26 Oct 2018 | Copyright
Commentary on EU Portability Regulation published and accessible here
The English-language edition of the commentary on the EU Portability Regulation (2017/1128) has just been published. The authors, Prof. Dr. Jan Bernd Nordemann and Dr. Sebastian Engels, are attorneys at BOEHMERT & BOEHMERT. They already contributed the German-language commentary for the 12th edition 2018 of the renowned Fromm/Nordemann Copyright Commentary. The freely accessibly online magazine Journal of Intellectual Property, Information Technology and E-Commerce Law (JIPITEC) has now published the English-language commentary. Like every article in the JIPITEC, this is also freely accessible. The comment can be accessed here; a pdf of the article can be found at the end of the page.
18 Oct 2018 | Copyright
Fromm/Nordemann: Copyright law. Commentary on Copyright Act in 12th edition and 50th anniverary - with various contributions from BOEHMERT & BOEHMERT
The 12th edition of the renowned commentary has now been published by Prof. Dr. Axel Nordemann, Prof. Dr. Jan Bernd Nordemann and Prof. Dr. Christian Czychowski and (with the exception of the section on copyright crime) has been revised exclusively by BOEHMERT & BOEHMERT lawyers. This standard commentary for copyright practice includes all statutory innovations - including the Knowledge Society Copyright Act (UrhWissG) enacted on 30 June 2017 - as well as current German and European jurisprudence. The Publishing Act (VerlG) is also commented as is the Portability Ordinance, the first EU regulation in the field of copyright law. New additions include comments on Open Source Software as well as on plagiarism. Editors from BOEHMERT & BOEHMERT: Dr. Thomas W. Boddien Prof. Dr. Christian Czychowski Dr. Andreas Dustmann, LL.M. Dr. Sebastian Engels Prof. Dr. Axel Nordemann Prof. Dr. Jan Bernd Nordemann, LL.M. Dr. Anke Nordemann-Schiffel Dr. Martin Schaefer Dr. Volker Schmitz-Fohrmann, M. Jur. Dr. Julian Waiblinger Dr. Martin Wirtz You can read an interview about the needs for the revision after just four years on the Beck Verlag website here.
27 Sep 2018 | Copyright
Prof Jan Bernd Nordemann on the enforcement of national law beyond borders in F.A.Z. Einspruch
In a recent contribution to ‘F.A.Z. Einspruch’ dated 05.09.2018, Prof. Dr. Jan Bernd Nordemann explains why the analogue application of the blocking claims against WLAN operators is so interesting and what national borders have to do with this. ‘F.A.Z. Einspruch’ is the digital legal magazine of the Frankfurter Allgemeinen Zeitung, a German daily newspaper. You can access articles here.
23 Jul 2018 | Copyright
A classic in its 12th edition: At the end of July, the revised and extended edition of Fromm/Nordemann will be published.
The 12th edition of the oldest commentary on copyright law in Germany is scheduled to appear this month. As standard commentary on the Coypright Act - written by practising lawyers for practising lawyers - the three authors Prof Axel Nordemann, Prof Jan Bernd Nordemann and Prof Christian Czychowski have updated and expanded entries to include the portability regulation, comments on the new boundary rules for academia and on open source software. You can read an interview here on the Beck-Verlag website on, amongst other things, the need for a review after just four years.
28 Jun 2018 | Copyright, Licensing
“Cross-Border Copyright Licensing. Law and Practice” – New publication from Edward Elgar Publishing with an article by Prof. Dr. Jan B. Nordemann
An extensive work entitled “Cross-Border Copyright Licensing. Law and Practice” as part of the “Elgar Intellectual Property Law and Practice” series has been published by Carlo Scollo Lavizzari and René Viljoen, Lenz & Caemmerer, Basel, Switzerland. It provides a comprehensive overview of the legislative and practical concerns relating to international licensing. BOEHMERT & BOEHMERT expert Prof. Dr. Jan B. Nordemann has contributed a chapter to this work, writing about the “European Union”, in which he authored the sub-chapter “Individual Copyright Licensing in European Competition Law”. Further information is available on the publisher’s website here. Please visit this link for the e-book version, or this link for the Google Play e-book version.
4 Jun 2018 | Copyright
Prof Jan Bernd Nordemann and Dr Julian Waiblinger (both BOEHMERT &BOEHMERT) look back on 2017 from a Copyright perspective
Writing in the specialist magazine GRUR-RR (5/2018, p177 et seq), the two lawyers Prof. Dr. Jan Bernd Nordemann and Dr. Julian Waiblinger published an essay on “Legislation and Jurisprudence Copyright 2017”. The essay provides an overview of jurisprudence over the course of the year. For subscribers of GRUR-RR, the article can be accessed here. The Neue Juristische Wochenschrift (NJW) 2018 also includes a summary by the two authors, here on page 756. Those interested can access the article with login here. The conclusion of both authors, both of whom have worked on copyright for years with BOEHMERT & BOEHMERT is: “Copyright is everywhere in the digital world. It pays to be on the ball when it comes to changes in copyright. In 2017, courts once again decided many issues of copyright in digital disputes.
27 Mar 2018 | Trade Marks
Claim by Deutsche Post AG rejected
Dr Florian Schwab reports on the complex trademark decision of the European Court of Justice from 20 February 2018 T-118/16) in the online magazine World Trademark Review. The Court rejected the likelihood of confusion with the common element POST and rejected the claim brought by Deutsche Post AG. In a detailed discussions, in particular regarding similarity of word elements, the Court found that the mark overall was sufficiently different due to the preceding word element BE and that the union trademark registration was valid. Read the entire article here. This article appeared on 13.03.2018 in WTR Daily (component of World Trademark Review).
22 Mar 2018 | Unfair Competition
German Unfair Competion Act (UWG) regulates entries on member structure – Dr Rudolf Böckenholt explains the details in his recent GRUR-Prax article
In Edition 5/2018 (p. 134), Dr Rudolf Böckenholt explains the decision of the Saarland Higher Regional Court which held that, in accordance with §8(3)(2) UWG, associations must set out their active legitimation as regards member structure without giving rise to an actual presumption from previous actions against third parties. The magazine GRUR-Prax can be accessed from the publisher. More details can be found at.
9 Mar 2018 | Data Protection
Prof Christian Czychowski explains rights in respect of data and what companies should know
Who owns the data generated by a Smart Car? What happens with the data generated by the use of Google Maps? Have data not already long since been used as the currency, respectively as recompense, for the use of internet-based services? Are the existing legal instruments sufficient? What must companies pay attention to?Prof Christian Czychowski looks at precisely these points in his recent publication in the online magazine Intellectual Property. He explains the initiative by the EU Commission and explains the rights to data in the internet of things and Industry 4.0.The article can be found here.
2 Mar 2018 | Copyright
European Parliament: Study on the Liability of Internet Providers on Copyright Infringement
Prof. Dr. Jan Bernd Nordemann has compiled a study for the European Parliament on the liability of internet providers on copyright infringement. The study is entitled “Liability of Online Service Providers for Copyrighted Content – Regulatory Action Needed?” and draws the following conclusions: The liability privileges in Articles 12 to 15 E-Commerce Directive can remain unchanged; they seem to be sufficiently flexible to adopt to new business models, which also make them in general future proof. These privileges do not, however, establish liability. With regard to injunction claims, Article 8(3) Copyright Directive provides for a satisfactory pan-EU solution. EU rules establishing liability beyond injunction (e.g. damages) should be harmonized following the requirements (1) sufficient intervention by the internet provider and (2) breach of an adequate duty of care by the internet provider. The study is available for download in English here.
14 Feb 2018 | Trade Marks
Protection of 3D marks - Dr. Florian Schwab explains current confectionery case
Commenting on the online portal of the World Trademark Review, solicitor Dr Florian Schwab explains two recent decisions of the Federal Supreme Court on the protection of 3D marks in the case of the square packaging used by Ritter Sport chocolate and Dextro Energy glucose.The Federal Supreme Court reversed the restrictive approach applied by the Federal Patent Court and confirmed the liberal approach as regards the patentability of three-dimensional marks. Corresponding judgements with reasoning are still awaited. The Federal Supreme Court has up to now only released a press statements.Read the entire article here. This article was published on 05.01.2018 in WTR Daily (component of World Trademark Review).
17 Jan 2018 | Patents and Utility Models
On Brexit and Patents – Article in ‘European Biotechnology. Life Science and Industry Magazine’
Dr. Markus Engelhard and Dr. Dennis Kretschmann offer their thoughts on the subject of “IP: Brexit and patents” in an article for online English-language magazine ‘European Biotechnology. Life Science and Industry Magazine’.Is the unitary European patent on its way? How will Brexit affect the European patent system? The two experts explore this and other interesting questions in their article.The article is available to view here.
10 Nov 2017 | Patents and Utility Models
Article “Patent Proceedings in the US” by Dr D. Kretschmann and Dr M. Rüberg published.
The article “Patent Proceedings in the US - Patent Holders can no longer choose their Court” by solicitor Dr Michael Rüberg and patent attorney Dr Dennis Kretschmann has now appeared in the December edition of ICC Germany Magazine by the International Chamber of Commerce (page 48, 05/2017). The background: The US Supreme Court has limited the free choice of jurisdiction regarding patent claims. Companies domiciled or with branch in the US can no longer choose the place of jurisdiction. In their article, the authors explain the impact on German and American companies. They draw the following conclusion: “The patent landscape in the US has been subject to significant change for years. This has meant that it has become much more difficult to obtain patents in the US, to defend them against infringements and to enforce against parties in breach. The decision is a reaction against the abuse of the US system by patent trolls. On the other hand, many of the measures also impair the efficient response to patent infringements from legitimate patent holders.” The entire article as well and the ICC edition can be downloaded here.
24 Jul 2017 | Patents and Utility Models
"New Biotechnology" (2017) with contribution from Dr J. Krauss and Dr D. Kuttenkeuler.
