Managing Intellectual Property “IP Stars 2017”: BOEHMERT & BOEHMERT in 2nd place in Copyright

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The current listed in IP Stars 2017 by Managing Intellectual Property puts the law firm in second place, also in the Copyright category. Previously, rankings in the categories Trademark Prosecution (1st place) and Trademark Contention (2nd place) were announced.
The names of individual lawyers will be published in May 2017 (Trademark & Copyright) as well as in June 2017 (Patent Law) in the IP Stars Global Handbooks. The current listing can be found here.

Managing Intellectual Property “IP Stars 2017”: BOEHMERT & BOEHMERT in 2nd place in Copyright

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The current listing in IP Stars 2017 by Managing Intellectual Property puts the law firm in second place, also in the Copyright category. Previously, rankings in the categories Trademark Prosecution (1st place) and Trademark Contention (2nd place) were announced.
The names of individual lawyers will be published in May 2017 (Trademark & Copyright) as well as in June 2017 (Patent Law) in the IP Stars Global Handbooks. The current listing can be found here.

Dr U Kilger with IP comment in specialist magazine “transkript” (4/2017)

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In the magazine “transkript” (4/2017 page 18), BOEHMERT & BOEHMERT patent lawyer Dr. Ute Kilger contributes the article “Risk of self-collisions banished”. In the article, she comments on the decision of the Grand Chamber of the European Patent Office (EPA) on the problem of possible but fatal self-collisions in the case of a registration with a partial or priority registration. In particular, non-European registering parties have often been surprised by this rule where the subsequent registration contained more objects than the original registration. Dr Ute Kilger says here: “Initial experience has thankfully shown that previous registrations doomed to be rejected now have a good chance of being accepted before the EPA.” Dr Kilger regularly comments for transkript. The magazine can be subscribed or downloaded hereundefined.

“Foundation of Patent Law 2017” by BOEHMERT & BOEHMERT in Munich, on 26 April 2017

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On 26 April 2017, the Munich office of BOEHMERT & BOEHMERT will hold its trusted “Patent Law Foundation Seminar” hosted by patent lawyer Nils T. F. Schmid. The following aspects will be covered:

  • “When does a patent make sense? – Decision-making aids for SMEs” (Dr. A. Lucke).
  • “Patent registration strategies / defence strategies” (Ch. W. Appelt)
  • “Patent Requirements – Novelty and Innovative Activity” (Dr. M. Hartig)
  • “Employee Inventions – efficient dealing” (Dr. J. B. Krauß)

The seminar is geared in particular towards managing directors of SMEs, as well as directors of R&D departments and general proxies.
The seminar begins at 3 p.m. and ends at 6 p.m. with subsequent get-together. The event will be held at BOEHMERT & BOEHMERT’s Munich office, Pettenkoferstrasse 22, 80336 Munich Participation is free of charge. Registration requested via the Munich office or directly with Nils T.F. Schmid (mittelstand(at)boehmert.de).

Prof H. Goddar presents 3rd edition of “Sample Agreements” at the Federal Ministry for the Economy.

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On 16 May 2016, the Federal Ministry for the Economy will present the 3rd revised editions of “Sample Agreements for Research and Development Cooperation between Industry and Academic Institutions”.  BOEHMERT & BOEHMERT and Prof. Dr. Heinz Goddar as head of the working group by the same name mediated these sample agreements for the Federal Ministry and also provided consultancy services to the Federal Chancellery in this regard.
Prof Goddar will introduce the concluding event and presentation of the revised 3rd edition of the Sample Agreements at the Federal Ministry (16 May 2017, 10 a.m. to 4 p.m. at the BMWI Berlin). Speeches by Dr Stückradt, Chancellor of the University of Cologne, Mr. von Wendland from the EU Commission as well as from representatives from Bayer AG and from Robert Bosch GmbH, as well as from Fraunhofer Institute will illuminate the Sample Agreements. In a concluding discussion round, the significance and practice of R&D co-operations in the Federal Republic of Germany will be discussed. Representatives from academia (universities and non-university research facilities) as well as from industry will be present. Registration required.

Fordham IP Conference in New York includes BOEHMERT & BOEHMERT lawyers.

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Organised by the Fordham IP Law Institute, the 25th Fordham Intellectual Property Law & Policy Conference will be taking place in New York from 19 to 21 April 2017. During the conference, three attorneys from the law firm will be appearing as speakers on different panels on Thursday, 20.04. Prof. Dr. H. Goddar will be participating as a panelist on the “Doctrine of Equivalents and Prosecution History Estoppel in Europe” panel. Dr. M. Schaefer will give a presentation on the subject “A Practitioner’s View of the Digital Single Market” on the “EU Copyright Reform & Digital Single Market” panel. More information about the conference can be found here.

“Update on Brexit” special edition of the “B&B Bulletin”: April 2017.

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The current April 2017 special edition of the newsletter provides an update on the referendum in the United Kingdom, which has become known as “Brexit”, regarding the planned withdrawal from the European Union and the consequences to be expected in the IP field. The government of the United Kingdom sent the notification in accordance with Article 50 of the TFEU (Treaty on the Functioning of the European Union) to the Council of the European Union on 29 March 2017. The withdrawal negotiations between the parties have to be concluded within two years, and the outcome has to be ratified by the Member States and the British Parliament. To this end, the newsletter highlights the initial developments and recommends strategic approaches for IP rights. Author and lawyer Dr. Rudolf Böckenholt explains which points rights holders should already be paying attention to and provides a checklist of the most important aspects.
The “B&B Bulletin” can be downloaded or subscribed to here.

