Please be advised that our offices will be closed on Friday, May 1, 2026 (Labour Day) and on Thursday, May 14, 2026 (Ascension Day). Official deadlines only expire the next working day at GPTO, EPO, EUIPO and WIPO.
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BOEHMERT & BOEHMERT
This IP Dialogue offers an overview of IP protection throughout the entire IP lifecycle in two concise presentations—with a particular focus on the requirements in the life sciences sector and on AI-based inventions. Given its subject matter, the event is primarily intended for companies in the life sciences sector, particularly startups.
We are delighted to invite you to our IP Summer Course in Munich again in 2025! From June 30 to July 4, a diverse program entitled “IP Summer Course – Obtaining, Enforcing, and Evaluating Intellectual Property Rights in Europe” awaits you, covering all important aspects of obtaining and protecting intellectual property in Europe. Find out more now!
BOEHMERT & BOEHMERT Patent and Trademark Seminar on June 18, 2026, at Zukunftspark in Heilbronn
In early summer this year, we are offering a free seminar in two modules on patent and trademark law (soft IP). We have chosen the university city of Heilbronn as the venue, conveniently located on the edge of the Stuttgart, Frankfurt an Nuremberg metropolitan regions. We look forward to seeing you there!
In Issue 2/2026 of The Trademark Lawyer, Dr. Eckhard Ratjen, LL.M. (London), partner at BOEHMERT & BOEHMERT and attorney at law, examines the challenges involved in enforcing non‑traditional trade marks in Germany. Under the title “Litigating non-traditional trademarks in Germany: why market context matters for color and shape marks”, his article addresses the question under which conditions color and shape marks are recognized as indicators of commercial origin in trade mark infringement proceedings. Rights holders continue to face heightened hurdles in this area, as courts often view colors and product shapes as merely decorative or functional elements.
The analysis is based on the traditionally cautious approach taken by German courts toward non‑traditional trade marks. While trademark use is generally straightforward in the case of word and figurative marks, color and shape marks regularly require a closer examination as to whether the relevant public actually perceives the sign as indicating commercial origin.
Drawing on recent decisions of the Higher Regional Courts of Hamburg and Düsseldorf, the article demonstrates that enforcement is nevertheless possible. A careful assessment of the specific market environment in which the sign is used is always decisive. Relevant factors include industry‑specific labeling practices, the level of recognition of the sign, and the composition of the relevant public.
Referring to the decisions of the Higher Regional Courts of Hamburg (“Zinc Yellow”) and Düsseldorf (“Smiley”), Dr. Eckhart Ratjen, an attorney at law specializing in trade mark law at BOEHMERT & BOEHMERT in Bremen, shows that color and shape marks can, under certain conditions, be successfully enforced in Germany. The decisive question is whether the sign clearly stands out in the relevant market and is perceived by the addressed public as an indicator of origin.
Particular importance is attributed to the specific context of use, industry‑typical marking habits, and the composition of the relevant public. Depending on the market, the perception of general consumers or that of specialized professional circles may be decisive — an aspect that is of central importance in trade mark litigation.
The article also highlights the role of well‑substantiated evidence, such as consumer surveys, market studies, or proof of brand recognition. It becomes clear that, in the enforcement of non‑traditional trade marks under German trade mark law, success depends less on abstract protectability and more on the concrete market situation.
In this decision, the Court of Appeal of the Unified Patent Court clarifies that functional claim features must not be construed in isolation from the technical operation disclosed in the patent description – and on this basis sets aside, in its entirety, a first-instance infringement judgment of the Mannheim Local Division. The decision also addresses a procedural question of practical relevance: merely logging into the Case Management System does not constitute entering an appearance within the meaning of the Brussels Ia Regulation, which takes precedence over the preclusion rule in R. 19.7 RoP. The case thus provides useful guidance on both claim construction and international jurisdiction at the UPC.
