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					[2007] E.T.M.R. 30 FOR EDUCATIONAL USE ONLY 2006 WL 4402862 (BGH (Ger)), [2007] E.T.M.R. 30 (Cite as: [2007] E.T.M.R. 30)

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*465 Golden Rabbit Trade Mark Case I ZR 37/04 Bundesgerichtshof, Germany BGH (Ger) Prof. Dr Ullmann and associate judges Pokrant , Dr Büscher , Dr Schaffert and Dr Bergmann : 26 October 2006 [FN1] Community trade marks; Confectionery; Confusion; Germany; Get-up; Infringement; Similarity; Three-dimensional marks H1 Community trade mark--Three-dimensional rabbit shape (chocolate products)--Use by competitor of similar product get-up--Action for trade mark infringement--Whether likelihood of confusion--Action dismissed--Appeal dismissed--Further appeal--Correct test for assessment of impression of a mark with enhanced distinctiveness--Appeal allowed and claim remitted for further consideration. H2 The first claimant, a Swiss company, made and sold high quality chocolate products and confectionery, including chocolate rabbits. The manufacture and sale in Germany were effected via a subsidiary, the second claimant. The first claimant was also the proprietor of a three-dimensional Community trade mark (reproduced in the judgment) for chocolate and chocolate products. A reproduction of the mark in the colours gold, red and brown was filed with the Office for Harmonisation in the Internal Market. The defendant in these proceedings also made and sold chocolate rabbits. FN1 Paragraph numbers in this judgment are as assigned by the court. H3 The claimants, objecting to the defendant's chocolate rabbits, commenced proceedings for trade mark infringement. It was maintained that, on account of the identity of the respective products and the similarity of the appearance of the defendant's goods to the three-dimensional trade mark of the claimants, there was a likelihood of confusion. The defendant denied infringement, being of the opinion that any likelihood of confusion with the claimants' get-up was precluded on account of the

use, together with that get-up, of the verbal inscription "Lindt GOLDHASE", which featured on the claimant's trade mark, as well as the use by the claimants of a red collar with bow and bell. H4 The Regional Court dismissed the action and the claimants' appeal was unsuccessful, following which the claimants appealed further on a point of law to the Federal Supreme Court. *466 H5 Held, by the Bundesgerichtshof, that the claimants' appeal would be allowed and the case remitted to the Higher Regional Court for fresh consideration and decision, including the costs of the appeal on a point of law: H6 1. There does not exist any rule of experience according to which the overall impression of a three-dimensional mark consisting of a shape, a colour, word and figurative elements as well as further features is regularly determined by the word element regardless of the concrete arrangement and get-up of those elements. H7 2. The shape and the colour of a trade mark comprising the above elements may contribute to or determine the overall impression if they enjoy enhanced distinctiveness on account of the use that is made of them. H8 Cases referred to: Abbo/Abo, 19 January 1989, Federal Supreme Court, Case I ZR 223/86 [1989] GRUR 350 Abschlussstück BGHZ 153, 131, 142 ALKA-SELTZER, 18 June 1998, Federal Supreme Court, Case I ZR 15/96 [1998] GRUR 942; [1998] WRP 990 ATTACHÉ/TISSERAND, 13 January 2000, Federal Supreme Court, Case I ZR 223/97 [2000] GRUR 506 City Plus, 13 March 2003, Federal Supreme Court, Case I ZR 122/00 [2003] GRUR 880; [2003] WRP 1228 Goldbarren, 28 November 2002, Federal Supreme Court, Case I ZR 204/00 [2003] GRUR 712; [2003] WRP 889

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[2007] E.T.M.R. 30 FOR EDUCATIONAL USE ONLY 2006 WL 4402862 (BGH (Ger)), [2007] E.T.M.R. 30 (Cite as: [2007] E.T.M.R. 30)