Patent Attorneys Dr Jan B. Krauss and Dr David Kuttenkeuler have contributed the article "Intellectual property rights derived from academic research and their role in the modern bioeconomy - A guide for scientists" in the international specialist magazine "New Biotechnology". In the article, the authors show how Intellectual Property (IP) represents the currency of the biotechnology industry and how a basic knowledge of IP can help scientists to exploit their research findings. "New Biotechnology" is published by the European Federation of Biotechnology (EFB) and appears every two months. It covers subjects from the field of biotechnology as well as associated aspects in politics, finance and industry. The article can be purchased online and downloaded here.
20 Jul 2017 | Patents and Utility Models
"Mitteilungen der deutschen Patentanwälte" (7-8/2017) with contribution from Dr J. Krauss and Dr D. Kuttenkeuler.
The two BOEHMERT & BOEHMERT Patent Attorneys Dr Jan B. Krauss and Dr David Kuttenkeuler have contributed an article entitled "Current Developments in Biotechnology" to the German-language publication "Mitteilungen der deutschen Patentanwälte" (7-8/2017, page 306 et seq): Suspension of EPA proceedings which affect plants (or animals), which are essentially included in biological proceedings". In the artical, the authors point out that the grant clearly exceeds the authority of the President as Executive Organ of the European Patent Agreement (EPA) as well as the applicable legal situation. They also explain possibilities with which those affected can and should resist such a suspension. "Mitteilungen der deutschen Patentanwälte" can be subscribed here.
19 Jun 2017 | Copyright
"GRUR" with article on vicarious liability - by Dr S Jaworski and Prof J.B. Nordemann.
Wirting in the GRUR (6/2017, S. 567 et seq), the two lawyers Dr Stanislaus Jaworski and Prof Jan B. Nordemann contributed an article on "Vicarious liability of intermediaries regarding infringement on the internet". Using several decision of the LG Munich I, they explain how vicarious liability for intermediaries can come into focus with certain business models. The background was the case centred on the file hosting service "uploaded". The article sets out the state of the law in the field of copyright and evaluates the direction of European developments. The authors' conclusion: "On closer inspection, it is astounding just how small a role vicarious liability of intermediaries has had on practice and jurisprudence up to now. Claims associated with vicarious liability can make a considerable contribution towards effective enforcement of copyright. Subscribers to GRUR can access the article here.
8 Jun 2017 | Copyright
Kluwer Copyright Blog: Prof. Dr. Ch. Czychowski kommentiert „The Federal Supreme Court rules on World of Warcraft“.
Im Copyright Blog des Fachverlages Wolters Kluwer hat BOEHMERT & BOEHMERT-Rechtsanwalt Prof. Dr. Christian Czychowski am 01.06.2017 einen neuen Post veröffentlicht. Im Beitrag mit dem Titel „The Federal Supreme Court rules on World of Warcraft“ erläutert er das Urteil des Bundesgerichtshofs (BGH vom 06.10.2016 (I ZR 25/15) in Sachen World of Warcraft I. Dieses Online-Rollen-Computerspiel wirft zahlreiche Fragen an den Schnittstellen von Softwareurheberrecht zum Urhebervertragsrecht sowie zum allgemeinem Vertragsrecht auf, zu denen der BGH in seinem Urteil Stellung bezog. Der gesamte Blogartikel ist hier aufrufbar.
7 Jun 2017 | Trade Marks
Dr Florian Schwab in WTR Daily on the case "EXHAUST-GARD".
BOEHMERT & BOEHMERT lawyer and trade mark law expert Dr Florian Schwab has published the article "No protection for EXHAUST-GARD" in the online portal of the specialist magazine World Trademark Review on 2 June 2017. The article discusses the recently delivered decision of the European Court of Justice from 27 April 2017 (T-622/15). In its judgement, the Court rejects the possibility of protecting the mark EXHAUST-GARD for diesel emission fluid in class 01. As both courts at lower instances found, the Court held that it was of purely descriptive character. In particular, English speakers with necessary knowledge would immediately connect the word mark (which is comprise of the word "exhaust" and "g(u)ard") with protection from dangerous emissions produced from combustion in diesel motors, in particular with the reduction of nitrous oxide content in these emissions. "The decision of the European Court of Justice is therefore less surprising than the vehement defence of the registration over three instances," Dr Florian Schwab comments. Those subscribing to the WTR Daily can see the entire article here.
23 May 2017 | Trade Marks
WTR - "Anti-Counterfeiting Guide 2017" with contribution from three BOEHMERT & BOEHMERT trade mark lawyers.
The internationally renowned specialist magazine World Trademark Review has published its "Anti-Counterfeiting Guide 2017", which is compiled in collaboration with the World Customs Organisation and INTERPOL. This year too, BOEHMERT & BOEHMERT trademark law experts Dr Rudolf T. Böckenholt, Dr Volker Schmitz-Fohrmann and Dr Florian Schwab contributed an article, this year entitled "Border seizure measures in the European Union" and included in the May 2017 edition of the guide. The article looks at problems in the fight against product piracy and border seizure measures in the European Union. The article can be viewed here as pdf: (Note: “This article first appeared in Anti-counterfeiting: A Global Guide 2017, a supplement to WTR, published by Globe Business Media Group - IP Division. To view the guide in full, please go to“: WorldTrademarkReview)
19 Apr 2017 | Copyright
"IHK: Niederbayerische Wirtschaft" (04/2017) with contribution from Prof. J. B. Nordemann.
BOEHMERT & BOEHMERT lawyer Prof Jan Bernd Nordemann has contributed an article entitled "Copyright Reform: Amending Model Contracts" to the magazine IHK Niederbayern (04/2017, page 16). The background: Since the entry into force of the new Copyright Contract Law on 1 March 2017, the drafting of copyright contracts has become a more complicated affair. Nordemann explains in his article what amendments need to be made and points out the most important changes. He recommends that companies amend their model contracts in line with the new legislation. "This is especially true for contracts with designers so that the exclusivity of acquired rights does not end after ten years," Nordemann says. The complete edition of the magazine can be accessed here.
10 Apr 2017 | Copyright
“MultiMedia und Recht” (04/2017) features article by Prof. J. B. Nordemann and Dr. J. Waiblinger.
Written by the two BOEHMERT & BOEHMERT lawyers Prof. Dr. Jan Bernd Nordemann and Dr. Julian Waiblinger, the article “Advertising on websites having internet services which contravene copyright” has been published in the journal MultiMedia und Recht [Multimedia and Law] (MMR 04/2017, page 211 et seq.). The background to the article is that websites, which have an illegal business model and which contravene copyright structurally and on which games, music, films or eBooks are offered, frequently finance themselves through advertising. The two authors explain the legal pitfalls which exist in the advertising financing of illegal business models and the aspects under which the possibility of liability for advertising on such websites arises. Their conclusion: “It is possible that the advertisers on websites which exclusively or predominantly offer copyright-infringing content can be held liable. Both vicarious liability after gaining knowledge thereof and liability in accordance with the principles of interference liability under copyright law are conceivable,” explains Nordemann. Subscribers to the MMR can access the full article here.
6 Apr 2017 | Trade Marks
Dr Florian Schwab in WTR Daily on the Edison SpA vs. European Union Intellectual Property Office (EUIPO) case.
In the online portal of the specialist magazine World Trademark Review from 31 March 2017, BOEHMERT & BOEHMERT lawyer and trademark law expert Dr Florian Schwab published the article "General Court: no likelihood of confusion between figurative 'e' marks for certain energy-related goods and services" The article explains the recently published decision of the European Court of Justice from 14 March 2017 (T-276/15 - Edison SpA v. EUIPO) in a case involving two letter marks. The case centred on the often difficult to determine protective scope of a mark which was comprised of a single letter "e" with basic graphical elements compared to an older mark, also comprised of a single letter "e". In each case the marks were registered for various goods and services in the field of wind energy. Dr F. Schwab has for many years made regular contributions to WTR Daily. Those subscribing to the WTR Daily can see the entire article here.
25 Mar 2017 | Copyright
Conference transcript of ALAI with contribution from Dr M Schaefer.
In June 2015, the Association Littéraire et Artistique Internationale (ALAI) held an international conference in Bonn on "Remuneration for the use of works: Exclusivity vs. other approaches". Walter de Gruyter Verlag has now published the conference transcript, which contains contributions to the two conference days on 18.06. and 19.06.2015 and which illustrates issues from an international perspective. Here, Dr Martin Schafer publishes his contribution on "Possible roles for CMOs in new business models" in which he sets out and analyses various functions of collection companies in novel business models. Dr Martin Schaefer is a Member of the Board of ALAI Germany; the rights of collection companies and collection agencies are among his special fields of interest. Conference transcript "Remuneration for the use of works". Silke von Lewinski (publisher). Walter de Gruyter GmbH & Co KG, 2016. 475 pages (print edition). ISBN 978-3110450019.
10 Feb 2017 | Copyright
Article by Dr. M. Schaefer published in “Musik & Ästhetik” (01/2017).
BOEHMERT & BOEHMERT partner Dr. Martin Schaefer’s article “Who has a share in the exploitation of music on the internet? Copyright as an expression of ‘attribution of gain’” has been published in the journal “Musik & Ästhetik” (issue 81, January 2017, pages 100 et seq.). In his article, Dr. Schaefer uses the EU’s current draft directive on copyright in the digital single market as an opportunity to discuss the fact that platforms such as YouTube are used at two levels: “at user level by uploading and at platform level by marketing of the aggregated contents. There is still some work to do before the EU draft directive makes good on the promise of its heading for Article 13 ‘Certain uses of protected content by online services’”, writes Schaefer. The technical journal “Musik & Ästhetik” is published by the Klett Cotta Verlag and examines the ranges of topics that make up “music” from technical, artistic, philosophical, cultural and political viewpoints. This issue and individual articles can be obtained from here.
6 Jan 2017 | Trade Marks
"Brexit" article by Dr Böckenholt and Dr Rüberg in "Medien und Recht International".
