Some of the readers may remember this post referring to a special invitation for the president of the German Patent and Trade Mark Office to join proceedings before the The German Federal Patent Court ("Bundespatentgericht"). Subject of the proceedings was a request to revoke the protection granted in Germany with respect to 3-dimensional trade mark IR 869 586.

The Bundespatentgericht had raised the question whether the 3-dimensional trade mark is sufficiently and unambiguously defined and thus fulfils the requirements of graphic representation according to § 8 (1) MarkenG since only a single side view had been filed. The trade mark owner argued that the requirement of § 8 (1) MarkenG only is to be examined during the registration procedure but may not be the basis for a revocation of protection according to § 50 MarkenG.

The questions which had to be decided therefore were

1. Is the image shown above sufficient to define the scope of protection of the claimed 3-dimensional mark as it allegedly lacks any three-dimensionality?
2. Is it in general possible to claim a three dimensional mark by filing only one side view of a three dimensional object or does one only gain a “partial protection” for the side view in this case?
3. Is the unambiguous definition of a sign part of the “ordre public” according to Art 6. quinquies of the Paris Convention and may thus by a basis for a revocation of protection?

Mrs. Rudloff-Schäffer joined the proceedings and made some statements with respect to the points raised by the court in the decision back in 2010. While she mainly agreed with the court on item 3. above she had a different opinion with respect to items 1. and 2. However, the court does not seem to have been impressed by her opinion since in July this year it came to the following conclusions:

• The unambiguous definition of a sign IS part of the “ordre public” according to Art 6. quinquies of the Paris Convention and may thus by a basis for a revocation of protection.
• It IS in general possible to claim a three dimensional mark by filing only one side view of a three dimensional object. However, the representation(s) must be of a quality high enough in order to define unambiguously and legally sufficiently clear the object to be protected. So once again it is quality which counts and not quantity.
• The image shown above IS NOT sufficient to define the scope of protection of the claimed 3-dimensional mark. It lacks any three dimensional aspect or at least none is perceivable. Also the description filed with the sign ("a twig of a grapevine") is not helpful in the present case. Thus the scope of protection is not clearly defined in the present case.

As a result, the court revoked the protection granted in Germany with respect to 3-dimensional trade mark IR 869 586. The court, however, granted the applicant the possibility to appeal to the Federal German High Court ("Bundesgerichtshof") as the decision refers to questions which are of fundamental importance. Especially it may be further discussed, whether three-dimensional signs which are only filed with one representation may indeed be regarded as 3-D trade marks or as other forms of trade marks.

Apparently the applicant seized this possibility and brought the case to the Federal German High Court, where it is now pending under the file number I ZB 56/11.

So one point to be learned from this case is surely to use sharp enough images when filing for a trade mark...

Case reference: Bundespatentgericht 29 W (pat) 173/10 of July 21, 2011. The decision can be retrieved from the court’s website by following the above link.