Dr. Rudolf Böckenholt, Attorney at Law at BOEHMERT & BOEHMERT

Fixed-date transaction! Scope of the objection unchangeable after expiry of the objection period – Dr. Rudolf Böckenholt in GRUR Prax 2/2025

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Dr. Rudolf Böckenholt on the decision of the General Court of the European Union of 20.11.2024 – T1159/23

In the current issue 2/2025 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht” (Intellectual Property and Copyright Law / Practice in Intellectual Property and Competition Law), BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt explains a decision of the General Court of 20 November 2024 on a procedural problem in opposition proceedings at the EUIPO.
The court states that the ground stated in the opposition and the area of protection of the earlier right can no longer be changed at a later date – after expiry of the opposition period – which also means that no narrowing can take place.

In the specific case, the opponent had designated the earlier non-registered trademark right with the EUIPO protection area, which the court interpreted as a reference to the entire EU. The reasoning only refers to use in a few EU member states.

The court considers this to be inadmissible overall. It is crucial to specify precisely and conclusively the territories and property rights when filing an opposition. Following a change, the EUIPO’s online portal, which can be used to file oppositions, no longer provides for the previous selection option “EUIPO”, but only the individual EU member states within the framework of Art. 8 (3) EUTMR. Any misunderstandings that may have been the cause of this are therefore no longer possible.

The full article by Dr. Rudolf Böckenholt entitled “Fixgeschäft! – Tragweite des Widerspruchs nach Ablauf der Widerspruchsfrist unveränderlich” can be found in German in the printed edition of GRUR-Prax 02/2025. Subscribers to beck-online.de can access the article here.

Christian W. Appelt, Patent Attorney at BOEHMERT & BOEHMERT

Christian W. Appelt to speak at the 23rd Dusseldorf Patent Law Days on March 14, 2025

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BOEHMERT & BOEHMERT partner and patent attorney Christian W. Appelt will speak on the second day of the event from 9.45 a.m. on the current decision-making practice of the Boards of Appeal of the EPO.

The “Zentrum für gewerblichen Rechtsschutz” (Center for Intellectual Property) at Heinrich Heine University Düsseldorf is once again inviting experts to this year’s “Düsseldorfer Patentrechtstage” (Dusseldorf Patent Law Days).

Under the chairmanship of Prof. Dr. Jan Busche and Prof. Dr. Peter Meier-Beck, former Presiding Judge of the German Federal Court of Justice (VorsRiBGH), judges from various courts and chambers, representatives of the Federal Ministry of Justice and from academia as well as lawyers will provide information on current topics and developments in patent law on March 13 and 14.

While the first day of the event will focus on the European Unified Patent Court (UPC) and the interpretation of claims in the European patent system, the second day will deal with the case law of lower courts, the Court of Appeal of the UPC and the Federal Supreme Court.

In this context, BOEHMERT & BOEHMERT partner and patent attorney Christian W. Appelt will speak from 9.45 a.m. on the current decision-making practice of the Boards of Appeal of the European Patent Office.

Further information and an option to register can be found here on the Düsseldorf Patent Law Days website. The event will be held in German.

 

Dr. Julian Wernicke, Attorney at Law at BOEHMERT & BOEHMERT

No exhaustion of an EU trade mark when placing products on the market in Turkey – Article by Dr. Julian Wernicke in GRUR-Prax 01/2025

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In the first issue of the new year of the journal “Gewerblicher Rechtsschutz und Urheberrecht in der Praxis” (GRUR-Prax), attorney at law Dr. Julian Wernicke from BOEHMERT & BOEHMERT addresses the question of whether the rights of a German trade mark or a Union trademark are exhausted when the trade mark owner has already placed the products on the market in Türkiye. This issue touches on a key topic in trade mark law practice that is of significant importance to internationally operating companies.

This question was raised in a decision of the Higher Regional Court of Nuremberg (OLG Nürnberg) dated October 29, 2024 (3 U 881/24, GRUR-RS 2024, 30069 – Kurukahveci Mehmet Efendi). The trade mark owner had filed a lawsuit against an importer who had brought the coffee cans, which the trade mark owner had sold in Türkiye, into Germany and resold them. The court ruled in favor of the trade mark owner, deciding that placing products on the market in Turkey does not lead to trade mark exhaustion in relation to the holder of a German or Union trade mark. In making its decision, the court also took into account the provisions of the “Additional Protocol to the Agreement of September 12, 1963, establishing an Association between the European Economic Community and Türkiye.”

The full article by Dr. Julian Wernicke, titled “No exhaustion of a Union trade mark when products are placed on the market in Türkiye,” can be found in the printed edition of GRUR-Prax 01/2025. Subscribers to Beck-Online can also access the article in German online here.

Dr. Martin Wirtz, Rechtsanwalt bei BOEHMERT & BOEHMERT

Dr. Martin Wirtz with article in the Mitteilungen der deutschen Patentanwälte, issue 01/2025 – News from trademark law

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For the 34th time in a row, BOEHMERT & BOEHMERT attorney at law and partner Dr. Martin Wirtz has dealt with the latest developments in trademark law in the 116th edition of the Mitteilungen der deutschen Patentanwälte and published them in his article entitled “News from Trademark Law”.

In it, he deals with current decisions and new developments in trademark law. It does not claim to be exhaustive and deals primarily with decisions from the year 2024. The article goes into detail on case law decisions in Germany and at EU level on the protectability of trademarks, likelihood of confusion, rights-preserving and infringing use, protection of identity, protection of reputation.

Subscribers can find the article in German language by Dr. Martin Wirtz on pages 1-12 in issue 01/2025 of Mitteilungen der deutschen Patentanwälte, published by Carl Heymanns Verlag.

Dr. Florian Schwab in WTR Daily on case T-157/24 – Meica Ammer­ländische Fleisch­waren­fabrik Fritz Meinen GmbH & Co. KG v. the EUIPO

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In the online magazine “World Trademark Review Daily”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Florian Schwab comments on a recent decision of the General Court of the European Union (Case T-157/24), in which the Luxembourg court confirms the absence of a likelihood of confusion between the EU word mark application CHIPSY KINGS and Meica’s opposition mark in the form of the word mark CURRY KING.

In its decision of December 11, 2024 in Meica Ammerländische Fleischwarenfabrik Fritz Meinen GmbH & Co. KG v EUIPO (case T-157/24), the General Court of the European Union, following the decision of the Board of Appeal, found that there was no likelihood of confusion between the EU trademark application CHIPSY KINGS and the earlier EU-part of the International Registration of the word mark CURRY KING.
Both trademarks had identically or similarly claimed, inter alia, “meat, vegetarian and potato products and retail food services”. However, the overall impression of the two composite marks was sufficiently different.
In particular, the common component KING(S) was considered to be laudatory and, therefore, of weak distinctiveness. CURRY was also understood as descriptive of Indian food or of the spice.
In the case of the younger trademark, the component CHIPS was considered either also being descriptive (“chipsy”) or, on the contrary, fanciful and, in this case, more distinctive – and thus less likely to cause confusion – compared to the (common) element KING(S).

The article by Dr. Schwab entitled “General Court confirms lack of likelihood of confusion between CHIPSY KINGS and CURRY KING” was published on January 7, 2025 and is available online for registered users of WTR Daily here.