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Jeans I, 15 September 2005, Federal Supreme Court, Case I ZR 151/02 [2006] GRUR 79, 82; [2006] WRP 75 Lila-Schokolade, 7 October 2004, Federal Supreme Court, Case I ZR 91/02 [2005] GRUR 427, 429; [2005] WRP 616 LION DRIVER, 11 February 1999, Federal Supreme Court, Case I ZB 33/96 [1999] GRUR 733 Lions, BGHZ 139, 340, 348 Malteserkreuz, 11 May 2006, BGH, Case I ZB 28/04 [2006] GRUR 859; [2006] WRP 1227 Matratzen Concord GmbH v OHIM [2004] E.C.R. I-3657; [2004] GRUR Int. 843 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (THOMSON LIFE) Case C-120/04 [2005] E.C.R. I-8551; [2006] E.T.M.R. 13; [2005] GRUR 1042; [2005] WRP 1505 MEY/Ella May, 24 February 2005, Federal Supreme Court, Case I ZB 2 /04 [2005] GRUR 513, 514; [2005] WRP 744 Mühlens GmbH & Co KG v OHIM (ZIRH) Case C-206/04 P [2006] E.C.R. I-2717; [2006] E.T.M.R. 57; [2006] GRUR 413 No.17/18 NEURO-VIBOLEX/NEURO-FIBRAFLEX, 6 May 2004, Federal Supreme Court, Case I ZR 223/01 [2004] GRUR 783; [2004] WRP 1043 Ruiz-Picasso v OHIM -- DaimlerChrysler (PICASSO/PICARO) Case C-361/04 P [2004] E.C.R. II-1739; [2006] E.T.M.R. 29; [2006] GRUR 237 Russisches Schaumgebäck, 3 February 2005, Federal Supreme Court, Case I ZR 45/03 [2005] GRUR 414; [2005] WRP 610 *467 Sabel BV v Puma AG Case C-251/95 [1997] E.C.R. I-6191; [1998] E.T.M.R. 1; [1998] GRUR 387; [1998] WRP 39 H9 Legislation referred to: Council Regulation 40/94, Arts 9(1)(b), 9(2)(a), 14(1) German Trade Marks Act, s.14(5), 14(6)

Judgment Upon the claimants' appeal on a point of law the decision of the 6th Board of the Higher Regional Court Frankfurt am Main of 29 January 2004 is reversed. The matter is remanded to the Higher Regional Court for renewed consideration and decision including the costs of the appeal on a point of law. Facts 1 The first claimant is a Swiss company manufacturing and selling high-quality chocolate products and confectionery, including chocolate rabbits. The manufacture and sale in Germany are effected via a subsidiary, the second claimant. 2 The first claimant is the owner of the threedimensional Community trade mark no.1698885, applied for on 8 June 2000 and registered on 6 July 2001 for chocolate and chocolate products. As a reproduction of the mark the following depictions in the colours golden, red and brown have been deposited at the Office for Harmonisation in the Internal Market: TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE 3 The defendant also manufactures and sells chocolate rabbits. *468 4 By instituting the present action the claimants object to a chocolate rabbit manufactured and sold by the defendant, as shown in the depiction enclosed to the claimants' first motion. The first claimant has authorised the second claimant to proceed in its own name together with the first claimant. 5 As far as of relevance for the appeal on a point of law the claimants have asked the court: 1. to find that the defendant, subject to a disciplinary fine or alternatively arrest, must cease and desist in the course of commerce from offering, selling, advertising or otherwise putting on the market chocolate rabbits as shown in the reproduction below: TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAY-

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[2007] E.T.M.R. 30 FOR EDUCATIONAL USE ONLY 2006 WL 4402862 (BGH (Ger)), [2007] E.T.M.R. 30 (Cite as: [2007] E.T.M.R. 30)

