. Currently Sky Deutschland holds all domestic live broadcasting rights for Germany’s top football leagues until the end of the 2016/2017 season, having won the last tender in 2012.

Sources say that the DFL opposed the “No Single Buyer” rule, but the FCO stood firm in this effort to foster competition. FCO president Andreas Mundt voiced concerns that, as long as there was only one holder of live rights in the market, innovative competition—especially from internet-based broadcasters—might be restricted.

The DFL will be inviting tenders for 17 different audiovisual media rights packages, eight of which concern domestic live broadcasting. The tendering model sets forth that if one bidder acquires all live broadcasting rights packages to the Bundesliga games, an over-the-top (OTT) package will be offered. This OTT package will include the rights for live transmissions of three games per match day (one on Saturday, two on Sunday), but only via the web and the mobile web. So:

  • either the rights to transmit Bundesliga live games across all technologies—satellite, DTT (digital terrestrial transmission), cable/IPTV (Internet Protocol Television), web and mobile web—are allocated among different providers
  • or, in case of a single buyer of all live packages, one third of the games can be watched via web and mobile-web streaming on a second provider’s platform.

If the live packages were divided among different providers, consumers would not necessarily need to subscribe to more than one pay-TV service to view all of the games. A single provider could still offer all live broadcasts by sublicensing any rights it did not win itself.

What’s Next?

The DFL said on its website that it aims to conclude the auction of Bundesliga live broadcasting rights for the 2017/2018–2020/2021 seasons in early June 2016, before the start of the UEFA Euro 2016 football tournament. Experts expect the DFL to generate 1.1–1.5 billion euros per season from the broadcasting rights.

iStock_000019326034_LargeThe EU Trademark Regulation (2015/2424/EU) amending the Community Trademark Regulation entered into force on 23 March 2016 (the “new Regulation”). The new Regulation is part of the EU trademark reform legislative package that also includes the replacement of the existing EU Trademarks Directive (2015/2436/EU). Some of the main changes brought about by the new rules are briefly outlined below.

Name Changes

In order to adapt the terminology to the Lisbon Treaty, Community Trademarks (CTM) are now called European Union Trademarks (EUTM), and the Office for Harmonization in the Internal Market (OHIM) has been re-named the European Union Intellectual Property Office (EUIPO).

New “One-Fee-per-Class” System for Applications

Until recently, the basic application fee covered up to three classes of goods or services. If the applicant wished to register the trademark in one class only, it still had to pay the basic fee. The new Regulation now introduced a new “one-class-per-fee” structure. Additional fees must be paid for each class beyond the first.

The basic fee for an electronic application covering up to three classes under the old rules amounted to EUR 900. The fee for each additional class was EUR 150. Under the new Regulation, the basic fee for one class is EUR 850. The fee for two classes corresponds to EUR 900, and for three classes, EUR 1,050. The fee for each subsequent class remains EUR 150.

These new fees also apply to the renewal of trademarks, which under the old rules amounted to EUR 1,350 up to three classes and EUR 400 for each subsequent class.

Opposition, cancellation and appeal fees have also been reduced.

New Scope of Protection for Class Heading Designations

It used to be common practice of trademark applicants to use class headings of the Nice Classification to designate the goods or services for which protection was sought. Class headings, in effect, were considered by the OHIM to protect all of the goods and services within a particular class (the so-called “class-heading-covers-all” approach).

A decision by the Court of Justice of the European Union (CJEU) dated 19 June 2012 changed this approach. The Court decided that an applicant using the general indications of a particular class heading must specify whether its application is intended to cover all of the goods or services included in the alphabetical list of the particular class, or only some of those goods or services (C-307/10, “IP Translator”, para. 61). This decision thus limited the “class heading-covers-all” approach to cases in which the applicant clearly expressed the intention to cover all of the goods or services in a particular class.

