The Chambers Global Guide 2024: Germany has ranked us in Band 2 for Intellectual Property: Trademark & Unfair Competition, and states: “Lubberger Lehment holds a strong track record of assisting brand owners with trade mark, unfair competition and copyright law. Its clients hail from the luxury goods, cosmetics and technology industries. The team has notable expertise in portfolio management and selective distribution matters, further assisting with parallel import cases. The law firm is also well versed in the intellectual property aspects of transactions, including due diligence.”In addition, our partners Dr. Andreas Lubberger, Dr. Benjamin Koch, Dr. Rani Mallick and Eva Maierski have been ranked as individuals.

The full ranking can be found here.

Our colleagues Dr. Rani Mallick and Eva Maierski achieved a great success for our client Shiseido against the real.de platform. Shiseido had filed two complaints against Real seeking injunctions concerning the sale of its SHISEIDO and ISSEY MIYAKE perfume and cosmetic products on the real.de platform.

In both cases the District Court of Düsseldorf (decisions of 29 September 2022, case nos. 37 O 183/19 and 37 O 177/19) held that SHISEIDO and ISSEY MIYAKE are luxury brands that have a prestige image. Selling products of those brands on the platform real.de, which features a discounter-like sales environment, impairs the prestige image of those trademarks. Therefore, Shiseido has legitimate reasons to oppose further sale and distribution of the products pursuant to Art. 15 (2) EUTMR, preventing Real to rely on the principle of exhaustion.

The decisions are not yet final and binding.

The Regional Court in Stuttgart held that the sale of “Joop” and “Calvin Klein” perfumes in Aldi supermarkets is detrimental to the prestigious character of the brands and therefore infringes Coty’s trademark rights. The court’s decision is based on the sales environment in which the products are offered in the Aldi supermarkets. With the decision, the Regional Court (case ref. 2 U 321/20) has confirmed the decision of the court of first instance. We congratulate our Berlin partners Eva Maierski and Dr. Rani Mallick on this success. The JUVE press release can be found here.

“Keyword advertising – the neglected offspring of trademark law?”: Our Berlin partner Dr. Andreas Lubberger will be speaking on this topic at this year’s DAI annual working conference, which takes place in Hamburg from 26 to 27 November 2021 (currently planned as a hybrid event). Among other things, the talk will deal with the legal classification of keyword advertising, the assessment approach taken by the courts and the online transparency requirement of EU law. The full program and registration information can be found here.

Our colleagues Dr. Rani Mallick and Eva Maierski have published an article in the “World Trademark Review Yearbook: A global guide for practitioners 2021/2022” in which they discuss the benefits of registered design protection compared to other IP rights as well as design-protection strategies. The article can be downloaded here:

The economic value of designs_WTR Yearbook 2021-2022

This article first appeared in World Trademark Review Yearbook: A global guide for practitioners 2021/2022, a supplement to World Trademark Review, published by Law Business Research – IP Division. To view the guide in full, please go to www.WorldTrademarkReview.com.

The finance app for women which previously operated under the name “Alice” now has a new name and is starting the test phase under “VITAMIN”. Our Berlin colleagues Dr. Rani Mallick and Vasilena Wolf have advised the startup with regard to trademark law aspects in finding a name and clearing rights. We wish “VITAMIN” much success and are very happy having contributed to this great project for the empowerment of women. The full article on the launch is available here.

We already knew it, but now it’s official: Dr. Rani Mallick is a Next Generation Partner in Trademark Law in Germany – see the new edition of Legal500.

This Tuesday, the Higher Regional Court in Frankfurt/Main dismissed the appeal of the liquidator of the assets of the drugstore chain Schlecker, which had claimed damages amounting to EUR 212 million due to an alleged price-damaging information exchange of its suppliers (case ref. Az. 11 U 98/18). Our colleagues Dr. Andreas Lubberger and Dr. David Weller successfully represented one of the defendants. The press article with more insights into this case can be found under this link (only available in German language).

Our colleagues Dr. Rani Mallick and Dr. Bernd Weichhaus achieved an important victory against Amazon for our client Clarins before the Appeal Court in Berlin (case no. 5 U 1/18). According to the court’s decision, it is solely the online seller who bears the burden of prove to show that the distributed goods have been put on the market within the EEA with the trademark owner’s consent. Thus, the decision contributes to the strengthening of rights of brand owners. The article of the online magazine JUVE is available under the following link.

On 12 July, the Higher Regional Court of Frankfurt issued the final judgment (11 U 96/14 (Kart)) in the dispute between the perfume manufacturer Coty and its authorized retailer Akzente: In a selective distribution system, a manufacturer of luxury products may prevent its retailers from marketing its products through third party online sales platforms.

The decision implements the principles of the European Court of Justice’s landmark decision of December 2017, according to which the intangible brand image justifies restricting the sale of luxury goods in a selective distribution system by retailers in order to ensure a high-quality sales environment. According to the Higher Regional Court of Frankfurt, this does not depend on individual products and their pricing, but rather on the entire product range. The decisive factor is how the manufacturer puts its products on the market.

Yet, the manufacturer itself must adhere to the rules it has established. If, however, the manufacturer excludes platforms such as Amazon and Ebay or discounters from the intended distribution channels, its customers – such as Akzente in the present case – have to accept such restrictions. This is irrespective of offers of grey market products that may be available on these distribution channels. As the taking of evidence carried out with regard to Coty’s internal practices in this respect undoubtedly showed that Coty adheres to the self-imposed rules, the contractual sales restrictions in Coty’s distribution system are unobjectionable under antitrust law and, thus, enforceable.

The same applies to sales via travel retail stores at airports or direct airline sales, which do not call into question the luxury character of the products. Nor could Coty be accused of tolerating the sale of its products via retail stores in large shopping centers (shopping malls), because these are not comparable to platforms since every such retailer is perceived as independent by the consumer.

The Higher Regional Court of Frankfurt showed that these aspects do not necessarily exclude all sales on online platforms since the manufacturer’s quality specifications can also be met by specific platform clauses. This may be particularly important in Germany, where platforms have a much larger market share of internet trade than in other EU countries. However, the Court felt obliged to adhere to the principles established by the European Court of Justice, which – at least in the field of luxury products – had expressly considered an exclusion of third-party platforms per se to be permissible.

In this case, Coty relied on the proven cooperation with the law firm Lubberger Lehment, which has already won many landmark decisions for Coty before the highest courts.