Korean juicer manufacturer HUROM brought proceedings for infringement of European patent EP 2 028 981 (a vertically oriented juice extractor) against the NUC group of companies (NUC Korea and its German subsidiary NUC Europe) and French distributor WARMCOOK, who marketed the “AUTO10” slow juicer across several European countries. In separate proceedings, HUROM also sought damages against NUC Korea for infringing acts in Turkey.
The Court of Appeal confirms and develops the principles established in NanoString v. 10x Genomics (UPC_CoA_335/2023). The description and drawings must not only be used to resolve ambiguities but must always be used as explanatory aids for the interpretation of the patent claim (para. 21 of the present decision).
Of interest is how the Court of Appeal applies this principle here: it derives from the function stated in the claim (to press, grind and extract juice) an implicit technical requirement – vertical fixation – that is not expressly mentioned in the claim wording. Functional claim features are thus not construed at the UPC in isolation based on their wording, but in conjunction with the technical operation disclosed in the description. In practice, this means the description can influence the scope of protection in both directions – broadening it where it supports a wide understanding, but also narrowing it where it discloses technical prerequisites that the skilled person would consider necessary.
The decision also contains a useful clarification on the relationship between independent and dependent claims. The first-instance court had treated the engagement hooks mentioned in dependent claims 6 and 12 as an additional feature going beyond claim 1. The Court of Appeal corrects this: the dependent claims specify the means of achieving the fixation, not the fixation itself, which is already inherent in the independent claim. This distinction is likely to be relevant in future cases involving functional features with associated dependent claims.
The case shows that the Court of Appeal is prepared to fully revise first-instance claim construction – with the consequence that an infringement judgment, together with all its remedies, is set aside. For litigants, this underscores the importance of the appellate level at the UPC and the need to present, already at first instance, an interpretation that can withstand scrutiny on appeal.
The decision also addresses the interplay between the preclusion rule in R. 19.7 RoP and Art. 26(1) Brussels Ia Regulation regarding international jurisdiction.
The Court of Appeal upheld the finding that the UPC lacked jurisdiction over infringing acts in Turkey. NUC Korea had not filed a timely Preliminary Objection pursuant to R. 19 RoP, but had challenged jurisdiction in its Statement of Defence – which, in the Court’s view, sufficed to preclude a finding of entering an appearance. The Court set out three headnotes:
Art. 26 Brussels Ia Regulation does not preclude the establishment of jurisdiction through entering an appearance – on the contrary, the provision expressly contemplates this. What the decision clarifies, however, is from what point such an appearance can arise at all, and that R. 19.7 RoP cannot displace this concept, which must be interpreted autonomously under EU law. The Court distinguishes between the technical act of accessing the system (logging into the CMS) and a deliberate procedural step (lodging the first statement), establishing the primacy of the Brussels Ia Regulation over the RoP. This gives defendants domiciled in third states assurance that a missed Preliminary Objection does not automatically establish international jurisdiction.
In Digital Law 2026, Dr. Sebastian Engels and Dr. Julian Wernicke, both attorneys at law at BOEHMERT & BOEHMERT’s Berlin office, examine the impact of the new EU Empowering Consumers Directive (Directive (EU) 2024/825) on sustainability claims and environmental advertising.
In their German-language article “Umweltwerbung wird auch zukünftig möglich sein” (environmental advertising will remain permissible) the authors analyze the tightened requirements for so‑called green claims and explain under which conditions companies will continue to be allowed to advertise with environmental and sustainability‑related statements. The background is the amendment of the Unfair Commercial Practices Directive, which will apply in Germany from the end of September 2026.
The analysis begins with the future ban on general and unsubstantiated environmental claims. Common terms such as “environmentally friendly,” “climate‑neutral,” or “sustainably produced” will face stricter requirements. Such claims will only be permitted if they are clearly specified, verifiable, and transparent. Alternatively, they must be supported by recognized sustainability labels.