This principle has now been adopted by the new Regulation, according to which the use of class headings shall be interpreted as including only the goods or services clearly covered by the literal meaning of the indication or term used (Article 1(28) No. 5 of the new Regulation, amending Article 28 No. 5 of the Regulation 207/2009/EC).

This new rule entered into force on 23 March 2016. However, owners of trademarks applied for before 22 June 2012 that utilize the entire class heading of at least one Nice class are given the opportunity to declare to the EUIPO until 24 September 2016 that they would like to add further goods and services to their registration in order to conserve the originally intended scope of protection. This may compensate for the narrowing of scope otherwise caused by the new interpretative practice. If no such declaration is filed, the registration will only cover the goods and services that fall within the literal meaning of the terms used.

The potential amendments to the trademark register following trademark owners’ declarations might lead to disputes between such owners and undertakings having registered identical or similar signs at a later date for specific goods or services within the class. The solution of such cases is likely to depend to a great extent on the circumstances of each case.


The new rules will have a significant impact on EUTM owners and undertakings seeking to apply for trademark protection in the EU. Future blog entries will deal with some of the further changes accomplished by the new Regulation, concerning, for instance, anti-counterfeiting provisions of the new Regulation, and the possibility to protect as trademarks signs that are not capable of being represented graphically, such as, potentially, tastes or scents.


The Diary of a Young Girl, written by Anne Frank between 1940 and 1944 while she was in hiding, is widely considered a touchstone of both literature and history. Anne Frank and her family hid from the Nazis in the occupied city of Amsterdam during World War II. They were ultimately discovered, and Anne died of typhus in the concentration camp of Bergen-Belsen in 1945.

After the war ended, the pages of the diary were found in their hiding space and eventually given to Anne’s father, Otto, the lone surviving member of the family. Otto compiled the pages and edited the manuscript to remove certain material, and the manuscript was published in 1947. Additional editions have since been published that restored the edited material. Since its first publication, The Diary of a Young Girl has sold more than 30 million copies and has been translated into more than 70 languages.

Now, 70 years after Anne Frank’s death, her diaries have spawned some copyright controversy. Copyrights in Europe generally expire 70 years after the author’s death (cf. Art. 64 of the German Copyright Act; Art. 1 of Directive 2006/116/EC). Because Anne died in 1945, her work was expected to enter the public domain on 1 January 2016 – but it might not happen.

On 17 November 2014, the Anne Frank Foundation – a non-profit organization that administers the copyrights on all of Anne Frank’s writings – issued a statement that people would be “wrong to assume that the copyrights to Anne Frank’s Diaries would be due to expire in the near future, or that anyone would be free to use and publish them without permission.” The foundation claims that copyrights were earned by Otto Frank and Mirjam Pressler for two versions of the diaries that they edited and that were published in 1947 and 1991, respectively. Both editors significantly revised the original diaries and, thus, should each be considered a co-author of the work. The copyrights to the adaptations by Otto Frank and Mirjam Pressler, which are the property of the foundation, would not expire until much later: Otto Frank died in 1980 and Mirjam Pressler is still alive.

Final Remarks

It will be difficult to establish whether the editors contributed to Anne Frank’s diary in a way that was meaningful enough to make them each a co-author. The question of co-authorship will ultimately depend on the editors’ intellectual contribution to the diary, which can only be assessed by determining the full extent of their contributions to their respective editions.

In any event, the alleged co-authorship of Anne Frank’s father and Mirjam Pressler will have no bearing on the diary’s copyright term in the United States. Works originally copyrighted after 1922 and renewed before 1978 were given a copyright term of 95 years (a first term of 28 years plus a renewal term of 67 years) from the end of the year in which they were originally secured. Since the English version of the diary was registered (and published) in 1952, it will remain under copyright until 2047. The original Dutch version was registered (and published) in 1947 and its copyright term will expire in 2042.

iStock_000074680895_LargeOn 21 October 2015, the German Federal Court of Justice ruled that a bank cannot refuse to disclose personal data of a client if that client’s bank account was used to receive payments ‎for the sale of counterfeit trademark goods. In this case, the fundamental right of the trademark holder to protect its intellectual property prevailed over the banks’s right to secrecy.

