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Document 82003DE1120(03)

Bundesgerichtshof, Beschluß vom 20/11/2003
I ZB 46/98

Date of document:
20/11/2003
Author:
Nationale Gerichtsbarkeiten
Country or organisation from which the request originates:
Deutschland
Form:
Entscheidungen der nationalen Gerichtsbarkeiten in Bezug auf das EU-Recht
Internal reference:
QP/04368-P1
Authentic language:
Deutsch
Link
Select all documents mentioning this document
Instruments cited:
Notes relating to the decision:
Court Judgment:
Arrêt de la Cour 08/04/2003, aff.jtes C-53/01, C-54/01 et C-55/01 - Rec.2003 p.I-03161
Descriptors:

EEC - Harmonisation of legislation ; Trade marks - Directive 89/104/EEC - Three-dimensional trade mark comprising the shape of the product - Grounds for denial of registration - Assessment of the distinctive nature of that kind of trade mark - Application of the same criteria as those applied to other types of trade marks - Taking into account the specific conditions with the sector in question
Publication:

Markenrecht 2004 p.248-250

Wettbewerb in Recht und Praxis 2004 p.761-763
Follow-up to the case by the national courts:

This ruling by the Bundesgerichtshof followed the judgement by the European Court of Justice in case C-54/01, joined to cases C-53/01 and C-55/01.

Following the judgement by the European Court of Justice, the Bundesgerichtshof ruled that the criteria drawn up to assess whether there were grounds for refusing registration due to a lack of any distinctive nature, stipulated in Article 8(2)(1)(b) of the German Trademark Act (Markengesetz), transposing Article 3(1)(b) of Council Directive 89/104/EEC, applied to three-dimensional and other categories of trademarks alike. In this context, it stated that the criteria set out in respect of brand marks could, in general, be applied to three-dimensional trademarks but that the distinctive nature of a three-dimensional trademark could prove more difficult to establish than that of a verbal trademark or brand mark. Nevertheless, any such difficulty could not be cited as grounds for rejecting registration within the meaning of Article 8(2)(1) of the Trademark Act. The Bundesgerichtshof concluded that the Federal Patents Court (Bundespatentgericht) had applied overly strict criteria pertaining to the distinctive nature of the trademark requested and that it had failed to examine the criteria not falling within the field of application of Article 3(2) of the Trademark Act. The supreme jurisdiction referred the case to the Bundespatentgericht for the latter to examine once again the grounds for refusal of the registration.
International conventions and treaties in application:

INT - Paris Convention for the protection of industrial property of 20 March 1883, Article 6d, chapter B, No. 2
Provisions of national law in application:

DE - Markengesetz, Paragraphen 3 Abs. 2 und 8 Abs. 2 No. 1 und 2