The two BOEHMERT & BOEHMERT partners Dr Rudolf Böckenholt and Dr Michael Rüberg have contributed an article to the newspaper "Medien und Recht International" (MR-Int, 3/2016, p. 95) entitled "Brexit and the consequences in IP". The two specialist layers for industrial property protection focus on "Brexit", the result of the referendum held in the United Kingdom to leave the European Union and the anticipated consequences in the field of IP Law. To this end, they highligh initial developments and recommend strategic approaches to secure IP rights. They also explain the possible consequences for patents/SPCs, possible consequences for trade market, designs and other rights. "Of course, irrespective of the type of IP right affected, rightholders cannot accept gaps in protection and cannot wait to see how things develop for an indefinite period. Even if Brexit doesn't mean effective departure, rightholders should now check their options and take advice on how to proceed," is the recommendation of the two authors. The entire edition of MR Int can be ordered here.
22 Dec 2016 | Trade Marks
Dr Florian Schwab in WTR Daily on the question of the risk of confusion for one-letter brands.
The online portal of the specialist magazine World Trademark Review from 21.11.2016 contained an article by BOEHMERT & BOEHMERT partner and trade mark law expert Dr Florian Schwab entitled "General Court finds likelihood of confusion in P signs“ on the recently published decision of the European Court of Justice from 11 October 2016 (T-350/15) on the question of the risk of confusion for one-letter brands. In the concrete case at hand, the Court looked at the likelihood of confusion between brands which differed only in the graphic style of the letter P for identically protected clothing. The decision strengthens the position of proprietors of one-letter brands. Dr F. Schwab has for many years made regular contributions to WTR Daily.
21 Dec 2016 | Copyright
The Chamber of Commerce and Industry (IHK) for the central Ruhr district's journal "Wirtschaft im Revier" with an article by Prof. Dr. Jan B. Nordemann.
BOEHMERT & BOEHMERT partner Prof. Dr. Jan Bernd Nordemann contributed an article entitled "National copyright law has had its day" on the IHK key theme "Digital business. Borderless. Rich in opportunities" in the Chamber of Commerce and Industry (IHK) for the central Ruhr district's journal "Wirtschaft im Revier". In his article Nordemann explains the extent to which national copyright law in Germany is likely to be replaced in the near future by a harmonised European copyright law. The European Commission had already paved the way for a reform of copyright law with the proposals it presented in September 2016 and December 2015. Among the aims of these proposals are the better integration of the digital markets within the EU and the harmonisation of European copyright law. Nordemann notes in this regard: "Copyright law in Europe is moving towards a uniform set of rules in the form of a Regulation. The end result may be unified European copyright legislation and the end of national copyright law in Europe." The entire article is available for download here.
19 Dec 2016 | Patents and Utility Models
Manual on "European Qualifying Examination" by Dr D. Herrmann to be published by Beck Verlag.
BOEHMERT & BOEHMERT patent lawyer Dr. Daniel Herrmann has authored the manual "Goal-oriented Methods to Pass the European Qualifying Examination (EQE)" which will soon be published by Beck Verlag. The bilingual work is geared to those taking the European Qualifying Examination and includes both targeted approaches as well as patent law foundations for parts A, B, C and D of the EQE. The author places special emphasis on useful and well-structured methodological support and preparation for the examination. The manual offers step-for-step approaches, time specifications per work step, details on scoring, examination schemes for questions on patent law. formulation suggestions and entire text passages, tables as work aids and many other practical tips for the examination. The methodology takes account of amendments to the EQE 2017. Patent law foundations are also explained. References are also given to relevant statutes, case law and examination guidelines. The author is a Patent Lawyer and European Patent and Trademark Attorney at the Munich office of BOEHMERT & BOEHMERT. The manual will be published by Beck Verlag and has around 300 pages. C.H.BECK ISBN 978-3-406-70789-6. Pre-orders can be submitted immediately, the release is beginning of 2017.
14 Nov 2016 | Copyright
GRUR-Prax (11/2016) with article on "Internet Piracy" by Prof. Dr. Jan B. Nordemann.
BOEHMERT & BOEHMERT Partner Prof Jan Bernd Nordemann has contributed the article "Internet Piracy: British Court of Appeal confirms claim of brand proprietors for website blocking" to the GRUR-Prax, a journal on Industrial Property Protection and Copyright - Practice in Intangible Assets and Competition Law (GRUR-Prax 2016, page 491). The article looks at the decision of the British Court of Appeal on website blocking (EWCA Civ 658 from 07.07.2016) and comments on the impact on copyright law as well as on the impact on trademark law in Germany. Nordemann states: "In Germany, the response is slow with respect to blocking websites, other EU countries have come much further. However, the trend in Germany must continue to be observed closely because it can only be a matter of time before German courts require the first websites to be blocked. Alongside copyright claims, there are also trademark claims". The entire article can be accessed by subscribers to the Beck-Online shop.
9 Nov 2016 | Copyright
GRUR (11/2016) with contribution entitled "After TMG reform and ECJ McFadden“ by Prof. Dr. Jan B. Nordemann.
BOEHMERT & BOEHMERT-Partner Prof. Dr. Jan Bernd Nordemann has contributed the article "After TMG reform and ECJ McFadden - The current liability for WiFi and other access providers" in the GRUR, a journal on Industrial Property Rights and Copyright “ (GRUR 11/2016, page 1097). The article provides an overview of the complex system of liability for agents in intellectual property right infringement. He also explains the significance of the ECJ judgement in the McFadden/Sony Music case for the interpretation of the recently amended Telemedia Act. The full article can be seen by subscribers here.
3 Nov 2016 | Anti-Trust
ZUM (10/2016) with contribution from Prof Jan B. Nordemann and O. Wolters.
BOEHMERT & BOEHMERT partners Prof Jan Bernd Nordemann and Olaf Wolters contributed the article "Google, performance protection for publishers and cartel law“ to the law journal Zeitschrift für Urheber- und Medienrecht" (ZUM) 2016, p. 846). The article includes comments on the decision taken by the High Court Berlin, judgement from 19 February 2016 (92 O 5/14 Kart) (ZUM 2016, 879). Google has removed performance protection from publishers in Germany because it has had publishers grant it free licences. The High Court in Berlin held this practice to be in breach of cartel legislation. In their article, the two lawyers provide an overview of the current state of the discussion and discuss this key decision of the Berlin court. The full article can be seen by subscribers here.
31 Oct 2016 | Copyright
eipr: Dr M. Schaefer with contribution "ISP Liability for Blocking Access to Third-Party Infringing Content".
BOEHMERT & BOEHMERT partner Dr Martin Schaefer has made a contribution to the English language journal European Intellectual Property Review (10/2016, p. 633-638) entitled "ISP Liability for Blocking Access to Third-Party Infringing Content" . In the article, Dr Schaefer gives an overview of developments and the current state of jurisprudence in relation to the blocking of websites by internet service providers (ISP) on grounds of contents which infringe third-party copyright. In Germany, the "Goldesel" case (Liability for Interference of Access Provider) decided by the Federal Supreme Court on 26 November 2015 is the lead case here. Dr Schaefer comments here: „The Goldesel decision of the German BHG has paved the way to a sensible website blocking possibility in accordance with art.8(3) Info Directive, using the concept of Störerhaftung as a basis.“ Dr Martin Schaefer fought the case at first instance.
19 Oct 2016 | Trade Marks
Dr Florian Schwab in WTR Daily on the case "VICTOR ./. VICTORIA “.
The online-Portal of the specialist magazine World Trademark Review on 14.10.2016 contained an article by BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab entitled "General Court confirms genuine use of earlier mark and likelihood of confusion" on the recently published decision of the Court of the European Union (T-204/14 VICTOR ./. VICTORIA) from 7 September 2016. In its decision, the Court confirmed a risk of confusion between the older Spanish registered mark VICTORIA and the more recently registered Community mark VICTOR, amongst other things in relation to shoes. The decision shows the classic assessment of questions of right-preserving use, the distinction of previous market and the similarity of goods. Dr F. Schwab has for many years commented on judgement for the WTR Daily. Those subscribing to the WTR Daily can see the entire article here.
2 Sep 2016 | Patents and Utility Models
“Protection of Innovations” – article by N.T.F. Schmid in “Innovation”, a special publication by the BWA.
BOEHMERT & BOEHMERT partner and patent attorney Nils T. F. Schmid has written an article, “Protection of Innovations”, which has been published (page 22 et seq.) in the specialist brochure “Innovation – Werttreiber der Wirtschaft” [“Innovation – Value Driver of the Economy”], a special publication of the Federal Association for Economic Development and Foreign Trade [Bundesverband für Wirtschaftsförderung und Außenwirtschaft e.V.] (BWA). “It would seem that numerous barriers to innovation, particularly in small and medium-sized enterprises, are resulting in the (existing) innovative strength not being utilized. (...) The uncertainty about economic success is causing fewer resources to flow into innovations. Even if innovation/know-how is created, dealing with this remains a challenge for the entrepreneur,” explains Niels T.F. Schmid. In his article Schmid provides an overview of strategies for dealing with know-how and also draws up a comparison of the various strategies in order “if necessary, to deduce economic instructions.” The entire article as well as the BWA’s specialist brochure can be downloaded here.
26 Aug 2016 | Unfair Competition
Prof J. B Nordemann leads test case for BVK vs.Check24 - BVK successful in first step
In the insurance broker magazine "VersicherungsVermittlung" 07/08-2016 (a magazine for self-employed insurance and mortgage brokers), BOEHMERT & BOEHMERT partner Prof Jan Bernd Nordemann and Dr Stanislaus Jaworski contribute the article "BVK successful against Check24 in test case on duties of inquiry and consultation (page 264). They explain the state of the law at present and the open questions posed in the test case on unfair competition brought by the German Association of Insurance Brokers (BVK) against internet comparison site Check24. In the article, Nordemann explains: "The Regional Court in Munich has not decided on all the points raised by the BVK for procedural reasons. It is the case that online brokers must satisfy their duties of inquiry and consultation. Since the BVK appealed the decision, the judgement of Munich Regional Court is not yet effective. TheHigher Regional Court will now have to decide the case. The test case is expected to clarify whether internet portals which offer insurance policies are compelled both to provide information in accordance with § 11 VersVermV as well as to question and advise the prospective buyer on an individual basis. Judgement from the Higher Regional Court in Munich is expected in 2017. The magazine can be downloaded by subscribers at.
