1. EU trademark protection available much more cheaply
The EU Commission and EU member states have decided to reduce the fees of the EU trademark office (Office for Harmonisation in the Internal Market, OHIM) in Alicante, Spain, and to simplify the registration procedure. The Commission’s regulation (EC) No. 355/2009 of 31 March 2009 has been in force since 1 May 2009.
The legislators hope that the change will reduce administrative costs for both users and the office by simplifying the fee structure to eliminate the registration fee for an EU trademark. This means that in future only an application fee will be charged.
The regulation replaces the former fee system, which involves a fee for both application and registration of an EU trademark. Instead of the former EUR 1,750 for application and registration of an EU trademark, there is now only the application fee of EUR 1,050. For online applications, the reduction is even greater, with the previous total fee of EUR 1,600 now reduced to an application fee of EUR 900.
The Commission further expects that the simplification of the fee structure will significantly reduce the processing time for registration if no registration fee is required before registering an EU trademark.
Commissioner Charlie McCreevy, responsible for the Internal Market and Services:
“ This is good news for businesses in Europe. The substantial reduction in fees and the simplification of procedure means much more affordable and easier access to EU-wide trade mark protection. This will promote entrepreneurship and stimulate economic activity, which is essential in times of economic crisis. In particular, small and medium-sized enterprises, for which the costs and procedure of obtaining this protection are often a heavy burden, will profit from these improvements."
OHIM president Wubbo de Boer said:
"For a small company, protecting your trade mark at the Community level, protects your future right to have free access to the single European market for your goods and services. For larger companies it is an essential tool for doing business internationally."
This development should accordingly benefit small and medium-sized enterprises in particular, as trademark protection and its implementation are now more affordable.
2. Limits of the “core theory” for misspelled domains
Hanseatic Regional Appeals Court, Hamburg, ruling of 08.01.2009, Az.: 5 W 01/09
In the instant case, the Hamburg Regional Appeals Court had to rule on a special appeal, after the lower court, the Hamburg Regional Court, had rejected an application for an administrative fine under an injunction.
The injunction had been obtained by the holder of the domains “günstiger.de” and “guenstiger.de” against the holder of the domains “günstigef.de”, “günstiher.de” and “günatiger.de” for trademark violation by misspelled domains (typosquatting directed against günstiger.de). The holder sought also to proceed against the domains “gübstiger.de” and “günstigert.de” under the injunction by applying for imposition of an administrative fine.
The decisive question for the imposition of an administrative fine for violation of the injunction was whether the injunction against the domains “günstigef.de” and “günstiher.de” also extended to violations by the domains “gübstiger.de” and “günstigert.de”. This required consideration of the “core theory” which holds that an injunction covers not only the acts which are identical with the concrete violations in the operative provisions, but also violations which are “the same in essence”. The courts had the task of determining the scope of the “core area”.
In the instant case, the Hamburg Regional Appeals Court concurred with the Regional Court and denied the extension of the injunction to the domains “gübstiger.de” and “günstigert.de”- Its reasoning:
[…]
It is acknowledged that in the case of trademark infringements – depending on the circumstances – even minor modifications are frequently sufficient in specific instances to go beyond the scope of the protected trademark (here “günstiger.de” and “guenstiger.de”). This always requires comprehensive consideration of all the material circumstances, where the evident intent of the infringer to get as close as possible to the protected mark is only one of several criteria. However, an extension of the prohibition based on concrete marks which violate the holder’s rights (“gübstiger.de” and “günstigert.de”) [emphasis in original] to merely similar marks with the same quality of violation cannot be justified by the principles of the “core theory”. Otherwise, court orders would clearly be subject to the danger of becoming amorphous, and would no longer serve their primary purpose of ensuring legal certainty.
This is clear in the instant case simply from the fact that the domain names which the complainant describes as violations have 7 letters in some cases and 8 in others, and the variant characters which constitute the difference are respectively in the 9th, 7th or 4th position (“günstigef.de”, “günstiher.de”, “günatiger.de”) or an omission (“günstger.de”). […]
The complainant limited its application for good reason to two specific uses of a mark, avoiding formulate an application of so general a nature that it covers all kinds of misspelled domains as an infringement of the complainant’s mark. Such a formulation would also be virtually impossible under the principle of specificity. Ingerl, Rohnke (MarkenG, 2nd ed., §§ 14-19, marginal number 88) note correctly that the conceivable modifications of a trademark are frequently too many and diverse to be taken into account in the hearing on merit in anticipation of attempts at circumvention by the infringer. This restriction, which is inherent in the nature of the case, cannot be voided by even an extensive view of the “core theory”. […]
The only option in the instant case for the legitimate domain holder is to apply for a separate injunction against the other misspelled domains, and pursue this through the courts if necessary.
Contact:
Schollmeyer & Rickert Rechtsanwaltsgesellschaft m.b.H.
Rechtsanwalt Mike Goorman
Junkerstrasse 21, 53177 Bonn
Tel.: +49 (0)228 74 898 0
Fax: +49 (0)228 74 898 66
kanzlei@anwaelte.de