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Click Fraud: Predicate to False Designation of Origin

by | Mar 11, 2021 |

The US Court of Appeals for the Fifth Circuit affirmed that pay-per-click advertisers may be liable under the Lanham Act for “click fraud.” WickFire, LLC v. Laura Woodruff et al., Case No. 17-50340 (5th Cir. Feb. 26, 2021) (Owen, J.)

WickFire and TriMax Media are advertisers that compete in the pay-for-performance search engine marketing business, also known as pay-per-click marketing. In this type of marketing, every time a user clicks on an advertisement, the advertiser pays the search engine (i.e., Google) a small fee. If the user makes a purchase on the merchant’s site, the merchant pays the advertiser a commission. When a pay-per-click campaign runs smoothly, the advertiser pays a small amount for a click, the click results in a sale, and the commission to the advertiser is more than the advertiser paid for the click.

WickFire filed a lawsuit against TriMax, alleging that TriMax violated Section 43 of the Lanham Act by committing “click fraud” through repeatedly clicking on WickFire’s ads without any intent to make a purchase, and created false advertisements that were made to appear as though they belonged to WickFire, among other state law claims. Section 43(a) of the Lanham Act prohibits a person from making, “in connection with any goods or services,” a “false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities.” WickFire alleged that the ads included a trademark and links to a WickFire website designed to aggregate coupons for online merchants.

The case went to trial, and a jury found for WickFire with respect to the state law claims and the false advertising claim (although it did not award any damages for violation of the Lanham Act). The jury determined that TriMax misrepresented WickFire as the source of advertisements by placing ads containing identifying information distinct to WickFire in a manner that was likely to cause confusion. TriMax filed for judgment as a matter of law and for a new trial. The district court denied the motions and entered judgment. TriMax appealed.

On appeal, TriMax alleged that WickFire’s Lanham Act claim was foreclosed by the Supreme Court’s decision in Dastar v. Twentieth Century Fox. The Fifth Circuit disagreed. The Court explained that WickFire was not concerned with protecting an original idea, as Fox attempted to do in Dastar. Instead, WickFire was trying to protect the genuineness of its brand.

TriMax next argued that it was entitled to judgment as a matter of law because the jury did not have a legally sufficient evidentiary basis to find for WickFire. The Fifth Circuit thought otherwise, holding that it did not need to decide whether the evidence was sufficient as a matter of law because the jury did not award WickFire damages to the claim. The Court noted that since the jury found that there were no damages, WickFire [...]

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Colorful Non-Functionality Argument Misses the (Design) Mark

by | Mar 4, 2021 |

Addressing the functionality of colors in design marks, the US Court of Appeals for the Second Circuit reversed the district court’s entry of judgment for a trademark owner on its unfair competition and trademark claims, ruling that where color is used as an indicator of size or parts matching, it is functional and does not qualify as trade dress. Sulzer Mixpac AG v. A&N Trading Co., Case No. 19-2951 (2d Cir. Feb. 18, 2021) (Pooler, J.)

Sulzer Mixpac and A&N Trading are competitors that manufacture and supply mixing tips, which dentists use to create impressions of teeth for dental procedures. Mixpac obtained trademarks for the colors yellow, teal, blue, pink, purple and brown (collectively, the Candy Colors) as applied to mixing tips. Mixpac filed suit against A&N, claiming unfair competition; common law trademark infringement; and trademark infringement, trademark counterfeiting and false designation of origin under the Lanham Act. A&N countersued, claiming that Mixpac’s use of the Candy Colors on mixing tips was functional and therefore not entitled to trademark protection. The district court concluded that Mixpac’s use of the Candy Colors was non-functional (based in part on the increased cost of adding color to the mixing tips, and noting that other competitors used clear tips), and entered judgment and a permanent injunction in favor of Mixpac. A&N appealed.

