Clifford Chance has advised Smartbook AG, Offenburg, in trademark proceedings before the First Civil Division of the Germany Federal Supreme Court (Bundesgerichtshof, BGH) in Karlsruhe. This Division is presided over by Prof. Dr. Dr. h.c. Bornkamm.
The proceedings before the Federal Supreme Court were related to the cancellation of four trademarks registered in the name of Smartbook AG ("smartbook" and "smartbook for smart people"). The Clifford Chance team which represented Smartbook AG in all stages of appeal comprised partner Dr. Claudia Milbradt and associates Anja Schwarz and Florian Reiling (all litigation, Düsseldorf). Federal Supreme Court lawyer Dr. Reiner Hall of the law firm Jordan & Hall, Karlsruhe, filled the role of legal counsel in the proceedings before the Federal Supreme Court.
In 2009, Qualcomm Inc., USA, represented by Hogan Lovells, filed an application for cancellation of the marks in dispute. Initially, the German Patent and Trademark Office (DPMA) ruled in favor of the applicant in all four cases. However, three of these decisions were then rescinded by the Federal Patent Court (Bundespatentgericht, BPatG) in February 2012, with the relevant applications for cancellation being dismissed.
In November 2012, Qualcomm Inc. filed an appeal on points of law against those decisions with the Federal Supreme Court. In the hearing held on 6 November 2012, the First Division of the Federal Supreme Court endorsed the decision issued by the Federal Patent Court and confirmed the legitimacy of the registration of the marks at issue.
After almost four years of continuous court proceedings the matter was finally decided in favor of Smartbook AG whose "smartbook" registrations have now been confirmed res judicata.
Parallel proceedings regarding the European registration of the trademark "smartbook" are currently pending before the Court of Justice of the European Union (EuG T-123/12). The oral hearing took place on 4 September 2013 in Luxembourg and it is expected that a judgment will be delivered shortly.
