Prof. Dr. Heinz Goddar and Melanie Müller appointed as lecturers at Bucerius Law School

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With effect from 1st May 2022, BOEHMERT & BOEHMERT patent attorney Prof. Dr. Heinz Goddar and BOEHMERT & BOEHMERT attorney at law Melanie Müller have been appointed as lecturers for industrial property rights at Bucerius Law School (BLS).

Bucerius Law School – Hochschule für Rechtswissenschaften in Hamburg was founded in 2000 by the ZEIT Foundation and Gerd Bucerius as the first private law school in Germany. It is stately recognised, accredited by the German Council of Science and Humanities and has the right to award doctoral and post-doctoral degrees.

Dr. Martin Schaefer comments in GRUR on the ECJ ruling: Compensation obligation for stored private copies of protected works in the cloud – Austro-Mechana/Strato

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In GRUR issue 8/2022, 558 of April 15, 2022, BOEHMERT & BOEHMERT partner and attorney at law Dr. Martin Schaefer comments on a decision of the European Court of Justice of March 24, 2022 – C-433/20 (Austro-Mechana/Strato) on the mandatory statutory remuneration for private copies of protected works stored in the cloud. 

The background is the legal dispute between GEMA´s Austrian sister organisation, Austro-Mechana, and Strato AG, a German provider of cloud services. The Vienna Higher Regional Court had submitted a request for a preliminary ruling to the European Court of Justice, concerning two questions relating to Art. 5 II lit. b InfoSoc Directive (2001/29). 

In his note to the ECJ judgement in GRUR 2022, 558, Dr. Martin Schaefer comments on the argumentation, employed by the ECJ, followed by conclusions presenting ideas for new ways to deal with the situation created by the CJEU´s ruling. 

Users of GRUR can download the commentary by Dr. Martin Schaefer here.

HUB31 Roundtable: Dr. Daniel Herrmann and Dr. Lennart-Knud Liefeith will speak on the topic of patents on 26 April 2022 in Darmstadt

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At the HUB31 Technology and Start-up Centre Darmstadt, BOEHMERT & BOEHMERT patent attorneys Dr. Daniel Herrmann and Dr. Lennart-Knud Liefeith (both Frankfurt) will speak on the importance of intellectual property protection for start-ups on 26 April 2022 from 4:00 to 6:00 pm.

Using examples, the two attorneys will show how the process towards a patent works, which patent strategies are advisable and which aspects of software or computer-implemented inventions are patentable in Europe.

The lecture will be followed by a Q&A session, during which Dr. Herrmann and Dr. Liefeith will also be available for individual discussions.

The free event will be held in German and in accordance with the 2G-Plus hygiene concept. You can find all information on this and a link to register via e-mail here.

Intellectual property updates in light of the ongoing war in Ukraine

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For more than two months now, a fierce war has evolved between Russia and Ukraine. We observe the developments in Ukraine with great concern, and sincerely hope that the Russian aggression can be stopped as soon as possible.

It may seem inappropriate to consider the effects of war on intellectual property developments, in light of ongoing reports about crimes committed in the Ukraine, and in light of devastating news and pictures that reach us. Still, certain effects on IP exist, and we believe that providing a brief summary of these on this site is appropriate.

The International Trademark Association (INTA) has summarized some of the effects the war had on intellectual property practice (https://www.inta.org/resources/the-status-of-intellectual-property-in-russia-and-ukraine/; updated April 8, 2022). Some excerpts from the information conveyed by INTA:

Ukraine

  • “The Ukrainian IP Office (Ukrpatent) continues to work. The Patent Board of Appeals has suspended operations.”
  • “It is not currently possible to send or receive original hard copy (paper) documents to / from Ukrpatent. The online filing system remains in operational and official fees can still be paid to Ukrpatent”
  • “The Ukrainian Parliament passed a law ‘On Protection of Interests of Intellectual Property in Martial Law’ (Law No 7228) on April 1, 2022. According to the new law, the duration of terms related to the protection of IP rights, as well as deadlines for procedures for acquiring these rights, are suspended. The law allows authorized persons to submit documents within 90 days of the abolition of martial law, without paying a fee for extension, or restoration of the relevant deadlines. Martial law was declared in Ukraine on February 4, 2022, following the issue of Decree 64/2022, for a period of 30 days. On March 26, 2022, the Ukrainian Parliament voted to extend martial law for a further 30 days. It is expected to be extended again before the end of April 2022”