The Second Circuit reversed, explaining that the district court erred by failing to apply the Louboutin three-part aesthetic functionality test to Mixpac’s marks. Under the Louboutin test, to determine whether a design feature is non-functional and thus entitled to trademark protection, courts look to whether the design feature (1) is “essential to the use or purpose” of the product, (2) “affects the cost or quality” of the product, and (3) has a significant effect on competition. A&N argued that the mixing tips’ color coding helps users identify useful product characteristics, such as diameter, and that it aids users in selecting the correct tip. Applying the Louboutin test in the first instance and citing trial testimony, the Second Circuit concluded that the colors signify diameter, which assists users when selecting the proper cartridge, as the colors “enable users to quickly match the proper mixing tip with the proper cartridge, and (citing Louboutin) thereby ‘improve[] the operation of the goods.'”

Practice Note: In trade dress cases, be sure to apply the Louboutin three-part aesthetic functionality test. Failure to do so may lead to reversal on appeal. In this case, the Second Circuit noted that “[t]he district court erred because it did not apply this test when it considered only that Mixpac’s use of the Candy Colors adds to manufacturing costs and that other companies use different or no colors.”



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That’s So Metal: Ninth Circuit Confirms Standard of Review for Finding Unclean Hands on Summary Judgment

by | Mar 4, 2021 |

In a trademark infringement dispute over the brand name “METAL,” the US Court of Appeals for the Ninth Circuit resolved an issue of first impression in holding that when reviewing a grant of summary judgment on an unclean hands defense in a trademark infringement case, the correct standard of review is abuse of discretion. Metal Jeans, Inc. v. Metal Sport, Inc., et al., Case No. 19-55923 (9th Cir. Feb. 16, 2021) (VanDyke, J.) (Wardlaw, J., concurring).

Metal Jeans, an apparel brand claiming ownership of the trademark METAL, brought an infringement claim against Metal Sport, a powerlifting brand with a similar stylized mark that was also used on certain apparel items. In the district court, both parties sought summary judgment on the issue of likelihood of consumer confusion with respect to Metal Sport’s use of the METAL trademark in view of Metal Jeans’ rights in the brand name. The district court determined that material facts on the issue of infringement remained in dispute, and denied both parties’ motions on the merits. However, the district court granted a separate motion for summary judgment filed by Metal Sport claiming that Metal Jeans was barred from pursuing its infringement claim on grounds of unclean hands, while rejecting Metal Jeans’ counter-defense that Metal Sport also acted with unclean hands.

Metal Jeans appealed the unclean hands judgment, which presented an issue of first impression to the Ninth Circuit, namely the standard of review when a district court concludes that a party has acted with unclean hands. The Ninth Circuit noted that its two trademark decisions addressing unclean hands never specified the standard of review applied, and so turned to other cases in which it reviewed district courts’ application of similar equitable doctrines. With this background, the Court found abuse of discretion to be the correct standard of review.

In a separate decision memorandum, the Ninth Circuit explained that to successfully allege unclean hands, a defendant must show that the plaintiff’s conduct (1) is inequitable and (2) relates directly to the subject matter of its claims. The court also noted that factual questions related to the defense of unclean hands may only be resolved on summary judgment if evidence presented by both sides would permit the trier of fact to come to only one conclusion.

The Ninth Circuit assessed the six alleged instances of misconduct on the part of Metal Jeans, which included facts alleging that Metal Jeans provided varying accounts of how it acquired the METAL trademark and provided inaccurate or false information to the US Patent & Trademark Office, along with allegations that Metal Jeans sourced certain products from China despite its use of an “American Made” slogan. The Court determined that many of the factual allegations of unclean hands did not relate directly to Metal Jeans’ trademark infringement claims, nor did such allegations appear to have caused any harm or demonstrate malintent on the part of Metal Jeans.

Applying the abuse of discretion review standard, the Ninth Circuit determined that the district court’s findings [...]

