General Court denies likelihood of confusion between pharmaceutical marks containing “mar” element- Article by Dr. Florian Schwab in WTR Daily

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On the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr. Florian Schwab discusses a decision of the General Court (Fifth Chamber) in Case T-261/19 20 January 2021, Stada Arzneimittel AG v. European Union Intellectual Property Office (EUIPO).

In this judgment, the Court upholds the decision of the First Board of Appeal of EUIPO that there is no likelihood of confusion between the EU figurative mark sign OPTIMAR and the earlier word mark MAR. For the latter, the evidence of genuine use was limited to “medical nasal sprays”.

With regard to the identically covered element MAR, the Court considered a below-average distinctive character in view of the recognisably descriptive reference to “sea” for medical nasal sprays.

The full article in English is available to registered users of WTR Daily here online and as a PDF download!

WTR 1000 2021 – BOEHMERT & BOEHMERT once again leading the way

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In the new publication of “WTR 1000 – The World’s Leading Trademark Professionals 2021”, BOEHMERT & BOEHMERT is once again excellently positioned with the “Silver Level”.

BOEHMERT & BOEHMERT “[…] remains a frontrunner in the German trademark scene”, is the assessment of the specialist publishing house. “Providing a 360-degree, cross-industry, cross-border service, it ranks among the top trademark filers in both Germany and the European Union, and maintains a strong focus on the Chinese and US markets.”

Five BOEHMERT & BOEHMERT attorneys are also highlighted this year:
Peter Gross favours practical solutions to lengthy court proceedings and has a unique feel for the problems of me-too products.
Regarding Dr. Florian Schwab, it is said that he not only builds productive filing strategies, but also has a nose for fakes.
Dr. Björn Bahlmann is equipped with extended knowledge in the areas of competition and trade secrets. He excelled in restructuring international trademark portfolios as well as in drafting IP-related commercial agreements.
Dr. Volker Schmitz-Fohrmann has many „fans“ among German companies and multinationals, the specialist publisher states. He is not only a contact for portfolio strategies, but also for litigation and anti-counterfeiting. Industry colleagues honour his excellence in theory and practice. In addition, he is always “very precise and well prepared”.
Attorney Dr. Ludwig Kouker is also mentioned in praise. As one of the “elder statesman”, he knows his way around negotiating out-of-court settlements as well as licensing agreements, particularly within the consumer goods industry.

Every year, WTR 1000 identifies the leading law firms and personalities in trade mark law in 70 countries worldwide.

For more information on the ranking and the trade journal “WTR Trademark Review”, please click here.

“Patent System Solutions for AI and IoT Inventions” – Article by Prof. Dr. Goddar in the February issue of GRUR

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In the current edition of “GRUR – Zeitschrift der Deutschen Vereinigung für gewerblichen Rechtsschutz und Urheberrecht” (German Association for the Protection of Intellectual Property), BOEHMERT & BOEHMERT patent attorney Prof. Dr. Heinz Goddar devotes himself to the specific challenges for the patent system in the age of artificial intelligence (AI). 

In his article with the original title “Patent System Solutions for AI and IoT Inventions”, Prof. Dr. Goddar not only deals in detail with problems such as the patentability of AI-related inventions or the use of standard essential patents of competitors under FRAND conditions. He also warns of the consequences that a predictable multiplication of patent portfolios would mean for new developments based on AI and IoT and recommends using already existing conflict solution mechanisms of the patent system also with regard to AI and IoT. 

The article was published on the occasion of Prof. Dr. Peter Meier-Beck’s 65th birthday as a commemorative article in the 2/2021 issue of GRUR. Subscribers to Beck-Online can access it under GRUR 2021, 196.

Prof. Dr. Goddar to lead discussion at Naples Roundtable on 16 and 17 February 2021

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“The Naples Roundtable” initiative of the “Leahy Institute of Advanced Patent Studies” explores ways to improve and strengthen the Patent System by fostering an open dialogue among thought leaders, judges and academics.

As part of the sixth, purely virtual, conference run by “The Naples Roundtable” in 2021, BOEHMERT & BOEHMERT patent attorney Prof. Dr. Heinz Goddar will act as discussion leader on two dates:

Tuesday, February 16, 2021, Phoenix Issue VI.
The future of SEP litigation – Should whichever country decides the rate first be controlling (Unwired v. Huawei (UK Supreme Court sets global FRAND rate))? Are FRAND rates really a global issue? Has Germany Solved the Dilemma of Balancing Interests in Licensing of SEPs?