Plaintiff is Coty Germany GmbH, a licensee for the production and sale of “Davidoff” perfumes. Defendant is the German bank Stadtsparkasse Magdeburg. A seller offered on eBay a knock-off of the “Davidoff Hot Water” perfume while using the wordmark “Davidoff” to advertise its sale‎. Plaintiff made a trap purchase and wired the money to the bank account that the seller had indicated on eBay. However, because the seller used a pseudonym, its identity remained unkown to Plaintiff. Plaintiff thus asked the bank to disclose the name and address of the bank account holder, pursuant to Section 19(2) No. 3 of the German Trade Mark Act (MarkenG) (right to information). The bank refused this request, arguing that because it was obliged to keep this information confidential, it was allowed to refuse disclosure, pursuant to Section 383(1) Nr. 6 of the German Code of Civil Procedure (ZPO) and to Section 19(2) of the German Trade Mark Act (right to refuse disclosure of information)‎.

The Directive 2004/48/EC on the enforcement of intellectual property rights (“the Directive”) contains a provision concerning the right to information (Sections 8(1)(c)). Nevertheless, according to Section 8(3)(e) of the Directive, the right to information is without ‎prejudice of statutory norms for the protection of confidentiality of information or personal data. The Federal Court of Justice sought guidance from the Court of Justice of the European Union (“CJEU”) on how to interpret these provisions (C-580/13). The latter decided that a statutory provision allowing banks to generally and unconditionally refuse requests for disclosure of information would go beyond the content of what is necessary to achieve the purpose underlying Section 8(3)(e) of the Directive. Such a statutory provision would  contradict other basic principles and rights, as it would not leave any room for the analysis of whether in a particular case there was an intentional misuse of a third party’s right. Whether the provisions of national law contain such a right to unconditionally refuse disclosure is to be decided by the national courts on a case-by-case basis.

On this basis, the Federal Court of Justice decided that in the case at hand, given that the bank account had been used specifically for the IP-infringing activity, the bank is not entitled to evoke its confidentiality obligation in order to refuse disclosing the information requested. The right of the bank account holder of having its personal data protected must recede behind the right of the IP right holder of protecting its intellectual property.


The provisions of the Directive and of ‎German law establish a priority of confidentiality of information and protection of personal data as opposed to an IP right holder’s right to information. In the case at hand, interestingly, the decision of the Federal Court of Justice went the opposite way and granted priority to the right to information. The rationale behind the decision is that in this particular case, the person whose personal data would have been protected by confidentiality had infringed a third party’s IP right. The infringer’s right to protection of its personal data was thus no longer on an equal footing with the IP right holder’s right to information. In these conditions, the generic legal rang between right to confidentiality and right to information could not be followed by the Federal Court of Justice.


The exclusive rights conferred by a patent may be subject to limitations based on competition law. For example, patents that have been declared essential to an industry standard (so-called standard essential patents, “SEP(s)”) shall be made available for licensing to all third parties under fair, reasonable and non discriminatory (“FRAND”) terms in order to comply with Article 102 of the Treaty on the Functioning of the European Union (“TFEU”) which sets forth that any abuse of a dominant position within the internal market shall be prohibited. This interface between patent and competition law is an area of potential friction and has been a matter for the courts for some years.