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Agreement to One Is Not Consent to All

by | Feb 25, 2021 |

Addressing a myriad of issues involving unauthorized use of professional models’ photographs for gentlemen’s clubs’ promotional materials, the US Court of Appeals for the Second Circuit held that the district court erred in its interpretation of “consent,” and vacated and remanded to adjudicate the scope of the consent given. The Second Circuit simultaneously affirmed the district court’s dismissal of claims under the Lanham Act and New York corporate and libel law. Electra v. 59 Murray Enterprs., Case No. 19-235 (2d Cir. Feb. 9, 2021) (Pooler, J.)

Eleven famous female models, including celebrity Carmen Electra, brought claims against three gentlemen’s clubs for using photographs of the models without permission. Plaintiffs had posed for the photographs for modeling agencies and signed release agreements for those agencies to use the photos. The clubs were given these photographs through third-party contractors that used the images to promote social events, including advertisements on the clubs’ website and social media. Plaintiffs never provided the clubs with any authorization or written consent to use their photos, nor were they compensated. Plaintiffs maintained that they do not endorse the clubs and were harmed by the unauthorized use of their likeness in association with prurient activities that the clubs promote. The clubs argued that their contractors obtained the images from a catalogue source that they believed had all rights in the images.

The main issues on appeal were whether plaintiffs had provided their “written consent” to the clubs to use their photos when they signed releases with their own agencies (despite never authorizing the clubs to use the photos), and whether the releases barred their claims.

Of the 11 plaintiffs, only six were not time barred, and of those, only two had disputed terms of their agreements. The Court opined for those two plaintiffs.

Under New York Civil Rights Law §§ 50-51 (statutory right of privacy and publicity), it is a misdemeanor to “use for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person.” This protects both private individuals and those in the public eye, such as the plaintiffs, if they did not give written permission for that particular use. In deciding whether plaintiffs gave their consent for lawful use, the Second Circuit explained that there is no consent if the use exceeds the terms of the agreement, a factual inquiry into the text and terms of the releases.

The district court granted the clubs summary judgment under § 51 claims, finding that each plaintiff with a timely claim had entered into a “comprehensive” release that “grant[ed] the releasee unlimited rights to the use of the images at issue.” The plaintiffs argued that the district court erred in so finding because the record did not contain releases for the images at issue. The district court did not address whether the releases constituted written consent, but mused that it would be “inconsistent” with the statute for plaintiffs to sign unlimited releases and [...]

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Fairness Is the Limit for Asserting False Advertising Claims

by | Feb 11, 2021 |

Addressing whether Lanham Act claims for false advertising or false association under § 43(a) (15 USC § 1125(a)) are subject to a statute of limitations, the US Court of Appeals for the Fourth Circuit concluded that the sole time limit on bringing such claims is the equitable doctrine of laches. Belmora LLC v. Bayer Consumer Care AG, Case No. 18-2183 (4th Cir. Feb. 2, 2021) (Floyd, J.)

The facts of the underlying dispute are straightforward. Bayer has sold the pain reliever naproxen as FLANAX in Mexico since 1972 and in the United States as ALEVE. Belmora began selling naproxen under the name FLANAX in the United States in 2004, where it used similar packaging and described the drug as one sold successfully in Mexico. Both companies tried to register the mark with the US Patent & Trademark Office, where proceedings unfolded. Ultimately, in April 2014, the Trademark Trial and Appeal Board cancelled Belmora’s trademark registration, finding that Belmora had blatantly misused FLANAX by drawing on the popularity of Bayer’s Mexican product. Two months later, Bayer brought claims against Belmora under § 43(a) of the Lanham Act and California unfair competition law in the US District Court for the Central District of California. The suit was transferred to the Eastern District of Virginia, where Belmora moved to dismiss, arguing that § 43(a) and state law claims were barred by the statute of limitations. Bayer replied that § 43(a) had no statute of limitations, and that the time to bring the state law claims had been tolled during the Board’s proceedings. The district court granted both of Belmora’s motions, and the appeal followed.

