First open source research in Germany and BOEHMERT & BOEHMERT is part of it

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Without open source software we would not have smartphones, the Internet would not work and our working environment would be much different. And while freeware, as well as open source software, and the associated movement were largely rejected by the business community in earlier years, open source is now deliberately used in almost all larger companies.

This is the result of the first representative open source research in Germany by the digital association Bitkom and Bitkom Resaerch GmbH. BOEHMERT & BOEHMERT as well as eight other well-known companies were involved in the study as supporters.

According to this Open Source Monitor, two thirds of the companies surveyed deliberately use open source software. 31 per cent even participate in its further development. The high level of acceptance is evident in all sectors, with the retail trade and the automobile industry being particularly open-minded. In contrast, only 21 percent of the companies surveyed also have an open source strategy.

This positive attitude is based on the advantages that 88 percent of the companies see in the use of open source software. The most important reason cited is the saving of costs by eliminating license fees (17 percent). High security through timely updates, independence, a wide selection of open source components, as well as access to the source code and simple individual adaptations are further impulses for the use of open source software.

In the course of the research, 804 companies with at least 100 employees in Germany were surveyed, selected according to size classes and industries. For a uniform understanding, the definition of the term “open source software” was established at the beginning of each interview.

The complete study by Bitkom can be downloaded from the following link:
Open Source Monitor – Research report 2019

New options for objections to registered trademarks in Germany: administrative invalidation and revocation proceedings as of 01 May 2020

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The German Trademark Law Modernization Act (MaMoG) essentially came into force on January 14, 2019. It implemented the EU trademark law reform, technically EU Directive 2015/2436 into the German Trademark Act (see B&B Bulletin article of 15 January 2019). With a delay – but largely within the term for implementation-, namely as of 1 May 2020, a highly practice-relevant core aspect of the implementation will come into force: namely a full administrative  invalidation procedure due to earlier rights as well as a full revocation procedure, extending the competence of the German Patent and Trade Mark Office (German PTO).

Extended range of attacks against trademark registrations

As a result of the new provisions, a new option is given for attacking registered trademarks: apart from exclusively bringing an actions before the civil courts, older rights (relative grounds for invalidity) and revocation due to lack of genuine use can also be completely invoked at an administrative level before the German PTO.

Thus, applicants might safe costs in terms of procedural economy as well as to make use of the professional competence of the registration authority. The MaMoG now offers the full trias to have registered trademarks cancelled in purely administrative proceedings – not only as until now on the basis of absolute grounds for invalidity (lack of registrability) but also for revocation (not only as formal preliminary proceedings) and due to conflicting earlier rights. Thus, the German trademark law is adapted to the systematics on the level of the European Trade Mark Regulation.

New administrative invalidation proceedings due to conflicting earlier rights

The proprietor of one or more earlier rights (within the meaning of Sections 9 to 13 of the German Trade Mark Act, i.e. on a broader basis than in opposition proceedings, for example also due to rights to names, copyright or design rights) can now for the first time obtain a declaration of invalidity and cancellation of a registered German trade mark in proceedings before the German PTO. The same applies to the withdrawal of protection of a part of an International Registration which designates Germany.

From a practical point of view, the following must be observed:

• The adversarial part of the proceedings will only be carried out if  the owner of the registered trade mark objects to the declaration of invalidity within two months of notification of the application for the declaration of invalidity; otherwise, the German PTO will declare the trade mark invalid and cancel it with effect ab initio (ex tunc).

• Relationship to opposition proceedings: official invalidity proceedings are admissible despite pending opposition proceedings, even on the basis of the same earlier right.

• In contrast to opposition proceedings, in invalidity proceedings, the „moving period of use“ continues to exist; therefore, if the grace period for use expires during the invalidity proceedings, proof of use of the earlier mark during the five years preceding the decision must be provided, if the proprietor of the challenged mark objects.

Full revocation proceedings before the German PTO

Upon request, the registration of a trade mark is revoked and cancelled, primarily if it has not been used within a period of five years. In the absence of an opposition, the trademark is cancelled – normally with effect for the future (ex-nunc). However, if the trademark owner objects within two months after notification of the application for revocation, the adversarial part of the proceedings will, as new provision, be continued before the German PTO – upon payment of a follow-up fee by the applicant.

Consequently, the applicant – in contrast to the previous law – is no longer obliged to pursue his application before the civil courts in an action for revocation.

Special procedural aspects for both options

• Alternative but not cumulative option: Civil law action and corresponding requests for invalidity or for revocation before the German PTO exclude each other for the same subject matter in dispute.

• An appeal against the decision of the German PTO may be filed with the Federal Patent Court.

• Already the written request for invalidation or revocation must be substantiated and evidence must be indicated (unlike for filing an opposition).

• Hearings shall be held in official proceedings at the request of one of the parties or if deemed relevant.

• Upon request, the providing of a security for the costs of the proceedings may be required from an applicant outside the EU/EEA.

