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About 100 people in total participated in the event, which was held at the German Patents and Trade Marks Office. They included judges, lawyers in private practice, in-house counsel and members of the Office. 
“It was a very knowledgeable audience, which made the event interesting for the speakers and panellists,” said Andreas Lubberger of Lubberger Lehment, one of the event organisers along with Till Lampel of Harmsen Utescher and Martin Viefhues of JONAS Rechtsanwälte. Each of the six judges spoke on a topical issue of relevance to brand owners: - Prof Dr Dr Joachim Bornkamm, former Presiding Judge at the Federal Supreme Court, discussed issues around selective distribution systems and online trade in the light of the pending CJEU case C-230/16 Coty Germany. This proved particularly interesting for the audience, and the judge described how the Advocate General’s opinion in the Coty case favoured brand owners. The CJEU judgment is expected on 6 December.
- Konrad Retzer, Presiding Judge at the Court of Appeal in Munich, analysed another hot issue for German practitioners – jurisdiction of German trade mark courts for infringements on the internet. In particular, he discussed recent trade marks and designs cases, including one at the Federal Supreme Court.
- Dr Rolf Nikolas Danckwerts, Judge at the District Court in Berlin, focused on a procedural issue that is of some concern to practitioners in Germany, namely how to treat single trade marks as an isolated issue in infringement proceedings.
- Lars Meinhardt, Presiding Judge at the District Court in Munich, addressed issues around trade mark protection for product lines in the fashion industry, and in particular whether and in what circumstances they are an indication of origin and therefore qualify as a trade mark.
- Dr Mark Lerach, Judge at District Court in Cologne, provided an update on case law on use as a trade mark and infringing use of 3D shapes and geometric formations.
- Prof Dr Franz Hacker, Presiding Judge at the Federal Patent Court in Munich, gave a thought-provoking talk on divergences between German and EU trade mark law.
Prof Hacker’s talk addressed four areas where there is the possibility of divergence: - Risk of confusion between composite marks: can the similarity/identity between descriptive or non-distinctive elements already constitute a risk of confusion? He compared cases from German courts which have answered “No” with cases from the EU courts (such as C-193/13 “nfon/fon”; C-524/12 “faircredit/fercredit“; -43/14 “ABTRONIC/TRONIC”; T-745/14 “easycredit/Easycredit”; and C-190/15 “Solidfloor[….]/SOLIDfloor”) which have answered “Yes”.
- Categories of similarity: in Germany oral, visual and conceptual similarity are assessed separately but in the EU courts there is an “overall assessment”.
- Territorial split of similarity: the Judge discussed the “Combit” referral of Düsseldorf Court of Appeal and respective CJEU judgment providing for split protection.
- Similarly, the contrast on the territorial split of acquired distinctiveness/notoriety was discussed given the Federal Supreme Court’s decision in VOLKSWAGEN/Volksinspektion and the CJEU judgment in Iron & Smith/Unilever.
There was a lot for attendees to think about after a packed day of discussions. “It was a very interesting mix of topics,” said Andreas. “We are very lucky to have a productive relationship between trade mark judges and attorneys in Germany, which we really appreciate.”
The German edition of Meet the Judges is held every two years and is organised in association with Markenverband, the German Brands Association, and the German Trade Mark Office.
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Issue 083
Intangible capital – such as branding, design and technology – contributes twice as much as buildings, machinery and other forms of tangible capital to the total value of manufactured products, according to new research by WIPO