Because there is no express statute of limitations for a § 43(a) claim, the question before the Court was whether to assume that Congress intended that the most analogous state law statute of limitations apply, or to apply either the most analogous federal statute or common law laches doctrine. “Conclud[ing] that § 43(a) is one such federal law for which a state statute of limitations would be an unsatisfactory vehicle for enforcement,” the Court held that laches was more appropriate, for primarily two reasons. First, the statutory text provides that § 43(a) damages are subject to the principles of equity, which would include the doctrine of laches. Second, the Court found persuasive the law of the Third, Seventh and Ninth Circuits, which each apply laches as to restrict the timeliness of as § 43(a) action. That said, the Court emphasized that on remand, the district court should consider the period for bringing a similar state action as part of the laches analysis, especially because the Fourth Circuit employs a presumption that claims brought after the expiration of the most-analogous statute-of-limitations are barred by laches.

The Court noted that Bayer could overcome a presumption of laches, and cited three factors for the district court to consider:

  • Bayer’s knowledge (or lack thereof) of Belmora’s adverse use
  • Whether Bayer’s delay was inexcusable or unreasonable
  • Whether Belmora had been unduly prejudiced by [...]

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A Shoe-In? Fleet Feet Gives Injunction Appeal the Moot Boot

by | Feb 11, 2021 |

The US Court of Appeals for the Fourth Circuit dismissed a preliminary injunction as moot where the enjoined party had discontinued the use complained of and had no future plan to restart it. Fleet Feet, Inc. v. Nike, Inc., Case No. 19-2390 (4th Cir. Jan. 26, 2021) (Diaz, J.) The Court denied the enjoined party’s request that it vacate the district court’s order granting the preliminary injunction despite mootness due to an ongoing litigation.

Fleet Feet is a retailer selling products related to running, including Nike merchandise. It is also a Nike competitor since Nike sells its own products. Fleet Feet obtained two trademark registrations, having already used both for years: “Running Changes Everything” in 2020, and “Change Everything” in 2015. In July 2019, Nike launched an advertising campaign with the tagline “Sport Changes Everything” scheduled to end at the February 2020 Super Bowl. Fleet Feet sued Nike for trademark infringement. The district court granted a preliminary injunction against Nike and set a $1 million injunction bond. The preliminary injunction order prohibited Nike from any use of the phrase “Sport Changes Everything” or any other designation confusingly similar to the Fleet Feet’s marks when advertising or selling goods and services. Nike discontinued its campaign two months before the scheduled end and appealed the preliminary injunction order.

Nike argued that the district court erred in its preliminary injunction factor analyses. But on appeal, the Fourth Circuit decided as a threshold matter that the end of Nike’s “Sport Changes Everything” campaign and its representation that there were no plans to use the term after the campaign rendered Nike’s appeal of the preliminary injunction “designed to interrupt that very campaign” moot. A case becomes “moot” when the “issues presented are no longer ‘live’ or the parties lack a legally cognizable interest in the outcome.” The Court found that Nike’s appeal of the preliminary injunction was nonjusticiable since there had been an event during the pendency of the appeal that made it impossible to grant effective relief to a prevailing party. Because of the conclusion of the 2020 Super Bowl and Nike’s representations that it did not plan to use the term afterwards, there was no possible relief to Nike based on the preliminary injunction’s interference with the campaign.

The Fourth Circuit disagreed with Nike that two issues remained live. First, Nike argued that the continued restraint on Nike’s speech due to the order’s prohibition of any confusingly similar designation to Fleet Feet continued to be a live issue. The Court explained that this was only a potential controversy, not a live controversy. Because Nike had not engaged in the speech barred by the order, had represented that it did not intend to do so in the future, and had not introduced any new slogans confusingly similar to Fleet Feet’s marks, no actual speech was threatened by the preliminary injunction.