Higher Regional Court Munich: Judgement against Check24 with signal effect for other comparison sites

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The Higher Regional Court in Munich delivered its judgement in the case against Check24 on 6 April 2017. The proceedings were brought by the German Association of Insurance Brokers. In the future the comparison site Check24 must provide more transparent information on its broker function and more in-depth advice before being able to conclude an insurance policy online.

The court decision obtained by BOEHMERT & BOEHMERT partners on behalf of the German Association of Insurance Brokers (BVK) against Check24 provides legal certainty regarding to previously unclear questions of insurance brokerage law and at the same time reinforces consumer rights.

Further, the Court held that duties of inquiry and consultation under the Insurance Contract Act apply for all brokers – whether these operate offline or online. This judgement is also of significance for similar business models, such as comparison sites in other sectors.

Dr Florian Schwab in WTR Daily on the Edison SpA vs. European Union Intellectual Property Office (EUIPO) case.

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In the online portal of the specialist magazine World Trademark Review from 31 March 2017, BOEHMERT & BOEHMERT lawyer and trademark law expert Dr Florian Schwab published the article “General Court: no likelihood of confusion between figurative ‘e’ marks for certain energy-related goods and services” The article explains the recently published decision of the European Court of Justice from 14 March 2017 (T-276/15 – Edison SpA v. EUIPO) in a case involving two letter marks. The case centred on the often difficult to determine protective scope of a mark which was comprised of a single letter “e” with basic graphical elements compared to an older mark, also comprised of a single letter “e”. In each case the marks were registered for various goods and services in the field of wind energy.

Dr F. Schwab has for many years made regular contributions to WTR Daily. Those subscribing to the WTR Daily can see the entire article here.

Update Brexit – Exit trig­gered on March 29, 2017

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The notification by the UK Government of March 29, 2017, delivered to the EU Council, is now setting the stage for the exit negotiations. These have to be concluded between the parties and ratified by the Member States and the British Parliament within a term of two years. The parties will have to consider multi-faceted issues, including IP, as we already reported in our Bulletin of July 1, 2016. Draft negotiating guidelines have been published by the Secretariat of the Council on March 31, 2017.

No breaking news yet

Nothing substantial has changed yet for IP owners but it is worthwhile to note that we seem to be getting a “hard” Brexit, meaning the UK will be withdrawing from the entire EU legal system and its freedoms in general, including the Single Market. We will provide regular updates and guidance from the perspective of a European firm serving many client interests in the UK. Brexit uncertainty is hitting business confidence, albeit not very hard so far: The number of UK trade mark applications increased by about 10 % compared to the years preceding Brexit, as recently reported by UK IPO. Numbers at EUIPO have also increased, however. Also, there has been a slowdown in business investment in the UK which fell by 1 % by the end of 2016 compared with the three months up to the end of September, according to the UK Office for National Statistics. Economy in general and IP owners more specifically apply a “wait and see”-approach which seems reasonable for the time being.

No news is not good news

However, due to political dispute and measures taken by the parties, the starting point for exit negotiations is not promising. Even though all stakeholders seem to agree that IP rights are too important to lose sight of, we do not know how EU Trade Marks, Registered Community Designs and Plant Varieties will be addressed and “converted” into the national UK legal system and what costs the right owners will have to incur. Different approaches are discussed by stakeholders, including

  • entering EU rights into the UK registers automatically by Brexit instrument,
  • entering them upon right owners’ request only, or
  • establishing continuation of effect of EU rights and legal framework in the UK,

to name the most popular. These are models that have been seen in the past and which should not cause many implementation issues. Some augurs predict a “dirty” Brexit without a formal agreement with the EU. This would almost certainly exclude the models 1 and 3 above, and model 2 would be available upon payment of a fee. But there is little evidence so far to suggest that a dirty Brexit is going to happen. The far more relevant practical issues for right owners post-Brexit include

  • Extent of “conversion” – all registered and unregistered EU rights covered?
  • Limitations on free movement of goods with the UK potentially leaving the Common Market entirely?
  • Extended territorial scope of EU licenses and IP rights agreements?
  • Enforcement of EU judgments in the UK with European courts losing authority, and vice versa?
  • Further prosecution of pending cases at EU institutions and UK IPO, with loss of registrations?
  • Transitional periods for IP owners to adapt to new situation post-Brexit?
  • procedural issues considered, e.g. re-examination required, grace period of non-use transferred or renewed, novelty grace periods considered, priorities and seniorities accepted, domicile rules met and professional representation possible?

Patience required – and keeping track of developments

Whatever the outcome may be, right owners are well advised to accept that there will be no quick fix to these complex issues and that the best part of the two years’ term may very well have expired before these issues become clearer. In most cases, a down-to-earth analysis from the more neutral European perspective will do for the time being. Do not make hasty decisions by over-nationalizing your portfolio. However, where there are pending projects that may emphasize the UK, it is sensible to seek advice on how to best navigate the situation and obtain the best possible result for your IP portfolio and IP contracts.

Checklist

  • do not risk a territorial gap in filing and watch services,
  • do not abandon existing trade marks,
  • check existing IP-related contracts,
  • check use situation,
  • check legal basis of pending matters,
  • secure useful domains,
  • verify residence/representation in EU/the UK.