Increased need for consultancy – far-reaching strategic decisions

Especially for owners of older rights, the options for taking action against younger trademarks increase. The strategic considerations – also relevant for negotiations on an amicable settlement – are complex. Only the following aspects can be touched upon:

Lower cost threshold for administrative proceedings, but no reimbursement

The proceedings before the German PTO are far less expensive than the corresponding legal action before the civil courts. This aspect alone will increase the number of attacks on registered trademarks for revocation and invalidation based on earlier conflicting rights on an administrative level. On the other hand and unlike in case of a successful lawsuit, there is normally no reimbursement of costs in the relevant administrative proceedings.

Reduced burden of proof concerning genuine use in administrative proceedings

An affidavit continues to be accepted as main element of the formally increased threshold to prove (instead of the showing of a plausibility) genuine use of a trademark – at least before the German PTO – in administrative proceedings. In contrast, the stricter full proof applies in legal proceedings.

Provocation of the administrative revocation proceedings in case of opposition

As is the case at the level of European Union trade marks, an owner of earlier trade mark(s) will have to consider more in detail the consequences of the filing of an opposition. Should his prior trademark have fallen out of the grace period of non-use, it might not only become subject to the plea of non-use in the context of the opposition proceedings. There is now the much more far reaching threat of total loss of such prior mark via the inexpensive counter-attack in an official revocation procedure.

All in all, the new low-cost administrative trademark cancellation procedures, while maintaining the corresponding legal action, lead to expanded strategic options, a corresponding need for advice and certainly to an increase in attacks on registered trademarks.

The Legal 500 – EMEA 2020: BOEHMERT & BOEHMERT once again honoured as top tier law firm

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While BOEHMERT & BOEHMERT has already been given an outstanding rating in the current edition of “The Legal 500 – Germany 2020”, the law firm has now also been awarded the distinction of “Top Tier Firm” in an international comparison by “The Legal 500 – Europe, Middle East & Africa”. The recognition concerns the three areas “Patent Litigation”, “Patent Prosecution” and “Trade Marks”.

The following twelve BOEHMERT & BOEHMERT attorneys are recommended by name:
Dr. Carl-Richard Haarmann and Dr. Michael Rüberg (both for “Patent Litigation”); Dr. Markus Engelhard, Prof. Dr. Heinz Goddar, Nils T. F. Schmid, Christian W. Appelt, Dr. Daniel Herrmann and Dr. Martin Erbacher (all for “Patent Prosecution”) as well as Dr. Rudolf Böckenholt, Malte Nentwig, Dr. Volker Schmitz-Fohrmann and Dr. Martin Wirtz (all for “Trade Marks”).

“BOEHMERT & BOEHMERT continues to be one of the most active patent application practices in Germany, not only before the German Patent and Trade Mark Office (DPMA) but also before the European Patent Office (EPA) and the World Intellectual Property Organization (WIPO)”, sums up The Legal 500 EMEA and honours this commitment with the rating “Tier 1 Firm”. The particular strength of the geographically widespread firm lies in the biochemistry, mechanical engineering, pharmaceuticals, software and electrical engineering sectors.

For the area of “Trade Marks”, The Legal 500 EMEA emphasizes the firm’s special competence in the strategic development and management of large trade mark portfolios both within Germany and internationally: ” The team also receives demanding contentious instructions, which frequently go all the way to the Federal Court of Justice (BGH). Dr. Rudolf Böckenholt is particularly highlighted here as a partner of the next generation.

The “Patent Litigation” team at BOEHMERT & BOEHMERT is also commended. It is increasingly gaining an independent profile and was able to expanded its international client portfolio, especially in the USA and Asia.

The Legal 500 Europe, Middle East and Africa (EMEA) offers its readers an annually updated evaluation of leading law firms and attorneys in the countries of the region by impartial third parties. The EMEA guide provides an overview of 88 countries with more than 2,700 law firms and their assessments. There is no fee for participation. The Legal 500 EMEA’s team of experts compiles its evaluations and rankings purely on the basis of services rendered.

The full evaluation can be viewed here.

Interview with Prof. Dr. Heinz Goddar in the current issue of “IAM Global Leaders 2020”

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Every year, the editorial staff of IAM GLOBAL LEADERS talks to the elite of international patent and trademark attorneys about their insights into IP law, politics and practice and their many years of experience in the IP environment.

This year, Professor Dr. Heinz Goddar was also asked for an interview as “IP Hall of Famer”, according to the IAM quote, and awarded the Gold Level of the IAM Patent 1000. 

In it, Mr. Goddar talks about his professional career, his rewarding work as Professor of IP Law and his commitment to LES International, which culminated in the founding of LES Chinese Taipei and a fruitful cooperation with China.

Other topics include the challenges of managing big portfolios of patents, win-win situations and attorneyorney skills as prerequisites for business success, and new evolvements in the European patent environment. 

Read the detailed interview with Prof. Dr. Heinz Goddar here!