Russia

  • “The Russian IP Office (Rospatent) and the Eurasian Patent Office are operating as usual and have not announced any unusual extensions or reinstatements”
  • “Russia has issued new legislation regarding changes to its patent laws but has yet to officially revise its law regarding the treatment of trademarks. The recent ruling in the Peppa Pig case, in which a Russian court refused to enforce Peppa Pig’s rights in Russia due to the unfriendly actions of the UK against Russia, there is a de facto shift in treatment of trademarks via the courts and a likely mirror Rospatent’s policy based on recent filings for similar marks to famous marks from ‘unfriendly countries’“

European Union

  • “The European Union Intellectual Property Office (EUIPO) has halted all cooperation actions with Rospatent, and the Eurasian Patent Office (EAPO)”
  • “The EUIPO pledged support to Ukrainian users and issued a one-month extension of time limits (which began on February 24, 2022) in proceedings before the office for all parties that have a residence or a registered office in Ukraine”

United States

  • “On March 4, 2022, the USPTO announced that it will no longer engage with officials from either Rospatent or the Eurasian Patent Office”
  • “Effective March 11, 2022, the USPTO will no longer grant requests to participate in the Global Patent Prosecution Highway (GPPH) when such requests are based on work performed by Rospatent as an Office of Earlier Examination under the GPPH“
  • “The USPTO also warns that applicants filing international applications under the Patent Cooperation Treaty should be aware that selecting Rospatent as an International Searching Authority or International Preliminary Examining Authority, may not result in the successful processing of international applications under PCT, with relation to possible problems with the transmittal of fees through financial institutions“

Three BOEHMERT & BOEHMERT attorneys will participate in the 29th Annual IP Conference of the Fordham IP Institute

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Prof. Dr. Heinz Goddar and Melanie Müller will speak on the topic “2nd German Patent Modernization Act – On the Way to E-Bay-Scenario in Germany” on Friday, April 22, 2022. Already on Thursday, April 21, Dr. Martin Schaefer will be a panelist on the topic of „EU Copyright Developments“.

The 29th Annual IP Conference will take place on April 21-22, 2022. Because of the ongoing pandemic, it will be held remotely. Details about the programme can be found here. You can register under the following link.

Hofbräuhaus lawsuit: Munich Regional Court I recognises protection of the reputation of the “Hofbräuhaus” trademark

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The Regional Court of Munich I grants protection of reputation to Hofbräu München’s trade marks and corporate identifiers “Hofbräuhaus”.

A dispute between Hofbräu München, represented by BOEHMERT & BOEHMERT attorney at law Claudia Deppe, and John Scheller, owner of four Edeka stores in Dresden, which has lasted for more than ten years, has come to an end with a court settlement.

In the oral hearing at the end of February 2022, the Regional Court Munich I had come to the preliminary legal assessment that the lawsuit of Hofbräu München had good chances of success at least because of the reputation of the earlier rights of Hofbräu München to the designation “Hofbräuhaus”.

In order to finally end the long-standing conflict and in view of the costs and time involved in continuing through further instances, the court recommended that the legal dispute should be settled by means of a compromise. This could include in particular that Mr. Scheller withdraws the registration of his trademark „Seit 1872 Dresdner Hofbrauhaus“ and ceases to use this mark. In return, Hofbräu München should waive to claim damages.

The conflict was triggered in spring 2011 when the defendant applied for registration of the German word and figurative mark “Seit 1872 Dresdner Hofbrauhaus“ The owner of four Edeka stores in Dresden has had a beer brewed outside Dresden and sold in his stores under this word/figurative mark since 2011.