Second, Nike argued that the potential recovery on the injunction bond was a live issue. Referring to the Supreme Court case Univ. of Tex. [...]

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In Setty, Ninth Circuit Signals Shift in Arbitration Landscape for Non-Signatories

by and | Feb 4, 2021 |

The US Court of Appeals for the Ninth Circuit tackled the question of whether non-signatories to an agreement may use state law doctrines to compel arbitration. Holding that the claims were insufficiently “intertwined” to permit equitable estoppel and had to be analyzed under federal law (and not state or foreign law), the Court affirmed denial of a non-signatory’s bid to arbitrate its claims for trademark infringement against one of the signatories to a contract governed by Indian law. Setty v. Shrinivas Sugandhalaya LLP, Case No. 18-35573 (9th Cir. Jan. 20, 2021) (Nelson, J.) (Bea, J., dissenting).

The dispute arose from a business partnership between brothers. Balkrishna and Nagraj Setty formed in order to continue their late father’s Indian incense business. The brothers signed a partnership deed that included an arbitration provision stating:

All disputes of any type whatsoever in respect of the partnership arising between the partners either during the continuance of this partnership or after the determination thereof shall be decided by arbitration as per the provision of the Indian Arbitration Act, 1940 or any statutory modification thereof for the time being in force.

In 2014 the brothers’ relationship fell apart, with each brother starting his own company. Balkrishna Setty and his company, Shrinivas Sugandhalaya (BNG) (SS Bangalore), brought suit against Nagraj Setty’s company, Shrinivas Sugandhalaya (SS Mumbai), for several claims, including trademark infringement. Nagraj Setty was not named in the action. SS Mumbai sought to compel the plaintiffs to participate in arbitration pursuant to the deed. The district court denied SS Mumbai’s motion, finding that only one party to the lawsuit, Balkrishna Setty, was a party to the deed and that the companies, SS Bangalore and SS Mumbai, were non-signatories. The Ninth Circuit affirmed, holding that SS Mumbai could not equitably estop SS Bangalore from avoiding arbitration. In June 2020, the Supreme Court of the United States granted certiorari, vacated the judgment and remanded for further consideration based upon its decision in GE Energy Conversion France SAS v. Outokumpu Stainless USA, LLC, 140 S. Ct. 1637 (2020).

On remand, the Ninth Circuit affirmed denial of the motion to compel arbitration. First addressing choice of law, the Court found that federal rather than Indian law should apply. SS Mumbai argued that pursuant to the deed, the Indian Arbitration Act—which provides non-signatories the right to compel arbitration—should apply. The Ninth Circuit disagreed, finding that “whether SS Mumbai may enforce the Partnership Deed as a non-signatory is a ‘threshold issue’ for which we do not look to the agreement itself.” The Court acknowledged that the deed provided exclusively for disputes “arising between the partners,” not third parties. Thus, based on the federal nature of the claims and federal question jurisdiction, the Court applied federal law, opening the door to arguments concerning equitable estoppel.

Second, discussing SS Mumbai’s equitable estoppel argument, the Ninth Circuit stated that in order “[f]or equitable estoppel to apply, it is ‘essential . . . that the subject matter of the dispute [is] intertwined with the contract providing [...]

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No More Bites at the Apple: Intervening Junior User Can Force You to Get Your Head Out of the Cloud(s)

by | Feb 4, 2021 |

Addressing how a mark’s intervening junior user’s success can affect a senior user, the US Court of Appeals for the Fourth Circuit upheld a grant of summary judgment in favor of the junior user and the issuance of a permanent injunction for any commercial use of the disputed terms by the senior user. RXD Media, LLC v. IP Application Dev. LLC, Case No. 19-1461 (4th Cir. Jan. 21, 2021) (Keenan, J.) (joined by Gregory, J., and Floyd, C.J.)