Dr. Engels and Dr. Wernicke point out that vague or sweeping environmental statements without appropriate substantiation will carry a significantly increased risk of challenges under unfair competition law. The same applies to environmental targets presented merely as future aspirations, unless they are supported by a concrete, realistic, and independently verifiable implementation plan.
A further focus of the article is the growing importance of transparency and proof. In the future, companies will need to substantiate individual environmental attributes more carefully. They must also clearly indicate which part of a product or value chain a claim refers to.
The authors emphasize that greater care will also be required when using sustainability labels. In addition to officially recognized public labels, only certifications that meet strict standards regarding independence, transparency, and oversight will be permissible. Many labels currently used in practice are unlikely to meet these requirements under the new rules.
Sebastian Engels and Julian Wernicke also highlight expanded information obligations. These include requirements relating to durability, reparability, and product longevity. Such factors are increasingly important for sustainable purchasing decisions. They will therefore face closer legal scrutiny in the future.
The German‑language article “Environmental advertising will remain permissible” by Dr. Sebastian Engels and Dr. Julian Wernicke was published in the Digital Law 2026 special supplement by SMART Media. It was distributed with the Handelsblatt and appears on page 16. The article is available as a PDF and can also be accessed online on the SMART Media website.
How can ideas, innovations, and new technologies be effectively protected – and at the same time strategically deployed within the company? The first BOEHMERT & BOEHMERT IP seminar in Kiel will address this and other current issues. Register free of charge and gain practical insights in four compact presentations!
In its decision of 21 February 2026 in Astellas Institute for Regenerative Medicine v Healios K.K. (UPC_CoA_489/2025), the Unified Patent Court Court of Appeal addressed the role of litigation insurance in the context of security for costs and confirmed that such arrangements may in principle be taken into account.
The decision provides important guidance for UPC litigation. While litigation insurance is not treated as automatically equivalent to traditional forms of security, it is recognised as a potentially relevant means of addressing cost risk.
The case arose from an application for security for costs. The applicant argued that there was a risk that a potential adverse costs award could not be enforced and requested that security be ordered.
The opposing party relied, inter alia, on a litigation insurance arrangement covering adverse costs. The central question was therefore whether such an arrangement could be considered sufficient to mitigate or exclude the need for security.
The Court of Appeal made clear that litigation insurance can, in principle, be relevant when assessing whether a party is able to meet a potential costs order.
This constitutes a notable development. Rather than excluding such arrangements from consideration, the Court acknowledged that modern litigation structures may involve insurance-based coverage of cost risks and that these arrangements can be taken into account.
At the same time, the Court did not establish a general equivalence between litigation insurance and traditional forms of security.
The Court emphasised that the decisive question remains whether the risk of non-recovery is sufficiently addressed in practice.
In this context, litigation insurance is not automatically equivalent to a bank guarantee or similar forms of direct security. Its adequacy depends on the specific terms and reliability of the insurance.
The Court therefore rejected a formal approach and confirmed that different types of financial backing must be assessed on their individual merits.
The decision indicates that litigation insurance will be subject to a detailed and case-specific assessment.
Relevant considerations include whether the insurance provides:
Arrangements that are subject to conditions, exclusions or discretionary elements may not be sufficient to eliminate the risk of non-recovery.
The decision has immediate implications for UPC litigation.
First, it opens the door for litigation insurance to be used as part of a strategy to address security for costs. Parties may rely on such arrangements, provided they can demonstrate their reliability.
Second, the decision also makes clear that such reliance will be scrutinised closely. The burden remains on the party invoking the insurance to show that it provides effective protection.
Third, applicants for security for costs retain the possibility to challenge the adequacy of such arrangements and to argue that additional security is required.
The Court of Appeal recognises litigation insurance as a potentially relevant element in the assessment of security for costs under the UPC. At the same time, the decision confirms that its acceptance is not unconditional. The decisive factor remains whether the arrangement provides a reliable and enforceable safeguard against the risk of non-recovery.
Initial market reactions indicate that insurers have already begun to structure and offer corresponding products tailored to UPC litigation.
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