18 Jul 2016 | Copyright
musikmarkt 07/2016: Dr M. Schaefer with contribution "The curtain closed and many open questions?".
BOEHMERT & BOEHMERT partner Dr. Martin Schaefer has contributed the article "The curtain closed and many open questions?" in the specialist magazine musikmarkt (07/2016). Dr Schaefer provides an overview of the current state and future direction of law following two court judgements which are of greatest relevance for copyright lawyers in the music industry: The court judgements in question are Martin Vogels vs. VG Wort by the Federal Supreme Court and the judgement of the Federal Constitutional Court in "Metall auf Metall". Dr Schaefer explains both judgements and lists possible consequences. The entire - most recent edition - of the specialist magazine can be accessed here.
14 Jul 2016 | Patents and Utility Models, Unfair Competition
"Competition and Patent Law in the Pharmaceutical Sector" with contribution from BOEHMERT & BOEHMERT author team published.
The reference work "Competition and Patent Law in the Pharmaceutical Sector. An International Perspective" has now been published in the Kluwe Law International range (publisher: G. Muscolo, G. Pitruzzella). Here, BOEHMERT & BOEHMERT partners Prof Heinz Goddar, Prof Jan Bernd Nordemann and Dr. Julian Waiblinger contributed in Chapter 3 "The Perspective from Europe" the article "Germany: Patent Settlements and Drug Discount Agreements in Light of European and German Antitrust Law". The work focuses in particular on the interplay between Intellectual Property (IP) on the one hand and Competition Law on the other, in particular in the pharmaceuticals sector. The work can be ordered online at Wolters Kluwer, ISBN: 9789041159274 544 pages.
30 May 2016 | Trade Marks
Dr Florian Schwab in WTR Daily on the opinion in the case “I. Nikolajeva ./. OÜ Multi Projekt”.
On the online portal of specialist publication World Trademark Review dated 18 May 2016, BOEHMERT & BOEHMERT partner and expert in trademark law Dr Florian Schwab reported on the recently published opinion of the Advocate General (C-280/15 Irina Nikolajeva ./. OÜ Multi Project) dated 21 April 2016 in the article “Reasonable compensation for published EU trademark”. In relation to the referral by the Harju District Court in Estonia, Advocate General Wathelet recommended to the European Court of Justice that the publication date be applied in the calculation of compensation. He also explains what it is to be considered appropriate compensation in this situation. Dr F. Schwab has been a regular commentator for WTR Daily for many years.
19 May 2016 | Trade Marks
WTR - "Anti-Counterfeiting Guide 2016" with contribution from three BOEHMERT & BOEHMERT partners.
The internationally renowned specialist magazine World Trademark Review has published its renowned "Anti-Conterfeiting Guide 2016", which is compiled in collaboration with the World Customs Organisation and INTERPOL. This year too, BOEHMERT & BOEHMERT partners and trademark law experts Dr Rudolf T. Böckenholt, Dr Volker Schmitz-Fohrmann and Dr Florian Schwab contributed the article"Border seizure measures in the European Union" to the May 2016 edition. The article looks at problems in the fight against product piracy and border seizure measures in the European Union. The article can be viewed here as pdf: (Note: “This article first appeared in “Anti-Counterfeiting 2016“ – A Global Guide, a supplement to World Trademark Review, published by Globe Business Media Group - IP Division.
9 May 2016 | Copyright
BOEHMERT & BOEHMERT partners summarise copyright law developments in 2015 in the current GRUR-RR.
BOEHMERT & BOEHMERT partners Prof Jan Bernd Nordemann and Dr Julian Waiblinger summarised copyright law developments in 2015 in a report in GRUR (GRUR-RR 5/2016, p. 177) entitled "The case law developments in copyright law in 2015". Their article gives an overview of case development in both lower and higher courts. The article focuses on judgements which were published in the year 2015. For many years, copyright experts at BOEHMERT & BOEHMERT have regularly summarised developments in copyright law at national as well as EU levels. Subscribers can access the complete article via the Beck online shop. GRUR is one of the most significant magazines in German-speaking Europe for industrial property rights and copyright. The GRUR-RR supplements the case law section of GRUR and documents all decisions on legal protection and copyright delivered by regional and national courts.
20 Apr 2016 | Anti-Trust
New edition of Cartel Law Commentary with BOEHMERT & BOEHMERT expertise
The standard reference work "Kartellrecht: Deutsches und Europäisches Recht" by Loewenheim / Meessen / Riesenkampff / Kersting / Meyer-Lindemann has now been published in a completely revised 3rd edition (2016). BOEHMERT & BOEHMERT partner and cartel law expert Prof Jan Bernd Nordemann has also made key contributions to this new edition. He contributed the following comments and has now revised these for the current edition. Cartel law and Industrial Property Rights and Copyright (GRUR); Individual Exemption from the European Prohibition of Cartels (Art 101(3) Treaty on the Functioning of the EU); all provisions on the German Prohibition of Cartels (§§ 1 to 3 GWB); Price rules for newspapers and magazines as well as industry agreements in media wholesale (§ 30 GWB). The standard commentary on German and European cartel law is published by Münchener Beck and comprises of 2922 pages. 3rd Edition 2016. ISBN 978-3-406-67483-9.
17 Mar 2016 | Copyright
BOEHMERT & BOEHMERT partners sum up developments in copyright law in 2015 in the current edition of NJW.
The article “Case Law of the Supreme Court and Legislation in Copyright Law 2015”, written by the two BOEHMERT & BOEHMERT partners Prof. Dr. Jan Bernd Nordemann and Dr. Julian Waiblinger, has been published in the Neue Juristische Wochenschrift (NJW 11/2016, p. 772 et seq.). The copyright law experts from BOEHMERT & BOEHMERT have been regularly summing up developments in copyright legislation at both national and EU level and reporting on the case law of the Supreme Court for the NJW for many years. The conclusion this year is as follows: “50 years after the entry into force of copyright law, the European Court of Justice and Federal Supreme Court are concerned with interpreting European and German copyright law more than ever. (...) Copyright attorneys will not be bored in 2016 either.” The NJW is the most important German-language magazine for lawyers.
11 Mar 2016 | Copyright
New article by Prof. Dr. J. B. Nordemann regarding “Public communication in copyright law” published in GRUR 03/2016.
BOEHMERT & BOEHMERT partner Prof. Dr. Jan Bernd Nordemann has written an article on the subject of “Public communication in copyright law” which has been published in the specialist journal GRUR (03/2016, 245 et seq.). In his article he explains whether and to what extent the concept of the European Court of Justice (CJEU) “is becoming clearer”. Nordemann states therein: “Accepting changes is often difficult. This is especially true of attorneys. As German copyright attorneys, we have to get used to the fact that the CJEU has created a new notion of public communication.” Nordemann explains the extent to which the CJEU is now carrying out a two-stage examination, firstly with respect to the criteria of disclosure and then with respect to the publicness thereof. The article can be viewed here by subscribers of GRUR.
9 Mar 2016 | Patents and Utility Models
Positive review of the “Vertragshandbuch Pharma und Life Sciences” including article by Dr. Rüberg.
The “Vertragshandbuch Pharma und Life Sciences - Mit bewährten Gestaltungsvorschlägen aus der Praxis” [“Contract Manual for Pharmaceuticals and Life Sciences – With proven design proposals from practice”] was published by C.H. Beck Verlag in autumn 2015. BOEHMERT & BOEHMERT partner Dr. Michael Rüberg co-wrote the “General Section with Basic Contract Models” with editor Marco Stief. A review by Dr. Wolfgang A. Rehmann who praised the work has now been published in the specialist journal “Arzneimittel und Recht” [“Pharmaceuticals and Law”] (01/2016, p. 31 et seq.). Rehmann commented on the “General Section with Basic Contract Models”: “The authors responsible for this chapter, Stief and Rüberg, have made every effort and taken particular care to illustrate design alternatives which occur in practice and, at the same time, make the background of individual provisions clearer to the user through a detailed commentary.” His conclusion on the entire contract manual is: “All in all, the editors and their authors should be shown respect. They have created a valuable aid for precisely the target group the work has in its sights, namely lawyers, pharmacists, traders and engineers operating in the pharmaceuticals and life sciences industry or working for them.” The manual can be obtained directly from Beck Verlag, priced approx.: €198.00. Stief/Bromm (editor), C.H. Beck, 2015. ISBN 978-3-406-65042-0.
29 Feb 2016 | Copyright
Celebratory publication "Legal Enforcement" with contribution from Prof. J. B. Nordemann
A celebratory publication to mark the 70th birthday of Professor Hans-Jürgen Ahrens will be issued by Carl Heymanns Verlag. In the article "Legal Enforcement - Realisation of Right through Substantive and Procedural Law", renowned legal experts pay respects to Professor Ahrens with their contributions. BOEHMERT & BOEHMERT partner and lawyer Prof J. B. Nordemann contributed the article "Codes of Conduct and Competition Rules - the Permissibility of Self-Regulatory Agreements pursuant to Art 101 TFEU and §§ 1, 2 German Act against Restraints on Competition (GWB)". In the article, he looks at typical instruments for self-regulation as well as their interplay and limits in anti-trust legislation. W. Büscher / W. Erdmann / A. Fuchs et.al. (Hrsg.), Carl Heymanns Verlag, Köln, 2016. ISBN: 978-3-452-28593-5.