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ABLE 2. to find that the defendant must inform the claimants of the extent to which they have sold the chocolate rabbit shown in the reproduction, including the exact turnover figures and their commercial clients as well as to inform the claimants of the extent to which they have advertised the chocolate rabbit shown; 3. to find that the defendant must compensate the claimants for all damage occurred or which will incur due to the acts referenced under no.1. 6 The defendant has objected to the action. It is of the opinion that a likelihood of confusion with the get-up objected to is excluded due to the inscription "Lindt GOLDHASE" contained on the claimant's trade mark as well as the red collar with bow and bell. 7 The Regional Court dismissed the action. 8 The claimants' appeal was unsuccessful ( OLG Frankfurt a.M. [2004] GRUR-RR 136 ; [2004] WRP 638 ). 9 The claimants pursue their claims with the appeal on a point of law admitted by the board of the Federal Supreme Court. The defendant requests the appeal on a point of law to be rejected. *469 Grounds 10 I. The Higher Regional Court has rejected the claimants' claim pursuant to Art.9(1)(b) CTMR [Council Regulation 40/94] for lack of a likelihood of confusion, for the following reasons: 11 It is true that there is an identity of goods and that the claimants' trade mark also enjoys enhanced distinctiveness. The scope of protection regarding the claimants' trade mark is determined by the designation in the form registered, i.e. in the form of a product with further features such as the red collar with bow and bell as well as the word/device element "Lindt GOLDHASE". When evaluating the similarity of the trade marks which is determined by the respective overall impression of the trade marks to be compared, the effect of this combination of elements is decisive. In case of threedimensional marks, as in the case of word/device marks, it is to be assumed as a rule of experience

that the relevant trade circles pay more attention to the word than the device element if the device element does not show any relevant graphical get-up. This rule of experience also applies here since the form of the product/packaging of the claimants' trade mark is not of such distinctive relevance that the relevant trade circles will not consider the further features and above all the word elements as an indication of origin. The trade mark shows the form of a sitting rabbit, which is not exclusively customary for Easter rabbits, made of chocolate, which is however typical. The relevant trade circles will thus perceive this form as an aesthetic feature of goods made of chocolate traditionally sold on the occasion of Easter, but not as an indication of origin. 12 The Survey of the GfK Market Research of May 2003 submitted by the claimants does not show the opposite. It is true that 65 per cent of the chocolate consumers consulted answered in the affirmative the question as to whether the rabbit shown to them was to be attributed to a certain undertaking and 58 per cent of them answered the question whether they could name the undertaking correctly by "Lindt". However, this does not prove that the form of the chocolate rabbit serves as indication of origin for 58 per cent of the consumers consulted in a way that its mere form allows them to differentiate between the claimants' product and chocolate rabbits of other companies. For the very reason of the reputation of the product "Lindt Goldhase" it might be assumed that a considerable part of the 58 per cent of persons consulted answered "Lindt" because they first thought of this company as the producer of Easter chocolate rabbits, while the same persons might not have been able to perceive chocolate rabbits of other companies, merely wrapped in golden foil, as not originating from the claimants' house. 13 It might be left open whether possibly a certain part of the consumers consulted is able to differentiate between the respective origins of the rabbits since it might be assumed in favour of the claimants that the mere shape of the "Lindt-Golden Rabbit" has something of a function of an indication of origin. However, the word element "Lindt GOLDHASE" as well as the further features such as the red collar with bow and bell have a considerably stronger function. The latter features serve as

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[2007] E.T.M.R. 30 FOR EDUCATIONAL USE ONLY 2006 WL 4402862 (BGH (Ger)), [2007] E.T.M.R. 30 (Cite as: [2007] E.T.M.R. 30)

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an indication of origin not to be neglected since it is particularly outlined in the claimants' advertising as a sign of quality and distinction. 14 In view of the fact that the overall impression of the claimants' trade mark is determined first by the word element "Lindt GOLDHASE" and secondly by the *470 red collar with bow and bell, there is no similarity to the form objected to. This chocolate Easter rabbit equally wrapped in golden foil is characterised first of all by the words "RIEGELEIN CONFISERIE" on the side, written on a white and thus pre-eminent background. In addition, this chocolate rabbit does not wear a red collar with a bell; instead, on the side, there is the imprint of a brownish-reddish bow. Therefore, the difference between the relevant features of the claimants' trade mark serving as indication of origin is sufficient to exclude a likelihood of confusion. 15 Since the defendant does not infringe the claimants' trade mark rights, the claim for damages and the claim to be informed in preparation of the claim for damages have to be equally rejected. 16 II. The appeal on a point of law leads to the decision of the Higher Regional Court being reversed and the matter being remanded to the Higher Regional Court. In view of the findings of the court, until now the claimants' claims based on a likelihood of confusion may not be denied pursuant to Arts 9(1)(b), 9(2)(a) and Art.14(1) , second sentence CTMR in connection with s.14(5) and (6) of the German Trade Marks Act . 17 1. For the assessment of a likelihood of confusion within the meaning of Art.9(1)(b) CTMR all relevant circumstances of the specific case have to be taken into consideration. Pursuant to the 7th recital of Council Regulation 40/94 regarding the Community trade mark ([1994] Bulletin No.L11/1) the existence of a likelihood of confusion is determined in particular by the degree of reputation of the mark on the market, the association with the trade mark in question which the designation used or registered may cause as well as the degree of similarity between the trade mark and the designation and between the goods and services designated by them ( cf. European Court of Justice, Decision of 12 January 2006, Case C-361/04 P PICASSO/PICARO [2006]

