Gathering evidence in patent proceedings? EPLAW's Europe/Japan mock trials may be what you need

Somewhat, but not completely revealing,
Merpel impersonates a defendant's 
voluntary infringement evidence....

September seems to be the month of mock trials, with at least three in the works as far as the AmeriKat is aware.  An exciting mock dealing with the new world of biosimilars litigation will be entertaining the lucky attendees at this year's AIPPI's World Congress in Milan (more details to come).  Only a few days later on 23 September 2016 in Paris, not one but four Mock Trials will be heard before Judges Shitara, Girardet, Grabinski and Hacon, respectively.  Each hearing will address the topic close to any patent litigator's heart - gathering evidence in patent proceedings.  The four hearings promise to result in an insightful comparison between Japanese, French, German and English approaches to evidence in patent proceedings.

The announcement states that:

"​Proving infringement of patents in complex technologies is increasingly challenging. Often the key evidence is in hands of another party and may be highly confidential. The court procedures of the key jurisdictions of Japan, France, Germany and the UK have developed a variety of approaches to deal with these challenges, and continue to evolve. The UPC rules of procedure have adapted a number of these approaches. 

The Japanese court and legislature are also reforming evidence gathering. This event provides an insight from judges and patent litigation lawyers from these key jurisdictions involved at the forefront of the development of the law. The evidence gathering challenges which patentees and defendants face in the current systems and in the future will be brought to life by a mock trial format 

The event is supported by the European Patent Lawyers’ Association (EPLAW) which represents patent litigators across Europe. ​ Leading Japanese IP associations are co-sponsoring the event and have been involved in the reform of Japanese evidence gathering reform."

The event, which is also promoted by JETRO, Japan Intellectual Property Association, Japan Patent Attorneys Association, the Japan Federation of Bar Associations and the IP Lawyers Network Japan, kicks off  at 9:30AM with Kat friend Penny Gilbert (President of EPLAW) introducing the day.  The evening ends with drinks at 6PM.  Tickets are €150, but includes lunch and evening drinks reception.

So if you would like to see advocates like Alex Wilson (Powell Gilbert), Christof Augenstein (Kather Augenstein) and Koichi Tsujii (Nakamura) get a grilling from the judges click here to register.

Federal Court of Justice greenlights colour mark red

Red.

In the ongoing dispute between the Sparkassen Group and Banco Santander, which led to the CJEU's decision in cases C‑217/13 and C‑218/13, the German Federal Court of Justice (BGH) has annulled the decision of the Federal Patent Court which invalidated Sparkassen's contourless colour mark "red" and held that the mark had acquired distinctiveness at the time of the Federal Patent Court's decision in 2015.

Sparkassen Group has been using the colour red in connection with financial services, namely retail banking, in Germany since the 1960s. In 2002, it filed a trade mark application for the contourless colour "red" (HSK 13) for financial services, namely retail banking, which was granted - after an initial rejection - sometime in 2007. Banco Santander and Oberbank, two new entrants to the German retail banking market that also used the colour red in their home markets, filed for invalidity. In 2009, the German IPO (DPMA) dismissed the actions. On appeal, the Federal Patent Court referred several questions to the CJEU, which the CJEU answered in joined cases C-217/13 and C-218/13 in 2014.

Yep, that's also red

The CJEU namely held that it European law precluded an interpretation of national law according to which, in the context of proceedings raising the question whether a contourless colour mark has acquired a distinctive character through use, it is necessary in every case [Merpel's emphasis] that a consumer survey indicate a degree of recognition of at least 70% (see IPKat post here).


Subsequently, the German Federal Patent Court nonetheless sided with Santander and Oberbank and cancelled the registration of the mark at issue because acquired distinctiveness had not been proven, neither at the time of filing (2002) nor at the time of the decision (2015). Acquired distinctiveness at the time of the decision would have been enough because Germany exercised the option under Article 3(3) second sentence Directive 2008/95. Under German law, proof of acquired distinctiveness either at the time of filing or at the time of decision leads to validity of the mark (§ 8(3) German Trade Mark Act).


On appeal, the BGH held that contourless colour marks were generally lacking distinctiveness ab initio, as consumers would perceive colours primarily as decorative and not as indications of source. However,  contourless colour marks - as any other marks - had acquired distinctiveness if a majority ("überwiegender Teil") of the relevant public recognized [or relied upon...?] the mark as indicating a single source for the goods or services for which protection was sought. According to the Federal Court of Justice, the many surveys submitted by the applicant failed to prove acquired distinctiveness at the time of filing in 2002, but supported a finding of acquired distinctiveness in 2015, at the time of the judgment.


Since the full reasoning of the BGH decision is not yet published - I am relying on the press release - it is not yet possible to see what convinced the BGH that the Federal Patent Court got it wrong. It seems the assessment of the survey evidence played an important role, which is interesting because the BGH is in principle bound by the fact finding of the lower court.