29 Jan 2016 | Copyright
musikmarkt 01/2016: Dr M. Schaefer contributes article "Copyright Policy in a Crisis Era".
BOEHMERT & BOEHMERT partner Dr. Martin Schaefer has contributed the article "Copyright Policy in a Crisis Era" in the specialist magazine musikmarkt (01/2016). Lots is in motion in the field of copyright, both in terms of legislation and in the case law. Dr Schaefer provides an overview of pending judgements in the fields of remuneration (Reprobel case), copyright contract law, provider liability as well as on copyright initiatives of the EU ("portability"). Dr Schaefer expects large copyright challenges for the coming months, primarily in the field of music. "It remains to be hoped," Schaefer says, "that the German government and MPs keep an open ear to the arguments of the creative economy as already it is foreseeable that in 2016 the wider public will be more concerned with other issues than those of music authors, artists, music publishers and sound media producers." The entire article can be downloaded by subscribers at.
6 Jan 2016 | Unfair Competition
Prof J. B Nordemann leads test case for BVK vs. Check24 - background in "VersicherungsVermittlung".
BOEHMERT & BOEHMERT partner Prof Jan Bernd Nordemann has contributed an article to the newspaper "VersicherungsVermittlung" 11/12-2015 ( a specialist magazine for independent insurance policy and building loan contract salespeople). The article explains the duties owed by salespeople when selling insurance policies. The background to the article "Do duties to provide information as well as duties to question and advise apply to only a limited extent for internet platforms" (page 396 et seq) is the current test case instigated by the Federal Association of German Insurance Salespeople (BVK) before the District Court of Munich against the internet comparison site Check24. Prof Nordemann is specialist lawyer for Industrial Property Rights as well as for Copyright and Media Law and represents BVK in these proceedings. The test case is expected to clarify whether internet portals which offer insurance policies are compelled both to provide information in accordance with § 11 VersVermV as well as to question and advise the prospective buyer on an individual basis. Nordemann provides further background information in the article and notes: "The prospective policyholder requires more protection as against a (virtual) insurance broker than he or she does against a direct insurer". The newspaper can be accessed here.
29 Dec 2015 | Patents and Utility Models
New publication "Patent Enforcement in the US, Germany and Japan" by Prof. T. Takenaka, Dr. J. B. Krauss et. al.
BOEHMERT & BOEHMERT-Partner Dr Jan B. Krauss is co-author of the book "Patent Enforcement in the US, Germany and Japan", which was released in December 2015. The authors Prof Toshiko Takenaka, Christoph Rademacher, Dr Jan B. Krauss and Jochen Pagenberg (and others) provide here a comprehensive comparative analysis and current overview of the enforcement of patent rights in the legal systems of the United States, Germany and Japan. The English-language publication is available as hardcover (528 pages, 2015, Oxford University Press, ISBN 978-0-19-967920-1) or as ebook.
10 Dec 2015 | Copyright
"Kommunikation & Recht" (12/2015) with contribution from Dr M. Schaefer on the "Collection Company Bill".
BOEHMERT & BOEHMERT partner Dr Martin Schaefer has submitted an article to the specialist magazine "Kommunikation & Recht" (12/2015, S. 761 ff) entitled "The new Collection Company Act - a guide to the bill". The background is the bill put forward by the Federal Ministry of Justice and Consumer Protection on the implementation of the EU Directive 2014/26/EU on the collective management of copyright and related rights. In his article, Dr Schaefer explains the background to the proposals and makes an initial assessment of the bill. The specialist magazine "Kommunikation & Recht (K&R)" appears monthly and focuses on all national and international legal issues relating to media.
10 Dec 2015 | Copyright
musikmarkt 11/2015: Dr M. Schaefer with article "Reduced Sight in One Eye?".
BOEHMERT & BOEHMERT partner Dr.Martin Schaefer has made a contribution to the specialist magazine musikmarkt (11/2015) entitled "Reduced Sight in One Eye?". In the article, he comments on the new bill on copyright contract law put forward in October. Dr Schaefer shows to what extent the bill excludes the interests of publishing houses and producers and notes here: "If the bill is to become law, it is already clear that it would weaken domestic producers and publishing houses - in favour of largely foreign service and platform operators." The entire article can be accessed by subscribers at.
7 Dec 2015 | Patents and Utility Models
Prof. Dr. H. Goddar and Dr. C.-R. Haarmann with contribution in "China Intellectual Property Magazine".
BOEHMERT & BOEHMERT partner Prof Heinz Goddar (Patent Attorney) and Dr Carl-Richard Haarmann (Solicitor) have contributed the article "Best Strategies for Patent Protection in Europe in the Advent of the Unified Patent System - The Status in Late 2015" to "China Intellectual Property Magazine" (9/10-2015). In the article, the authors explain the current procedure in Europe for attaining a patent. They also explain the changes set to come in the next few years as a result of the European Unified Patent System as well as the pros and cons of the EU patent. They note: "Presently, (...) it is unclear whether and when UPS/UPC will come into force - probably not earlier than 2018/2019. Nevertheless, national routes alone are no longer recommendable, because then no option for an EU Patent would be possible." The article can be accessed here by subscribers.
29 Nov 2015 | Employee Inventions, Copyright
AIPPI manual with chapter by Prof C. Czychowski and Prof J. B. Nordemann.
The Employee´s Intellectual Property Rights manual has now been published (publisher Wolters Kluwer). It examines the issue of intellectual property of employees from various perspectives as well as in the international context. This issue has become increasingly significant as most inventions and works are created by employees. It is important here, both for companies and for employees, to shore up the foundations in order to protect rights and to properly value them. BOEHMERT & BOEHMERT partners Prof Christian Czychowski and Prof Jan B. Nordemann have contributed the chapter on Germany in the manual, which is supported by the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI). It provides an overview of the legal foundations of intellectual property in Germany with focus on the areas of importance for employees and employers (copyright, employee inventor rights). Publisher: S. Wolk/ K. Szkalej, Wolters Kluwer, 2015, ISBN 9789041159724. Further information and orders.
18 Nov 2015 | Copyright, Anti-Trust
Prof J.B. Nordemann and Dr J. Waiblinger with contribution on "Limits to Self-Regulation in Cartel Law" in GRUR 11/2015
The two BOEHMERT & BOEHMERT lawyers Prof Jan Bernd Nordemann and Dr Julian Waiblinger have contributed an article entitled "Cartels and Boycotts against Offenders? Limits to Self-Regulation in Cartel Law" to the specialist publication GRUR (GRUR 11/2015, 1070 et seqq). In their article, the two cartel and copyright specialists assess the lawfulness of self-regulation efforts against rogue internet services. This means offers based on an illegal business model and mass infringement of rights - such as copyright. The contribution looks an internet access providers and advertising companies and asks whether and in how far self-regulation is permissible against rogue internet services under cartel law. Subscribers to GRUR and to Beck Online can download the article here.
16 Nov 2015 | Patents and Utility Models
Dr. M. Engelhard and Dr. M. Rüberg take part in the “IAM Germany Roundtable: Europe`s Litigation Powerhouse”.
German patent attorneys and lawyers discuss both the current developments in patent law and the possible repercussions of the planned establishment of a Unified Patent Court (UPC) in the “Germany Roundtable” section of the specialist magazine Intellectual Asset Manager IAM (Nov./Dec. 2015, P. 73ff) under the heading “Europe´s Litigation Powerhouse”. BOEHMERT & BOEHMERT partner and patent attorney Dr. Markus Engelhard and lawyer Dr. Michael Rüberg were part of this panel of experts and commented on various aspects of the subject. The entire article can be viewed here. This article first appeared in Intellectual Asset Management issue 74, published by Globe Business Media Group - IP Division’. To view the issue in full, please go to www.IAM-media.com.
27 Oct 2015 | Trade Marks
Dr Florian Schwab in WTR Daily on the decision in the "B. Rintisch vs. OHIM" case.
In the online magazine World Trademark Review Daily from 15/10/2015, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-382/14 - Bernhard Rintisch vs. OHIM) from 24 September 2015. The decision concerns the reversal of the decision of the Board of the Appeal in opposition proceedings on account of inadequate reasoning. The focus was the consideration given to documents submitted by Bernhard Rintisch (owners of the leading German PROTI marks) on the the German PROTI mark. Rintisch impugned the Community mark PROTICURD in the field of pharmaceutical products and protein drinks. Those subscribing to WTR Daily can see the entire article here.
13 Oct 2015 | Trade Marks
Markenartikel with contribution by Dr. F. Schwab on "abstract colour marks".
BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab has published a contribution in the specialist magazine Markenartikel (09/2015, p. 64) on abstract colour marks. In the article, he explains the legal implications for the establishment and defence of corporate colours and provides an insight on the current state of the law on abstract and contourless colour brands. Litigation concerning Nivea blue has recently brought this issue into focus. "Abstract colour marks are very popular and reveal numerous legal pitfalls. Recent high court judgements have brought clarity with respect to enforcement and have also made clear that there is no fixed or indeed level of enforcement is to be expected for colour marks than for other categories," Dr Schwab comments. The entire article is available for subscribers or as an individual booklet (and as app).
29 Sep 2015 | Copyright
Celebratory Publication on Copyright Act with contribution from four BOEHMERT & BOEHMERT partners
C.H. Beck Verlag has released a celebratory publication marking the 50th anniversary of the German Copyright Act. The "Celebratory Publication 50 Years of the Copyright Act - From the audio tape to social media" is dedicated to the German Copyright Act. The contributions contained in the publication, made by renowned legal experts, look at whether and in how far the framework of the Copyright Act are adequate to meet the challenges of the coming decades. Four BOEHMERT & BOEHMERT partners and solicitors Prof C. Czychowski, Prof A. Nordemann, Prof J. B. Nordemann and Dr M. Schaefer contribute the article "The Copyright Act in normal operation: case low". The article looks at the jurisprudence surrounding the Copyright Act from its entry into force in 1966 to today. The publication can be obtained from Beck Verlag: Verlag C.H.BECK, 2015 (Hrsg. Th. Dreier und R. Hilty). ISBN 978-3-406-68519-4.