Wednesday, February 17, 2021, Phoenix Issue VIII.
Cross-border disputes and multinational litigation: Issues pertaining to strategic use of international post-grant proceedings, harmonization, discovery disputes, and global settlement/licensing.

Further information and the exact dates of the event can be found on the website of “The Naples Roundtable”.

Felix Hermann nominated as “ad personam” member of the SACEPO Working Party on Guidelines

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BOEHMERT & BOEHMERT German and European Patent Attorney Felix Hermann has been appointed as an “ad personam” member of the Working Party on Guidelines (SACEPO/WPG) of the Standing Advisory Committee before the European Patent Office (SACEPO) for three years.

Previously, Mr. Hermann had served for more than three years as an „ad personam“ member of the Working Party on Rules (SACEPO/WPR) of the Standing Advisory Committee before the EPO. The President of the EPO, António Campinos, has now honoured his services during this membership by appointing him to the Working Party on Guidelines until 2023.

The members of the SACEPO Guidelines Working Party and representatives from the EPO discuss the annual revision of the Guidelines for Examination in the EPO and for Search and Examination in the EPO as PCT Authority (“Guidelines for Examination”). It thus acts as a forum for discussion of proposed amendments to the next edition of the Guidelines for Examination and  current legal issues in case law, such as the patentability of inventions in the field of artificial intelligence, that might be considered in the Guidelines for Examination.

About SACEPO
The Standing Advisory Committee before the European Patent Office (SACEPO) was established in 1978 to give interested parties the opportunity to participate in the development of the European patent system. The Committee sees itself as an advisory body which is consulted on all important topics as well as practice-oriented questions relating to industrial property protection. SACEPO members are appointed for a term of three years.

Sales of second-hand goods may constitute „genuine use“

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In its decision in Cases C-720/18 and C-721/18 of October 22, 2020, the Court of Justice of the European Union (CJEU) further defined the requirements for “genuine use” of a trade mark. In addition to various important questions regarding the use of a trade mark, the court also commented on the burden of proof in cancellation proceedings due to non-use.

Background

The Regional Court and the Higher Regional Court of Düsseldorf had to decide on the revocation of the word/device trade marks TESTAROSSA registered for the Italian car manufacturer Ferrari. The Regional Court upheld the actions for cancellation on grounds of non- use, essentially stating that Ferrari has not sold any new cars under the trade marks  TESTAROSSA for 25 years. Ferrari only sells used cars and spare parts under the trade mark and provides maintenance services for such vehicles. The Higher Regional Court of Düsseldorf suspended the cancellation proceedings and referred various questions to the CJEU on the interpretation of the concept of “genuine use”.

Decision

First of all, the CJEU confirms that a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to „genuine use“, in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods or only in respect of replacement parts or accessories of some of those goods. It should be otherwise only if it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered. The fact that the trade marks are used only for high-priced goods from the luxury segment is not an appropriate criterion for the formation of an independent subcategory.

Furthermore, the CJEU states a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark. Thus, the exhaustion of the trade mark right by putting the goods on the market for the first time does not affect the question of “genuine use”.

Next, the CJEU confirms that a trade mark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark. The use of the mark for the services is a necessary condition to conclude that the mark has been put to „genuine use”.

Finally, the CJEU comments on the burden of proof in cancellation proceedings due to non-use. In this respect, the court confirms that the proprietor of a trade mark bears the burden of proof that the trade mark has been put to „genuine use”. Indeed, it is the proprietor of the mark at issue which is best placed to adduce evidence in support of the assertion that its mark has been put to genuine use. Member states may not deviate from this allocation of the burden of proof.

Conclusion

The decision is favourable for trade mark proprietors who have stopped selling new goods under their trade mark and limit their acts of use to the sale of second-hand goods and the provision of maintenance services. In the future, such acts can still be classified as “genuine use” of the trade mark. Accordingly, acts of use must be carefully documented, also with regard to resales and maintenance services, in order to be able to prove “genuine use” of the trade mark if necessary.