On 16 July 2015, the Court of Justice of the European Union (“CJEU”) (C-170/13) issued a ruling that provides guidance on some issues, in particular, on how courts should deal with patent holders seeking injunctions on the basis of an (alleged) infringement of a SEP. The case involves Chinese telecommunication giant Huawei asserting a European patent, allegedly essential to the ‘Long Term Evolution’ (LTE) standard, against Chinese rival company ZTE. Huawei is a member of the European Telecommunication Standards Institute (“ETSI”), notified the patent to that institute and, thus, made a commitment to grant licenses to third parties on FRAND terms pursuant to the ETSI Intellectual Property Rights Policy. Since discussions between the parties regarding the conclusion of a licensing agreement on FRAND terms were unsuccessful, Huawei brought an action for infringement against ZTE before the District Court of Düsseldorf, seeking, inter alia, an injunction prohibiting continuation of the (alleged) infringement. The District Court stayed the proceedings and asked the CJEU to provide guidance on whether and under which circumstances this conduct of Plaintiff – the assertion of SEPs subject to FRAND commitments – could be considered an abuse of a dominant market position.

Previous decisions in this regard: The German “Orange Book” decision

In a decision issued on 6 May 2009 (KZR 39/06), known as the “Orange Book” decision[1], the German Federal Court of Justice (“BGH”) ruled that a SEP holder may file an action for injunctive relief without any prior duties to actively engage in licensing negotiations. The alleged infringer may, however, defend itself by arguing that the SEP holder refuses to license the SEP on fair and reasonable terms (so-called ‘compulsory license defense’). However, the BGH further held that a party may only rely on the compulsory license defense, if it meets the following two conditions:

(i) the party seeking the license must submit a binding and unconditional offer to the SEP holder which the latter cannot reject without unfairly hindering the party seeking the license or acting discriminatorily; and

(ii) if the party seeking the license uses the patent prior to the conclusion of a license agreement, it must pay (or at least security deposit) the corresponding license fees which would be due under such license agreement.

Essentially, these conditions would place the party seeking the license in the position it would be in, if a license had already been granted. Therefore, the party seeking the license, inter alia, would have to pay or at least deposit license fees at a point in time when a license agreement has not yet been concluded. While the BGH did not specify how the amount of license fees to be paid or deposited is to be calculated, it stated that it should be “in any event adequate”, leaving the risk to make insufficient payments or security deposits with the party seeking the license.

Previous decisions in this regard: Decisions of the European Commission

Two decisions of the European Commission (“EC”) issued on 29 April 2014 (cases AT.39985 and AT.39939) also deal with the concept of abuse of a dominant position in the context of SEPs. In both cases, the SEP holders had committed to ETSI to grant licenses under the patents on FRAND terms. The EC clarified that when a SEP holder has made such commitment and a competitor has expressed genuine willingness to obtain a license under FRAND terms, invoking the patent may constitute an abuse of a dominant market position.

While the German Orange Book Standard primarily puts the burden on the alleged infringer, the EC takes the SEP proprietor up on its responsibility to conclude a licensing agreement: the party seeking a license does neither have to submit a binding and unconditional licensing offer, nor pay (or deposit) any royalties for using the SEP in advance of the conclusion of a FRAND term license agreement. The mere willingness on the part of the alleged infringer to acquire a license on FRAND terms may be sufficient to consider an application for injunctive relief by a SEP holder an abuse of a dominant market position.

The CJEU decision

In the Huawei vs. ZTE case, if the District Court of Düsseldorf were to follow the German Orange Book decision, it would likely conclude that there was no abuse of a dominant market position, since the alleged infringer had neither made an unconditional licensing offer nor made any payments for the use of the patent. However, if the District Court of Düsseldorf was to apply the position of the EC, it would likely hold Plaintiff’s conduct an abuse of a dominant position, since Plaintiff had committed to licensing the patent on FRAND terms and the Defendant was seemingly willing to take a license under such terms.

Seeking to ensure a fair balance between maintaining free competition and the requirements to safeguard the proprietor’s intellectual property rights, the CJEU clarified the circumstances under which an undertaking can be viewed as a “willing licensee”, and which actions shall be taken by the SEP holder in order to avoid having its conduct considered an abuse of a dominant market position:

(i) a SEP holder that has committed to grant a license to third parties on FRAND terms must, prior to bringing an action seeking an injunction or the recall of products, alert the alleged infringer of the infringement, specifying why the SEP holder believes the patent to be infringed;

(ii) the alleged infringer, on the other hand, must express its willingness to conclude a license agreement on FRAND terms;

(iii) the SEP holder must then present to the alleged infringer a specific, written offer for a license agreement on FRAND terms, specifying, in particular, the royalty fee and how it is to be calculated;

(iv) the alleged infringer shall diligently respond to the SEP holder’s offer in accordance with recognized commercial practices in the field and in good faith.