Hofbräu München initially filed an opposition with the DPMA against the registration of the defendant’s word/figurative mark on the basis of its earlier trade mark rights to the designations “Hofbräuhaus” and “Hofbräu” and, in parallel to these opposition proceedings, which have not yet been concluded, repeatedly made attempts to reach a settlement.

However, as the defendant did not want to give up its trade mark, continued to offer and advertise its beer under the disputed trade mark and ran a café in one of its Edeka stores under the name “DRESDNER HOFBRAUHAUS”, Hofbräu München filed an infringement action with the Munich Regional Court I in November 2020.

With the action, Hofbräu München claimed in particular that the defendant ceases to use the disputed figurative mark as well as the declaration of invalidity of this mark and based its claims, inter alia, on the reputation of its earlier trade mark rights in the designations “Hofbräuhaus” and „Hofbräu“ for beer and gastronomy services, as evidenced by survey reports.

After both the degree of distinctiveness of Hofbräu München’s earlier trade marks “Hofbräuhaus” and “Hofbräu” and their reputation were questioned in the opposition proceedings, the Regional Court Munich I even expressed in the oral hearing that it considered the reputation of these earlier trade mark rights of Hofbräu München to be an obvious fact known to the courts.

In the meantime, the parties have settled the dispute in accordance with the court’s suggestion.

Representing Hofbräu München: Claudia Deppe, attorney at law BOEHMERT & BOEHMERT

Dr. Ute Kilger writes about the “Digitalisation of Medicine” in the trade magazine Plattform Life Sciences

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The digitalisation of medicine – a challenge also for patenting 

Artificial intelligence, augmented reality, robotics, machine learning and big data are the trends and challenges of our time and will also revolutionise our healthcare system.
But how can innovations in these technical fields be protected? What needs to be considered when patenting software-based processes? After all, therapeutic and diagnostic procedures on the human body as well as software are generally excluded from patentability in Europe.

BOEHMERT & BOEHMERT partner and patent attorney Dr. Ute Kilger deals with these questions in her article “Digitalisation of Medicine” in the March 2022 issue of the trade journal Plattform Life Sciences.
In this article, Dr. Kilger appeals to take these new challenges into consideration when drafting a patent application and summarises that corresponding technical expertise with regard to software, medical devices and life sciences will be indispensable in the future.

The article by Dr. Ute Kilger on page 44 of the journal is available online in German here.

WTR 1000 2022 – BOEHMERT & BOEHMERT once again excellently ranked

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BOEHMERT & BOEHMERT is again awarded the “Silver Level” for Germany in the new edition of “WTR 1000 – The World’s Leading Trademark Professionals”.

According to the jury’s opinion, BOEHMERT & BOEHMERT takes an innovative approach to instructions across the spectrum of IP, while its multinational team makes cross-border matters a breeze.

Six BOEHMERT & BOEHMERT lawyers are commended by name:
Dr. Carl-Richard Haarmann, who, as a highly proficient portfolio manager, passes on his knowledge as a guest lecturer in far-flung places such as India and China.
His colleague, Dr. Volker Schmitz-Fohrmann, is responsible, among other things, for projects to combat product piracy and for managing the firm’s Paris office.
Peter Gross is equipped with skills in the area of portfolio strategy. He combines these with a “knack” for resolving disputes in and out of court.
Dr. Florian Schwab was also singled out by the jury. He distinguishes himself through his well-founded theoretical knowledge as well as his close connections to Spain and Latin America.
Dr. Björn Bahlmann is an excellent choice when it comes to portfolio management, disputes or the smooth mediation of contracts, according to the jury. His broad range of responsibilities also extends to related areas such as employee invention law or trade secrets.
Attorney at law Dr. Ludwig Kouker is also still on board, WTR 1000 says. He has been negotiating favourable out-of-court settlements and licensing agreements for consumer goods and retail companies for 30 years.

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.