GRUR 237 no.18 ; Decision of 23 March 2006 Case C-206/04 P ZIRH [2006] GRUR 413 no.17/18 ; Federal Supreme Court, Decision of 7 October 2004 Case I ZR 91/02 LilaSchokolade [2005] GRUR 427, 429; [2005] WRP 616 , with further references). 18 a) In the present case the goods of the claimants' trade mark and the goods of the defendant's designation are identical. 19 b) The Higher Regional Court has assumed that the claimants' trade mark has gained enhanced distinctiveness as an indication of origin for chocolate rabbits sold under this get-up. 20 c) In regard to the similarity between the claimants' trade mark and the get-up objected to of the chocolate rabbits sold by the defendant the Higher Regional Court has assumed a sufficient difference to exclude a likelihood of confusion. As claimed by the claimants in their appeal on a point of law this assessment is legally incorrect. 21 aa) The similarity of designations in script, in sound or in meaning is to be determined by evaluating the overall impression of the designations in question ( European Court of Justice, Decision of 11 November 1997 Case C-251/95 Sabel [1997] E.C.R. I-6191; [1998] GRUR 387; [1998] WRP 39 ; European Court of Justice, PICASSO/ PICARO [2006] GRUR 237 no.19 ). The Higher Regional Court correctly assumed that the determination of the overall impression of the claimants' trade mark must be based on the registered combination of the form of *471 the product together with its further features. This approach does not only respect the principle that the trade mark in the registered form is decisive for the scope of protection of the trade mark in question ( cf. BGHZ 153, 131, 142, Abschlussstück , with further references) but also takes into consideration the rule of experience that the average consumer regularly perceives a trade mark as a whole and does not pay attention to the various details ( cf. European Court of Justice, Sabel [1998] GRUR 387 no.23 ; European Court of Justice, Decision of 28 April 2004, Case C-3/03 P Matratzen Concord [2004] E.C.R. I-3657; [2004] GRUR Int. 843 ; Decision of 6 October 2005 Case C-120/04 THOMSON LIFE [2005] E.C.R. I-8551; [2005] GRUR

© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.

[2007] E.T.M.R. 30 FOR EDUCATIONAL USE ONLY 2006 WL 4402862 (BGH (Ger)), [2007] E.T.M.R. 30 (Cite as: [2007] E.T.M.R. 30)