RXD and Apple (here embodied also in IP Application Development, a company formed and wholly owned by Apple for the purpose of registering the “ipad” mark) have shared a long history of trademark litigation, initiated by RXD, over the use of the “ipad” mark. Prior to this appeal, the district court ruled in favor of Apple on summary judgment and permanently enjoined RXD from commercially using the terms “ipad” or “ipod.”

RXD claimed that the district court failed to account for RXD being the “first user” of the “ipad” mark; that Apple did not establish a distinctive, secondary meaning of “ipad” before RXD’s use; that Apple failed to show a likelihood of consumer confusion based on both parties’ use of “ipad”; and that the district court erred in rejecting RXD’s claim that “two of Apple’s trademark applications were void because Apple lacked a bona fide intent to use the ‘ipad’ mark for the services listed in those applications.” The Fourth Circuit, however, was not convinced.

The Fourth Circuit found that even if RXD was technically the senior user of the mark at issue, its expanded, “wholly altered” use of the mark, which now focused on “cloud storage” services and for which it now claimed protection, was not entitled to such protection, because the use occurred “on the heels of Apple’s [i.e., the intervening junior user’s] commercial success in releasing” the iPad. By that point, Apple had already “experienced undeniable commercial success, ha[d] promoted its products through regular advertising using the mark, and ha[d] obtained extensive media coverage regarding its ‘iPad’ device.” As such, the Court concluded that Apple’s “ipad” mark was strong and distinctive, noting that consumers were likely to and had already experienced confusion regarding the “ipad” mark. The Court further concluded that, because RXD was a “proven infringer” of the mark, injunctive relief ordered by the district court in favor of Apple was justified. Finally, the Court rejected RXD’s intent argument, stating that Apple was not required to prove a bona fide intent to use the mark for services it did not identify in its relevant trademark applications—Apple’s development of “cloud storage” services, while not explicitly named in Apple’s trademark applications, was encompassed by “the context of the strength of Apple’s brand” and was within the “breadth of [its] products and services.”

Practice Note: Practitioners should take careful note of how their clients use their mark, even if such use can be technically classified as “senior,” and how the mark evolved over time and whether it happened to change coinciding [...]

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There’s No Sugarcoating It: Pocky’s Cookie Design Trade Dress Is Functional

by | Feb 4, 2021 |

Addressing for the second time whether the design of a chocolate-dipped, stick-shaped cookie was eligible for trade dress protection, the US Court of Appeals for the Third Circuit held again that the product configuration was functional and therefore not subject to trade dress protection, affirming summary judgment for defendant Lotte International America Corp. Ezaki Glico Kabushiki Kaisha v. Lotte Int’l America Corp., Case No. 19-3010 (3d Cir. Jan. 26, 2021) (Bibas, C.J.)

Both Ezaki Glico Kabushiki Kaisha and Lotte make thin, stick-like cookies with one side dipped in chocolate or flavored cream. Ezaki Glico’s product, Pocky, and Lotte’s product, Pepero, can be seen in the images below. Ezaki Glico obtained two incontestable trade dress registrations for its Pocky product design as well as a utility patent for a “Stick Shaped Snack and Method for Producing the Same.”

In 2015, Ezaki Glico sued Lotte for trade dress infringement. The district court found the Pocky product configuration functional and therefore not subject to trade dress protection, and granted Lotte’s motion for summary judgment. In October 2020, on appeal, the Third Circuit issued its initial opinion affirming the district court’s decision and rejecting Ezaki Glico’s argument that its trade dress was not functional because it was not essential to its product. (Read more on the initial opinion here.)

Ezaki Glico petitioned for a rehearing en banc, which the Court rejected. Nonetheless, the original panel vacated its earlier ruling and issued a revised opinion that provided further clarification on the functionality doctrine, but likewise affirmed summary judgment for Lotte and held that the Pocky product configuration was functional.

