In the course of the Birkenstock decision, this decision of the BPatG illustrates, on the one hand, the possibility of copyright as an earlier right in trade mark opposition proceedings and, on the other hand, the requirements for the affirmation of the existence of copyright.
The complainant objected to the rejection of his application for a declaration of invalidity and cancellation of the figurative mark 30 2019 015 590, which was registered on 19 December 2019 for luggage, bags, clothing, footwear and accessories. The complainant based his application on an asserted copyright with seniority from 3 August 2015.
Trademark Copyrighted work
According to Section 2 (1) No. 4 of the Copyright Act, works of fine art and applied art, as well as designs for such works, are protected by copyright if they represent personal intellectual creations. Such a creation is a creation of individual character whose aesthetic content has reached a level where it can be described as an “artistic” achievement.
The aesthetic effect of the design can only justify copyright protection if it is based on and expresses an artistic achievement.
The graphic representation of two angel wings with corset lacing for implementation with rhinestones on clothing, which the complainant, according to his undisputed statement, designed in 2015, enjoys protection as a work of applied art pursuant to Section 2 (1) No. 4 and (2) of the Copyright Act.
The design of an appliqué on a piece of clothing is not per se determined by the function of the item, but is a purely decorative motif, with only minimal design freedom.
The court found that the design quality is characterized by the arrangement of the wings, the connection by a corset lacing, and the design of the bow. The overall impression and personality are primarily based on the overall composition and the contrast between moving and rigid elements, as well as the special type of corset lacing depicted, so that the design stands out sufficiently clearly from the previously known forms.
Although the motif of angel wings was already used on clothing before 2015, the Senate was unable to identify any specific previously known designs combining wings with corset lacing. Due to the previously known uses of angel wings on clothing, the scope of protection is limited and is largely determined by the special type of corset lacing and the overall composition. As a result, the Federal Patent Court granted copyright protection to the angel wings already in use in 2015 and concluded that the registration of the contested trademark should be declared invalid because it infringed an earlier copyright held by the complainant.
Practical advice:
Anyone who bases their earlier rights on an unregistered intellectual property right, be it a copyright or an unregistered Community design, is subject to a special duty of explanation despite the existing principle of official investigation. This primarily concerns the fundamental existence and seniority of the earlier right, as well as the ownership. This can usually be done by submitting the work; if the work does not immediately reveal the copyright-relevant work, the design features relevant to copyright protection must be specifically explained and, if necessary, proven.
It is therefore always advisable to document the creation of the works and their public presentation.
If copyright is to be contested, it is necessary to prove that the alleged features that justify the copyright were already known in the design repertoire or that they are technically determined.
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