25 Sep 2015 | Patents and Utility Models
Current study by EU Commission on "Utility Model" with participation by BOEHMERT & BOEHMERT
The European Commission has published the "Study on the economic impact of the utility model legislation in selected EU Member States". The study is available in the EU Book Shop. The two BOEHMERT & BOEHMERT partners, Patent Lawyer Prof Heinz Goddar and Solicitor Dr Carl-Richard Haarmann acted as consultants to the EU Commission on this study and worked together with the Technopolis Group Austria on behalf of the Commission. The study looks at the different legislative practices on utility patents within the EU. The study also looks at the question as to whether and how utility patents are used as components of the system of technical protection within the individual member states. The study finds that in the various member states, utility patents are used very differently. The study also finds, a well-functioning utility patent system used comprehensively by both industry and the legal profession exists only in Germany. In most other states, utility patents play a much lesser role and their use is often not known. The study concludes that a harmonised utility patent system would make a sensible addition to existing patent law. After all, it is conceivable over the medium term that a uniform utility patent is introduced alongside the uniform patent so that the system of technical protections is fully complemented across the whole of the EU," the two BOEHMERT & BOEHMERT partners conclude. The study (ISBN: 978-92-79-46477-5) can be downloaded here free of charge (in English)
13 Sep 2015 | Trade Marks
Dr. C.-R. Haarmann explains "Recent Developments in European Union Trademark Law" in the "China Intellectual Property Magazine".
BOEHMERT & BOEHMERT partner and solicitor Dr Carl-Richard Haarmann and solicitor Jan Rether have made a contribution to the "China Intellectual Property Magazine" (7/8-2015) entitled "Recent Developments in European Union Trademark Law". In the article, the authors explain the comprehensive changes which EU brand law will see over the coming months and years. They have also collected together and comment on recent judgements of the European Court of Justice. The article can be downloaded by subscribers or ordered in print form from.
4 Sep 2015 | Trade Marks
Online specialist magazine "IntellectualProperty" with contribution from Dr B. Bahlmann on Google keywords.
In the 02/2015 edition of the online specialist magazine "IntellectualProperty", BOEHMERT & BOEHMERT partner Dr Björn Bahlmann submitted the article "Not everything clarified? - New uncertainty in the use of foreign brands as Google keywords". Here he explains in how far it's permissible to used foreign brands as Google keywords. Dr Bahlmann points out here that the Higher Regional Court of Hamburg has recently issued a judgement which devates from the liberal line taken by the BGH and which could pose stricter requirements for the permissiblity of the use of foreign brands. "IntellectualProperty" is a joint publication by Frankfurt Business Media GmbH - The F.A.Z publisher, a company of the F.A.Z publishing group, and the legal publishers German Law Publishers. The article can be downloaded from 16 September 2015.
31 Aug 2015 | Patents and Utility Models
"Contract manual Pharma and Life Sciences" with contribution from Dr M. Rüberg.
In September 2015, the C.H. Beck Verlag published the "Contract Manual Pharma and Life Sciences - with tried and trusted framework suggestions from practice". BOEHMERT & BOEHMERT partner Dr Michael Rüberg contributed here as co-author. The manual offers a comprehensive collection of commented contract frameworks for all standard areas of regulation in Pharma and Life Sciences and follows the life cycle of a product. Peculiarities of the legal situation in other selected countries are also included in the comment. The manual can be ordered directly from Beck Verlag at a price of: € 198.00 Stief / Bromm (Hrsg.), C.H. Beck, 2015. ISBN 978-3-406-65042-0.
4 Aug 2015 | Patents and Utility Models
"Patent Lawyer Magazine" with contribution by Dr S. Schohe and Dr M. Rüberg.
BOEHMERT & BOEHMERT partners Dr Stefan Schohe and Dr Michael Rüberg have contributed the article "Foreign companies beware - German courts are closing safe harbors abroad" to Patent Lawyer Magazine (June 2015, p. 47 et seq) In the article, patent lawyer Dr Schohe and solicitor Dr Rüberg explain the "Audio Signal Coding" decision of the Federal Supreme Court (official reference X ZR 69/13), which holds that there can be a patent infringement as a result of actions taken abroad. The authors identify a trend in German case law to make foreign firms which use domestic distribution partners responsible for patent infringements in Germany from the point of view of participation in a domestic patent infringement. As a result, this means that firms which operate exclusively outside Germany can be made liable for patent infringements in Germany both for direct as well as for indirect patent infringement. Correspondingly, the authors conclude, foreign firms must increasingly look into legal protection in Germany, even in cases where the articles they supply are not patent protected but merely represent a means which can be used in connection with patent infringement in Germany. The entire article can be read here.
30 Jul 2015 | Trade Marks
Dr Schwab in WTR Daily on the decision in the "Deutsche Rockwool Mineralwoll GmbH ./. OHIM" case.
In the online magazine World Trademark Review Daily from 22/07/2015, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-436/12 Deutsche Rockwool Mineralwoll GmbH ./. OHIM) from 08 July 2015. The decision relates to the risk of confusion between the community trademark registration ROCK&ROCK and the older German trademark MASTERROCK; FLEXIROCK for identical goods in the field of construction materials. The focus of the decision is the distinctiveness of the common element ROCK as well as the question of similarity of the word elements. Those subscribing to WTR Daily can see the entire article here.
6 Jul 2015 | Patents and Utility Models
"Announcements by German patent lawyers" with contribution from Dr J. B. Krauss on "Broccoli II" and "Tomato II"
BOEHMERT & BOEHMERT partner Dr Jan B. Krauss has contributed an article entitled "Current news from Biotechnology - On the decisions "Broccoli II" (G2/13) and "Tomato II" (G2/12) of the Enlarged Board of Appeal of the European Patent Office" in the June edition of the specialist magazine "Mitteilungen der deutschen Patentanwälte" (Announcements by German patent lawyers (MdP). In the article, he analyses the decisions of the EPO with regards to the patentability of claims relating to plants when these plants are essentially created by technical biological procedures. Krauss, a patent lawyer and life sciences specialist, explains in how far "these decisions stand in contradiction to the patent exclusions applicable in a number of European Patent Convention member states, e.g. Germany and Netherlands". This is available here for subscribers or for individual purchase.
3 Jul 2015 | Copyright
Interview with O. Walters on the legal position of photos and videos of patients
An interview with BOEHMERT & BOEHMERT partner and media law specialist Olaf Wolters has appeared in the two specialist magazines ergopraxis (07-08/2015) and physiopraxis (07-08/2015) looking at the legal position of photos and videos of patients. For both specialist groups, in an era of smartphones and tablets, the question often arises as to the legal use of patient photos and videos. In an interview, Olaf Wolters explains what must be paid attention to in order to protect the personality rights of the patient and how such photos and videos can be properly used. According to Wolters: "A person photographed or videoed without consent can claim damages." Both magazines are published by the Thieme publishing group, a leading publisher of medical literature.
19 Jun 2015 | Copyright
musikmarkt 06/2015: Dr M. Schaefer with contribution "Four misunderstanding on copyright contract law".
BOEHMERT & BOEHMERT partner Dr.Martin Schaefer has made a contribution to the specialist magazine musikmarkt (06/2015) entitled "Four misunderstanding on copyright contract law". In the article, he explains for what reasons the idea of a "copyright minimum wage based on copyright contract law" is, on closer inspection, not suitable as a general solution for the creative economy. Dr Schaefer says here: "The idea of copyright for authors is not that of a suitable wage, but of a suitable participation. Copyright grants the author a participation right in the possible success." The entire article can be accessed by subscribers here.
5 Jun 2015 | Copyright
New edition: "Munich Contract Manual" with contributions from BOEHMERT & BOEHMERT partners.
The revised seventh edition 2015 of the "Munich Contract Manual" is now available. BOEHMERT & BOEHMERT partners Prof Christian Czychowski, Prof Jan B. Nordemann and Dr. Anke Nordemann-Schiffel cooperated on the new revised edition and contributed contract templates with explanations in the field of copyright contract law. The "Munich Contract Manual" is considered the standard reference work for contract design and comprises of six individual volumes. C.H. BECK Verlag 2015 ISBN 978-3-406-61291-6. It can be ordered at.
22 May 2015 | Trade Marks
WTR - "Anti-Counterfeiting Guide 2015" with contribution from three BOEHMERT & BOEHMERT partners.
The internationally renowned specialist magazine World Trademark Review has published the renowned "Anti-Counterfeiting Guide 2015" which is compiled in cooperation with the World Customs Organization and INTERPOL. In the May 2015 edition of the guide, BOEHMERT & BOEHMERT partner and trade mark law experts Dr Rudolf T. Böckenholt, Dr Volker Schmitz-Fohrmann and Dr Florian Schwab contributed the article "Border seizure measures in the European Union". The article looks at issues in relation to product piracy and borders seizures in the EU. In particular, new rules applying to border seizures after the entry into force of the new Boarder Seizures Ordinance such as the new small volumes procedure are set out clearly. The entire article can be downloaded as pdf here (note: “This article first appeared in “Anti-Counterfeiting 2015“ – A Global Guide, a supplement to World Trademark Review, published by Globe Business Media Group - IP Division. To view the guide in full, please go to www.worldtrademarkreview.com): WTR_ACG_RegionalFocus_EuropeanUnion.pdf
13 May 2015 | Patents and Utility Models, Copyright
New edition: "Manual Commercial Criminal Law" (HWSt) with contributions from BOEHMERT & BOEHMERT partners.