If the SEP holder respects the conditions indicated above and the alleged infringer continues to use the patent and does not respond diligently to the SEP holder’s offer, then any actions of the SEP holder seeking an injunction or the recall of products shall not constitute an abuse of a dominant position. If no agreement can be reached between the parties on the amount of royalties, they may, by mutual agreement, request the amount to be determined by an independent third party (e.g. an arbitral tribunal). Another interesting issue is the affirmation of the competitor’s right to challenge the validity of the SEP. Such challenge shall have no impact on the status of the competitor as a “willing licensee”, even if licensing negotiations are ongoing.


The CJEU strikes a balance between the patent owner-friendly position taken by the BGH in the Orange Book case and the position of the European Commission. The CJEU clarifies rights and obligations of SEP holders and “willing licensees”, and provides effective guidance on how undertakings should conduct negotiations to avoid pitfalls in this area of intersection between patent and competition law.

[1] For a complete report on this decision see

Color SwatchTwo recent judicial decisions in Germany have the potential to limit the scope of protection conferred by color trademark registrations. Since color marks lack inherent distinctiveness and are, therefore, not per se registerable, the issue, in both proceedings, turned on whether the applicant had submitted actual evidence of acquired distinctiveness.

Back in 2013, the Federal Patent Court referred to the CJEU for a preliminary ruling several questions on the interpretation of Art. 3 of the Trademarks Directive (2008/95/EC). One of the questions was whether a 70 percent brand recognition was necessary to acquire distinctive character through use. In its response to this question, the CJEU (C-217/13 and C‑218/13) held, inter alia, that it was not possible to merely refer to predetermined percentages to support the conclusion that a distinctive character has been acquired through use. While a consumer survey may be one of the factors considered, it was not the only decisive criterion.

Following the CJEU’s decision, the Federal Patent Court (25 W (pat) 13/14) ruled on 8 July 2015 that a certain shade of red is to be deleted from the trademark register. It did so mainly because the Court deemed survey evidence presented by the proprietor of the mark to be of insufficient quality – even though a 67,9 percent figure was not a ground for exclusion per se. In the Court’s opinion, the conductors of the survey used so-called “leading questions” which may have suggested the desired answer. An appeal against this decision is pending before the Federal Court of Justice and is expected to further clarify to what extent surveys conducted by the parties themselves (or party-hired expert witnesses) may be suitable means to demonstrate the necessary degree of association.

In a second case, the question once again turned on the issue of whether survey evidence presented by a party was of sufficient quality to prove a color mark’s acquisition of distinctive character through use. While, on 9 July 2015, the Federal Court of Justice (Press Release No. 112/2015) stated that, in principle, a particular type of blue could have acquired distinctiveness through use if 50 percent of the relevant public associated it with the goods and services for which it has been registered, a party-submitted survey, showing a degree of association of 58 percent, was considered insufficient proof and methodologically flawed. According to the Court, since the packaging of the goods concerned is typically a combination of white and blue, all test persons should have been presented with a sample showing only the blue color instead of a blue card framed in white.

Lessons Learned

While the importance of colors in corporate branding remains undisputed, these decisions illustrate the problems that go along with registering (and enforcing) color trademarks. Even though the Federal Court of Justice stated that 50 percent, in principle, may be sufficient to demonstrate the necessary degree of association among the relevant public, the qualitative requirements that need to be placed on survey evidence (e.g. design, methodology) have not yet been established with sufficient clarity. The German rules of civil procedure are somewhat silent on that matter.