Vereniging voor Intellectuele Eigendom (Nederlandse Groep van de A.I.P.P.I.)

“Intellectuele Eigendom”Symposium

Zeist 16 Maart 2005

The Role of the Bundesgerichtshof

in European Trademark Law

Joachim Bornkamm

I. Introductory Remarks

II. How does the Bundesgerichtshof deal with its duty under Article 234 EC?

1. Bundesgerichtshof as an example2. Some figures3. Making a selection. But how?4. Shaping the reference5. Cases referred to the ECJ by the BGH

III. Recent cases decided without a reference to the ECJ

IV. Concluding Remarks

Article 234 EC

The Court of Justice shall have jurisdiction to give preliminary rulings concerning:

(a) the interpretation of this Treaty;

(b) the validity and interpretation of acts of the institutions of the Community …;

(c) ….

Where such a question is raised before any court or tribunal of a Member State, that court or tribunal may, if it considers that a decision on the question is necessary to enable it to give judgment, request the Court of Justice to give a ruling thereon.

Where any such question is raised in a case pending before a court or tribunal of a Member State against whose decisions there is no judicial remedy under national law, that court or tribunal shall bring the matter before the Court of Justice.

Sabel BV v. Puma AGECJ Judgment of 11-11-1997

CanonECJ Judgment of 29-9-1998

Article 5(2) TM DirectiveAny Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Davidoff/GofkidECJ Judgment of 9-1-2003

Stüssy (Van Doren + Q. GmbH/Lifestyle sports +

sportswear Handelsgesellschaft mbH )ECJ Judgment of 8-4-2003

Linde, Winward, RadoECJ Judgment of 8-4-2003

GERRI/KERRY (Gerolsteiner Brunnen/Putsch)

ECJ Judgment of 7-1-2004

GERRI

GERRI/KERRY (Gerolsteiner Brunnen/Putsch)

ECJ Judgment of 7-1-2004

Article 6 - Limitation of the effects of a trade mark

1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters2. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognized by the laws of the Member State in question and within the limits of the territory in which it is recognized.

BestellnummernübernahmeBGH Reference of 2-12-2004 (I ZR 273/01)

Article 3a Directive 84/450/EEC1. Comparative advertising shall, as far as the comparison is concerned, be permitted when the following conditions are met:(a) it is not misleading according to Articles 2 (2), 3 and 7 (1); (b) it compares goods or services meeting the same needs or intended for the same purpose; (c)…; (d)…; (e)…; (f)…; (g) it does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products; (h)…

BGH GRUR 2004, 947 = WRP 2004, 1364 = NJW‑RR 2004, 1687 - Gazoz

BGH GRUR 2005, 162 = WRP 2005, 222 - SodaStream

BGH GRUR 2005, 163 = WRP 2005, 219- Aluminiumräder

BGH, Urt. v. 7.10.2004 – I ZR 91/02 – Lila-Schokolade

BGH Judgment of 3 Feb 2005 - Rainer Maria Milka

Feel free to send me an

e-mail in case you need

further information:

Joachim@Bornkamm.de