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1042; [2005] WRP 1505 ; Federal Supreme Court, Decision of 6 May 2004, Case I ZR 223/01 NEURO-VIBOLEX/NEURO-FIBRAFLEX [2004] GRUR 783 , 784 et seq. ; [2004] WRP 1043 , with further references). 22 bb) It thus may not be assumed that the overall impression of the claimants' trade mark first of all is determined by the word element "Lindt GOLDHASE". The Higher Regional Court bases its opposing view on the rule of experience according to which as is the case for word/device marks in regard to three-dimensional marks, too, the relevant trade circles paid more attention to the word element than the device element. However, as far as the device element does not only constitute an empty or customary, irrelevant graphical feature (decoration), this rule of experience regularly only applies when examining the phonetic likelihood of confusion since a pictorial get-up is not perceived acoustically but only visually ( Federal Supreme Court, Decision of 13 January 2000, Case I ZR 223/97 ATTACHÉ/TISSERAND [2000] GRUR 506, 509 ). There does not exist any rule of experience according to which the relevant trade circles (equally) in case of the merely visual perception of a word/device mark first of all memorise the words (in their conceptual meaning, if any) and not the device element ( cf. Federal Supreme Court, Decision of 11 February 1999, Case I ZB 33/96 LION DRIVER [1999] GRUR 733, 735 ; BGHZ 139, 340, 348 Lions ; BGH, ATTACHÉ/TISSERAND [2000] GRUR 506, 509 ; BGH, Decision of 11 May 2006, Case I ZB 28/04 Malteserkreuz [2006] GRUR 859 no.30; [2006] WRP 1227 ). The same applies to a three-dimensional trade mark comprising not only a form but also a certain colour and further features. The Higher Regional Court did not state that the further features in addition to the word element of the get-up protected by the claimants' trade mark only constituted irrelevant mere decoration. Rather the court has itself assumed that the relevant trade circles would also perceive further features as an indication of origin. 23 cc) However, the Higher Regional Court did not attribute to the form and colour of the rabbit protected by the claimants' trade mark any relevance in regard to the overall impression of that mark. According to the court the form of a sitting rabbit

shown by the trade mark is not exclusively customary for Easter rabbits, however typical. The relevant trade circles would thus perceive this form first as an aesthetic feature of goods made of chocolate traditionally sold on the occasion of Easter, but not as an indication of origin. These considerations of the Higher Regional Court do not support its opinion that the overall impression was first determined by the word element and secondly by the further features of the red collar with bow and bell whereas the form and the colour were of no relevance for the overall impression. These considerations only refer to the form of a sitting rabbit in *472 general and do not answer the question whether the colour or the specific form in combination with the colour are of any relevance for the overall impression of the claimants' trade mark. 24 In addition, the Higher Regional Court did not sufficiently take into account that features enjoying an enhanced distinctiveness regularly are of crucial relevance for the overall impression of the get-up ( cf. Federal Supreme Court, Decision of 18 June 1998, Case I ZR 15/96 ALKA-SELTZER [1998] GRUR 942; [1998] WRP 990 ; Decision of 13 March 2003, Case I ZR 122/00 City Plus [2003] GRUR 880, 881; [2003] WRP 1228 ; Decision of 24 February 2005, Case I ZB 2 /04 MEY/ Ella May [2005] GRUR 513, 514; [2005] WRP 744 ; BGH, Malteserkreuz [2006] GRUR 859 no.31 ). The assessment of the question which elements dominate the overall impression might be influenced by the fact that, due to presentation and advertising of the trade mark (in its form registered), individual elements are particularly perceived by the relevant trade circles as an indication of origin ( cf. BGHZ 153, 131, 140 et seq. , Abschlussstück ; Federal Supreme Court, Decision of 28 November 2002, Case I ZR 204/00 Goldbarren [2003] GRUR 712, 714; [2003] WRP 889 ). In regard to the distinctiveness of form and colour of their "Golden Rabbit" the claimants have submitted a "Survey about the reputation of the product Golden Rabbit" of GfK Market Research dated May 2003 in which a chocolate rabbit wrapped in golden foil in the form protected by the claimants' trade mark without the further features (red collar with bell, further decoration and inscription "Lindt GOLDHASE") was presented to the persons consulted. According to the survey 82 per cent of all persons

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[2007] E.T.M.R. 30 FOR EDUCATIONAL USE ONLY 2006 WL 4402862 (BGH (Ger)), [2007] E.T.M.R. 30 (Cite as: [2007] E.T.M.R. 30)