The Third Circuit again rejected Ezaki Glico’s attempts to equate “functional” with “essential”: “If the Lanham Act protected designs that were useful but not essential, as Ezaki Glico claims, it would invade the Patent Act’s domain. Because the Lanham Act excludes useful designs, the two statutes rule different realms.” The Court cited examples from earlier cases to demonstrate that the proper inquiry for functionality looks to whether the particular design chosen for a feature, as opposed to the feature itself, is useful: “Though French press coffeemakers need some handle, there is no functional reason to design the particular handle in the shape of a ‘C.’ . . . And though armchairs need some armrest, there is no functional reason to design the particular armrest as a trapezoid.”

The Third Circuit looked to Ezaki Glico’s registrations for the features of the claimed trade dress, noting that in this case, “[e]very feature of Pocky’s registration relates to the practical functions of holding, eating, sharing, or packing the snack.” Accordingly, the designs chosen for the Pocky configuration rendered the product more useful as a snack and were “not arbitrary or ornamental flourishes that serve only to identify Ezaki Glico as the source.” Having determined that Lotte sufficiently demonstrated that the Pocky trade dress was useful, the Court held that it was “thus functional” and not subject to [...]

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2020 IP Law Year in Review: European Issues

by , and | Jan 26, 2021 | , , ,

Executive Summary

From a German perspective, 2020 saw highly interesting developments that may well have an impact even beyond the borders of Germany. For example, the Federal Court of Justice (Bundesgerichtshof) in Sisvel v. Haier handed down a landmark decision on fair, reasonable and non-discriminatory (FRAND) law. This decision has already affected many FRAND cases tried before lower instance courts. Generally speaking, the FRAND law judgments issued in Germany in 2020 may have more upsides for standard-essential patent (SEP) holders than for implementers of standardised technologies.

A successful constitutional complaint against the German act to ratify the Unified Patent Court (UPC) Agreement delivered a serious blow to the attempt to establish the UPC. However, German Federal Parliament and Federal Council managed, just before the end of 2020, to pass another UPC ratification act, thereby rectifying the mistake that led to the success of the constitutional complaint. The fate of the UPC project remains somewhat unclear, however, in light of newly filed constitutional complaints.

Finally, 2020 saw the United Kingdom officially withdraw from the European Union on 1 February and become a third-party country after a transitional period that ended on 31 December. This event has multiple consequences for EU intellectual property rights, particularly EU trademarks, depending on whether they were filed or registered as of 1 January 2021.

European Issues

  1. Germany and the UPC
  2. German Federal Court of Justice on FRAND Law: Sisvel v. Haier
  3. How Does Brexit Affect European Trademark Rights?

2021 Outlook

Even though there were major developments in Germany regarding FRAND law and the UPC in 2020, these topics are far from being finally settled.

After the Federal Court of Justice’s Sisvel v. Haier decision led to relatively SEP-holder-friendly decisions by the Munich I District Court and the Mannheim District Court, the Düsseldorf District Court referred several FRAND-related questions to the CJEU in November 2020. The expected CJEU decision has the potential to shape the future of FRAND law not just in Germany, but in the whole European Union.

It will be interesting to follow the further development of the UPC project in the light of new constitutional complaints filed against Germany’s new act to ratify the UPC Agreement. These complaints may put another hold on the UPC undertaking. In any event, Germany is not expected to deposit its instrument of ratification very soon because the UPC still needs time to set up its infrastructure, including the appointment of judges.

The question of whether competitors and consumer associations can issue warning letters for violations of the General Data Protection Regulation (GDPR) continued to occupy the courts in 2020, and likely will do so in 2021 as well. According to a decision of the Stuttgart Court of Appeal dated 27 February 2020 (2 U 257/19), competition associations can issue warning letters for violations of the GDPR. The Berlin Court of Appeal previously affirmed this on 20 December 2019 (5 U 9/18) for consumer associations in the [...]

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