The respected Handbuch Wirtschaftsstrafrecht (HWSt) (Manual of Commercial Criminal Law) published by Prof Hans Achenbach, Prof Andreas Ransiek and Prof Thomas Rönnau has now been released in a new 4th edition (2015) by C. F. Müller Verlag, Heidelberg. Three BOEHMERT & BOEHMERT partners have authored contributions for the chapters on copyright and industrial property rights. Dr Florian Schwab is responsible for the subject of "Product Piracy". Further contributions are made by Prof Axel Nordemann (Copyright Criminal Law) and Malte Nentwig (Patent and Utility Patent Criminal Law). The respected manual offers a compact summary of key fields of commercial criminal law including administrative offences and has its focus in the representation of relative practical aspects. Manual of Commercial Criminal Law. Series: Recht in der Praxis. C. F. Müller Verlag, Heidelberg. 2015 978-3-8114-6019-5. The manual can be obtained as hardcover or as e-book from the publisher.
13 May 2015 | Trade Marks, Copyright, Designs
NJW: „3D-Druck als Herausforderung für die Immaterialgüterrechte“ – Beitrag von Prof. Dr. J. B. Nordemann, Dr. M. Rüberg und Dr. M. Schaefer
In the specialist magazine Neue Juristische Wochenschrift (18/2015, p. 1265 et seq.), three BOEHMERT & BOEHMERT partnera Prof. Dr. Jan Bernd Nordemann, Dr. Michael Rüberg and Dr. Martin Schaefer contributed the article "3D Printing as Challenge for Intangible Property Rights". In the article, the three specialist lawyers for industrial property rights explain how rightholders can protect against unauthorised 3D printing and who is liable in the case of infringement of right. The team of authors conclude that the law as it stands is well equipped to meet the challenges within the framework of "Product Piracy 2.0" (using 3D printers). Copyright law often grants the broadest protection. The lawyers also describe how a protection strategy in private, commercial or industrial fields can be systematically developed and how far intangible property rights (copyright, design, brand and patent rights) are linked here. Subscribers can access the complete article under.
20 Apr 2015 | Trade Marks, Copyright, Designs
Brand articles: "3D-Printing: The Next Digital War?" – Contribution by Prof J. B. Nordemann and Dr M. Rüberg.
BOEHMERT & BOEHMERT partners Prof Jan Bernd Nordemann and Dr. Michael Rüberg contributed the article "3D-Printing: The Next Digital War?“ to the specialist magazine Markenartikel – Das Magazin für Markenführung (4/2015). In the article, the specialist lawyers for industrial property rights explain how rightholders can protect against unauthorised 3D printing. The increasing popularity and falling cost of 3D printers are causing brand article owners increasing concern. The two lawyers provide both concrete recommendations as well as examples from practice in the article. Jan B. Nordemann points out that "commercial property rights provide no legal protection against private infringement.". Here, copyright law plays a central role in protection from illegal 3D prints. The entire edition 4/2015 of the magazine Markenartikel is dedicated to product piracy. The above article and magazine can be accessed here (for a fee)
25 Mar 2015 | Trade Marks
Dr Florian Schwab in WTR Daily on the decision in the "ZEBEXIR" case
In the online magazine World Trademark Review Daily from 18/03/2015, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-366/11 RENV Bial Portela ./. OHIM) from 03 March 2015. In contrast to the decision at lower instances, the Court considered the brands ZEBEXIR and ZEBINIX for identical goods in classes 3 and 5 as capable of being confused, in particular in view of the sufficient visual and phonetic similarity. An initial judgement with similar result was repealed by the European Court of Justice due to the lack of reasoning. Those subscribing to WTR Daily can see the entire article here.
19 Mar 2015 | Copyright
BOEHMERT & BOEHMERT partners summarise Copyright Law 2014 in the NJW.
BOEHMERT & BOEHMERT partners Prof Jan Bernd Nordemann and Prof Christian Czychowski have contributed the article "High Court Jurisprudence and Legislation in Copyright Law 2014" in the legal journal Neue Jouristische Wochenschrift (NJW 11/2015, page 747 et seq). The article looks decisions by the ECJ and German Federal Supreme Court delivered in 2014. For a number of years, the copyright law experts have made a regular contribution to the NJW summarising developments in copyright law at both national and EU level and report on new case law. Subscribers can access the complete article under www.njw.de. The NJW is the most eminent legal journal in the German language.
28 Jan 2015 | Copyright
musikmarkt 01/2015: Dr M Schaefer with contribution on "Duty to Post Deposit".
BOEHMERT & BOEHMERT partner Dr Martin Schaefer has made a contribution to the specialist magazine musikmarkt (01/2015) entitled "The Duty to Post Deposit is coming... but how (!?)". In the article, he explains a key aspect of the upcoming reform of German administration legislation. With regard to the implementation of the EU Directive - Collecting Companies Directive, the focus in Germany has been on the "duty to post deposit". Dr Schaefer explains under what circumstances a deposit in respect of compensated owed made with a neutral body may be required and comments thus: "Ultimately. it's a matter of fair distribution of risk for each deposit." Just how this is worked out will be the topic of political discussed over the coming months, Schaefer went on. The full article is available to subscribers at.
13 Jan 2015 | Trade Marks
Dr Schwab in WTR Daily on the decision in the "Inter-Union Technohandel ./. OHIM" case.
In the online magazine World Trademark Review Daily from 06/01/2015, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-298/12 Inter-Union Technohandel GmbH ./. OHIM) from 09 December 2014. In this case, the Court looks at the framework for the proof of right-preserving use. The focus here is on the evidential value of assurances under oath made by a person associated with the owner of the affected trade mark - per se and in connection with further use material. The Court also looks at the evidential value of products which have been the object of a market analysis in the magazine TEST by Stiftung Warentest. Those subscribing to WTR Daily can see the entire article here.
10 Nov 2014 | Trade Marks
Dr Schwab in WTR Daily on the decision in the "Junited Autoglas Deutschland ./. OHIM" case.
In the online magazine World Trademark Review Daily from 04/11/2014, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-297/13 Junited Autoglas Deutschland GmbH & Co KG ./. OHIM) from 16 October 2014. The Court affirmed a risk of confusion between the older Polish word/picture mark AUTOGLASS and the Community mark UNITED AUTOGLASS in particular for motor vehicles, replacement parts for motor vehicles, windscreens. In terms of understanding the terms "Autoglas" and "united" from the perspective of the relevant Polish public, the Court again has regard to the modest English language ability of consumers in the EU. "Glass" as well as "united" are not part of the basic English vocabulary of the EU consumer, the Court held. Those subscribing to WTR Daily can see the entire article here.
22 Sep 2014 | Copyright
New: App for the renowned copyright commentary "Fromm/Nordemann" available.
An app for "Fromm/Nordemann Copyright" is now available in Apple and Android app store. The app was developed in collaboration with the Kohlhammer Verlag and Wesemann NewMedia. The app accompanies the new 11th edition of the renowned copyright commentary Fromm/Nordemann which - with the exception of Criminal Copyright Infringement - is exclusively compiled by BOEHMERT & BOEHMERT lawyers. The app includes current legislation on copyright law, thematically ordered legislative materials on copyright, copyright-related EU directives, international conventions on copyright law as well as common remuneration regulations. The app "FN Urheberrecht" is helpful for all practitioners working in copyright. It can be used on smartphones or on the iPad in German.
5 Sep 2014 | Patents and Utility Models
"Patent Law in Greater China" with contributions from BOEHMERT & BOEHMERT partners recently published.
At the end of August, "Patent Law in Greater China" was published by Stefan Luginbuehl and Peter Ganea. The work provides a comprehensive overview of current developments, processes and standards in various aspects of patent law in China, Taipei, Hong Kong and Macau. The three BOEHMERT & BOEHMERT partners Prof Christian Czychowski, Prof Heinz Goddar and Prof Jan B. Nordemann co-authored the chapter "Standard-Essential Patents and Injunctive Relief" and also contributed "Comments from the European Perspective". The work (ISBN 978 1 78195 483 6) is available as hardcover and ebook and can be ordered at.
4 Sep 2014 | Patents and Utility Models
Neuerscheinung „Forschen – Patentieren – Verwerten“: BOEHMERT & BOEHMERT-Partner mit Beitrag zu „US-Hochschulerfindungen“.
Soeben ist das Buch „Forschen – Patentieren – Verwerten. Ein Praxisbuch für Naturwissenschaftler mit Schwerpunkt Life Sciences” von Dr. Kirstin Schilling im Springer Spektrum Verlag erschienen. BOEHMERT & BOEHMERT-Partner Dr. Jan B. Krauss hat hier den „Beitrag »Hochschulerfindungen und das US-Patentrecht« verfasst. Das Praxisbuch erläutert, wie Forschungsergebnisse von Wissenschaftlern aus Universitäten und Hochschulen patentiert und kommerziell verwertet werden können. Anhand von Beispielen werden wichtige Aspekte des Erfinder- und Patentrechts erläutert. Zudem finden sich praktische Tipps, so z.B. zur Durchführung von Patentrecherchen oder zur Gründung von Spin-off-Unternehmen. Springer Spektrum Verlag 2014. ISBN 978-3-642-54993-9, 313 Seiten. Bestellbar unter anderem über Amazon.
22 Jul 2014 | Trade Marks
Dr Schwab in WTR Daily on the decision in the "ECODOOR" case
In the online magazine World Trademark Review Daily from 18/07/2014, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (Ref.: C-126/13 P) from 10 July 2014. (Article "ECJ confirms that mark descriptive of component can be descriptive of product itself."). The highest European court confirmed judgements from lower courts by rejecting the trademark registration ECODOOR of BSH Bosch and Siemens Hausgeräte GmbH as community mark at the European Office for Harmonisation. Among other things, the Court viewed the trademark as merely descriptive and therefore not capable of registration. For the descriptive character, the Court found it sufficient that the relevant consumer group would view the presentation of the corresponding appliance with an "environmentally-friendly door as a description of the environmental friendliness of the corresponding product as a whole." Those subscribing to WTR Daily can see the entire article here.
25 Jun 2014 | Copyright
Prof J. B. Nordemann in the ZUM with article on the "kino.to" decision.