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consulted and 86 per cent of the narrower trade circles, i.e. the buyers and consumers of chocolate products, knew the chocolate rabbit. Sixty-one per cent of all persons consulted and 65 per cent of the narrower trade circles answered the question in the affirmative as to whether the chocolate rabbit originated from a specific company. Fifty-five per cent of all persons consulted and 58 per cent of the narrower trade circles answered the question about the name of this company by indicating the claimants' company; 4.9 per cent named other companies. 25 Contrary to the opinion of the Higher Regional Court an enhanced distinctiveness of the rabbit wrapped in golden foil in the form protected by the claimants' trade mark might thus not be denied because, in view of the reputation of the product "Lindt Goldhase", it might be assumed that a considerable part of the persons consulted attributed the rabbit shown to the claimants' company because they first thought of this company as the producer of Easter chocolate rabbits. Rather, this is an indication that a considerable part of the relevant trade circles perceive the combination of form and colour of the rabbit as an indication to the claimants' company, regardless the further features. This is supported by the fact that a survey in July 2001 when a chocolate rabbit comprising not only form and colour but also the red collar with the bell was shown to the persons consulted did not result in a significantly higher degree of distinctiveness or a considerably higher number of persons consulted attributing the rabbit to the claimants' undertaking. Furthermore, the question to what extent the relevant trade circles perceive form and colour of the rabbit as an indication of origin is primarily determined by the percentage of persons consulted who are able to attribute these features to a certain undertaking. However, it is not necessary that these persons *473 correctly name the undertaking ( cf. Federal Supreme Court, Decision of 15 September 2005, Case I ZR 151/02 Jeans I [2006] GRUR 79, 82; [2006] WRP 75 ). For stating that the survey revealed a high degree of distinctiveness in regard to form and colour of the claimants' "Golden Rabbit" it is of no relevance whether the persons consulted were able to realise that a chocolate rabbit wrapped in golden foil of another company did not originate from the claimants' house.

26 2. Due to the fact that the Higher Regional Court's findings about the overall impression of the claimants' trade mark are legally incorrect, there is no factual basis for its evaluation that, despite the identity of goods and the enhanced distinctiveness of the claimants' trade mark, the difference between the designations to be compared was sufficient to exclude a likelihood of confusion. The Higher Regional Court found that the different word elements were sufficient to exclude a likelihood of confusion because the chocolate rabbit of the defendant did not wear a red collar with a bell but instead on the side the imprint of a brownish-reddish bow. However, if the word element is not of that crucial relevance for the overall impression of the claimants' trade mark, as held by the Higher Regional Court, and if further the distinctiveness of the form and the colour of the claimants' trade mark have not been sufficiently clarified a likelihood of confusion cannot be excluded for the mere difference in regard to the bow. 27 3. For the above reasons the decision of the Higher Regional Court is to be reversed. The Higher Regional Court will still have to evaluate the distinctiveness of the individual features of the claimants' trade mark and their influence on the overall impression of the mark. 28 The Higher Regional Court did not take into consideration the primary question whether the defendant uses the get-up of its chocolate rabbit as a trade mark ( cf. Federal Supreme Court, Decision of 3 February 2005, Case I ZR 45/03 Russisches Schaumgebäck [2005] GRUR 414 , 415 et seq. ; [2005] WRP 610 ). However the Board itself may not take a conclusive decision in this regard since the use of the get-up objected to as a trade mark may depend on the question whether and to what extent elements of the claimants' trade mark enjoying an enhanced distinctiveness are included by the defendant in its get-up ( cf. BGH, Lila Schokolade [2005] GRUR 427 , 428 et seq. ). 29 As far as the claimants' claims are based exclusively on the Community trade mark no.1698885 registered for the first claimant the Higher Regional Court will further have to clarify whether the second claimant has a right of action together with the first claimant ( cf. Federal Supreme Court, Decision of 19 January 1989, Case I ZR

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[2007] E.T.M.R. 30 FOR EDUCATIONAL USE ONLY 2006 WL 4402862 (BGH (Ger)), [2007] E.T.M.R. 30 (Cite as: [2007] E.T.M.R. 30)

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223/86 Abbo/Abo [1989] GRUR 350, 353 ; Ullmann, Festschrift v Gamm , pp.315, 316). 30 III. Upon the claimants' appeal on a point of law the decision of the Higher Regional Court was thus to be reversed and the matter to be remanded to the Higher Regional Court for fresh consideration and decision, including the costs of the appeal on a point of law. *474 (c) Sweet & Maxwell Limited END OF DOCUMENT

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