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Thursday, 20 January 2011

German trade mark case law laid bare - again

This Kat has been reviewing German trade mark scholar and practitioner Dr Ulrich Hildebrandt's book Marken und andere Kennzeichen. Already in its second edition the book offers 782 pages of (predominantly) German trade mark law for the reader's delectation. (See here for the IPKat's short review of the 1st edition.)

This book is not only of a similar size to Kerly's Law of Trade Marks and Trade Names, it is also similar when it comes to the breadth of information covered. On its 782 pages Marken und andere Kennzeichen (in English: "trade marks and other trade signs") offers in-depth information about German trade mark law, including the law on business names, work titles (Werktitelschutz, a German law quirk), domain names, indications of geographical origin as well as helpful overviews of the relevant provisions of neighbouring areas of the law, such as competition law and delict, the German equivalent of tort, comparative advertising. The book consists of 8 parts and 36 individual chapters and is very clearly structured so that the reader can "jump" into the individual chapters and read up on particular matters. It is very much a practitioner's book and geared towards use in every day trade mark practice, so that students may find it a little less engaging and too detailed for their studies. Having said, if you are a student and plan to specialise in this field of the law, the book might give you some idea what you will be facing in every day practice.

Marken und andere Kennzeichen includes the German Bundesgerichtshof's precedents in trade mark matters since 1994 as well as a very comprehensive selection of decisions from the ECJ (or is it CJEU these days?!) and the General Court. Dr Hildebrandt is very much aware of the influence of the ECJ's case law and so the relevant chapters include summaries of the ECJ's line of precedents in the respective field. He also shows the discrepancies between the ECJ's and GC case law and the German Federal Supreme Court and gives helpful tips as to how to proceed in practice. The author also ventures into providing some outlook into how the law may develop further, always making it clear when something is his a personal opinion.

A concise table of contents, a useful index and a comprehensive table of cases and many examples makes this book accessible and easy to work with and its writing style is surprisingly engaging. Dr Hildebrandt has included helpful "checklists" concerning the conception of marks, trade mark strategies, regarding trade sign practice, the question of likelihood of confusion and dealings with customs authorities. It also alerts you to the DPMA's usual practice when it comes to deadlines. Of particular interest for non-German readers will be the chapter on domain name disputes in Germany, which have to be conducted in front of the courts, and the chapter on work title protection and company name protection and the information on disturbance liabality. This second edition of the book covers more recent developments, such as the amendments to the law for improving intellectual property rights (Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums) and "sexy" topics, such as the (German) case law on AdWords and domain name disputes.

Being first and foremost a handbook of German trade mark law, the information on Community trade marks and International mark is nonetheless accomplished albeit a little too short for my taste - admittedly I had to look hard to find something to criticise. While the information provided does not guide the reader through these types of trade mark proceedings in every last detail, chapter 28 "proceedings before OHIM" (Verfahren vor dem Harmonisierungsamt) covers all the important points to look out for in every day practice, including questions as such how to pay the official fees and procedures before the Board of Appeal. Like the rest of the book, this chapter includes comprehensive footnotes with references to case law and tips for further reading.

So, is the book for you? If you are a German trade mark practitioner, represent German clients or if you are a (German) lawyer who has to deal with (German) trade mark matters only on occasion then this book is certainly a book worth having on your shelf in the office (or your desk really). It is well written and concise despite the amount of information covered. One caveat however and you will have guessed this by now - you should be able to read German to a very high standard….

Bibliographic information: publication date 2010 (that is what it says in my copy) 2nd edition, 282 pages, hardback, ISBN 978-3-452-27152-5, Bücher Carl Heymanns Verlag, 128 Euros.
Rupture factor: negligible.

Further details can be found here.

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