BOEHMERT & BOEHMERT partner and specialist lawyer for copyright and media law Prof Jan Bernd Nordemann has contributed an article on the "kino.to" decision in the ZUM Magazine for Copyright and Media Law. In its decision from 27.03.2014 – (C314/12 - UPC Telekabel Wien ./. Constantin und Wega), the ECJ allowed right holders to demand that access providers block certain websites on the Internet when their contents infringe copyright. (website blocking). Prof Nordemann explains the various aspects and consequences of this decision in his article. ZUM is one of the most significant magazines in German-speaking Europe for copyright and media law. Subscribers can access the full article at or can purchase it individually.
20 Jun 2014 | Copyright
11th edition of the Copyright Commentary Fromm/Nordemann just published.
On 18 July 2014, the 11th edition of the Copyright Commentary Fromm/Nordemann appeared, published by Prof. Axel Nordemann and Prof. Jan Bernd Nordemann. Both are partners at BOEHMERT & BOEHMERT. The authors contributing to the works are - with the exception of Copyright Crime - all from BOEHMERT & BOEHMERT: Dr. Thomas W. Boddien, Prof. Dr. Christian Czychowski, Dr. Andreas Dustmann, Dr. Anke Nordemann-Schiffel, Prof. Dr. Axel Nordemann, Prof. Dr. Jan Bernd Nordemann, Dr. Martin Schaefer, Dr. Volker Schmitz-Fohrmann, Dr. Martin Wirtz. Fromm/Nordemann is the oldest commentary on the Copyright Act from 1965. Since its first edition in 1966, it has become the standard reference work on copyright practice. The 11th edition follows in this tradition. It too is a reference work by practitioners for practitioners. Thanks to its clear and unambiguous language, Fromm/Nordemann is also suitable for non-lawyers. Since its last edition, copyright law has experienced various changes. In particular, the Term of Protection Act, the Ancillary Copyright Act for Press Publishers, the rules on orphaned and out-of-print works as well as the Act Against Dubious Business Practices and new rules for warnings. All statutory amendments as well as current case law at both European and national level is taken into account by authors and included in the commentary. Comprehensive commentary is also provided on the Publishing Act in the 11th edition. The Copyright Administration Act and copyright aspects of settlement agreements are also explained. The contents of the website Fromm/Nordemann are now also available as an app for Apple iOS and Android smartphones. Electronic editions of Fromm/Nordemann can also be obtained as eBook from the Kohlhammer-Shop and from juris. (ISBN 978-3-17-023028-6)
5 Jun 2014 | Trade Marks
GRUR Prax with contribution from Dr R. Böckenholt on the "Louis Vuitton/OHIM" decision.
BOEHMERT & BOEHMERT partner and lawyer Dr. Rudolf Böckenholt discusses the decision of the European Court of Justice from 15 May 2014 (C-97/12 P - Louis Vuitton Malletier/OHIM) in the specialist magazine GRUR Prax 12/2014. The case concerned the question as to whether in the case of pure picture marks the principles established in case law on the distinction of 3D brands are to be applied and whether this also covers picture marks which only show parts of the product. Official practice of stretching the distinction for specific goods to generic terms or semantically related terms remains under review. The European Court of Justice affirmed all three questions which prevents its restrictive case law on 3D marks from being undermined and gives those registering marks and important aid in the proper construction of their goods and service directory. Dr. Böckenholt is specialist lawyer for industrial property rights and has contributed regularly to GRUR-Prax since 2009. Subscribers can access the entire article from 13 June 2014 here.
16 May 2014 | Copyright
musikmarkt 18/2014: Dr M Schaefer with contribution on "kino.to decision".
BOEHMERT & BOEHMERT partner Dr Martin Schaefer explains the decision of the European Court of Justice on kino.to (UPC Telekabel Wien GmbH) in his contribution to the specialist magazine musikmarkt (18/2014) entitled "Is the ECJ clearing the way for blocking Internet content?" Constantin Film GmbH inter alia (C-314/12)) and its meaning for the German music industry. The full article is available to subscribers at.
30 Apr 2014 | Copyright
Celebratory Publication for Prof. Joachim Bornkamm with contributions from BOEHMERT & BOEHMERT partners
BOEHMERT & BOEHMERT partners Prof Jan Bernd Nordemann and Prof Axel Nordemann have both contributed articles to the Celebratory Publication for Prof Joachim Bornkamm's 65th Birthday in March 2014 (C.H. Beck 2014). In his contribution, Axel Nordemann explains "Recent Developments in the Jurisprudence of the European Court of Justice on the Concept of Work and its Impact on the Law in Germany". Jan Bernd Nordemann explains the "Different between Grant and Assignment of Rights of Use in Copyright" Since 2006, Bornkamm was Chairman of the I Civil Senate at the Federal Supreme Court. He has also authored various works on copyright and trademark law as well as competition and cartel law. The publication is by C.H. BECK. (ISBN 978-3-406-65911-9, 2014. Book XVII, 1123 S. cloth-bound).
16 Apr 2014 | Copyright
Celebratory Publication for Dr Elisabeth Niggemann with contribution from Dr Martin Schaefer
To mark the International Conference at the German National Library in Frankfurt am Main from 07-08 April 2014, the celebratory publication "NIG 6.0: crossing borders - the future of access“ for Dr. Elisabeth Niggemann was produced. BOEHMERT & BOEHMERT partner Dr. Martin Schaefer contributed the article "Does copyright hinder the development of digital libraries?" In the article, Schaefer discusses the question as to what would be a fair balance of interest between the interest of libraries, right holders and users. Dr. Elisabeth Niggemann is General Director of the German National Library (DNB) in Frankfurt am Main and Leipzig. Dr. Schaefer is Honorary Chairman of the Music Counsel of the German National Library. Deutschen Nationalbibliothek (public), NIG 6.0 (Festschrift Niggemann), Crossing Borders, Leipzig, Frankfurt am Main 2014, S. 31-34.
9 Apr 2014 | Trade Marks
GRUR Prax with contribution from Dr R. Böckenholt on the "Real Chips" decision.
BOEHMERT & BOEHMERT partner and lawyer Dr Rudolf Böckenholt comments on the "Real Chips" decision by the Federal Supreme Court from 22 January 2014 in the legal journal GRUR-Prax 06/2014 (p. 126). The contested point here was when and how the risk of first infringement can be eliminated by trade mark registration in Germany. The decision confirms recent case law and is a clear reminder to those registering trade marks that inactivity is insufficient to eliminate the risk of first infringement and that, instead, a clear act is necessary. In the case at hand, the Court discussed the law with respect to Community marks. Dr Böckenholt is specialist lawyer for industrial property rights and has been a regular contributor to GRUR-Prax since 2009. Subscribers can access the entire article here.
18 Mar 2014 | Trade Marks
Dr Schwab in WTR Daily on the decision in the "BALEA / CALDEA" case
In the online magazine World Trademark Review Daily from 28.02.14, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-26/13 dm-drogerie markt GmbH & Co KG ./. OHIM) from 12 February 2014. The Court didn't find a risk of confusion between the older word mark BALEA used by dm-drogerie markt and the Community mark CALDEA, mostly used in the field of perfumed goods. The Court referred back to its earlier case law in a parallel trade mark conflict between parties and so rejected the claim made by dm-drogerie. Those subscribing to WTR Daily can see the entire article here.
17 Mar 2014 | Copyright
BOEHMERT & BOEHMERT partners summarise Copyright Law 2013 in the NJW.
BOEHMERT & BOEHMERT partners Prof Jan Bernd Nordemann, Prof Christian Czychowski and Dr Julian Waiblinger have contributed the article "High Court Jurisprudence and Legislation in Copyright Law 2013" in the legal journal Neue Jouristische Wochenschrift (NJW 11/2014, page 742 et seq). For a number of years, the copyright law experts have made a regular contribution to the NJW summarising developments in copyright law at both national and EU level and report on new case law. Subscribers can access the complete article under www.njw.de. The NJW is the most eminent legal journal in the German language.
24 Feb 2014 | Trade Marks
"Healthcare Marketing" 03/2014 with contribution from Dr. Th. W. Boddien.
BOEHMERT & BOEHMERT partner Dr. Thomas W. Boddien has published a contribution in the journal "Healthcare Marketing" (03/2014) entitled "Strenge Regeln zum Vermeiden irreführender Aussagen" ("Strict rules for avoiding misleading statements" (article in German)) In his article, Dr. Boddien advises particular caution regarding advertising with good and services tests, above all within the scope of the German Advertising in the Health Care System Act (HWG) According to Dr Boddien, the new version of the HWG, which has been in force since October 2012, has led to legal uncertainty for the healthcare industry due to various ambiguities; it does however also provide certain opportunities as certain offences have been omitted. "Consumers place particular trust in tests and their purchasing decision is frequently influenced by them," states Boddien. He also states that it is important that the consumer is always put in a position where he/she can correctly evaluate and judge the advertisement. Additionally, Dr Boddien explained the new conditions - in place since July 2013 - for advertising using assessments from the consumer organisation Stiftung Warentest. "Healthcare Marketing" is an authoritative journal for the pharmaceutical and healthcare market. It is issued monthly.
14 Feb 2014 | Copyright
Dr. M. Schaefer on "André Le Nôtre" in the exhibition catalogue at Versailles.
To mark the 400th anniversary of André Le Nôtres, one of the most famous garden designers of all time, the Palace of Versailles presents the exhibition "André le Nôtre in Perspectives 1613 - 2013" until 23 February 2014. Le Nôtres garden design in Versailles is considered a masterpiece of his century. This and other of his creations set the yardstick for the whole of Europe. BOEHMERT & BOEHMERT partner Dr. Martin Schaefer co-authored the article "The Reception of Le Nôtre and the French Style in the Holy Roman Empire" by Dr. Clemens Alexander Wimmer in the catalogue to the exhibition. This catalogue exists in an English and French version and can be ordered here. Dr. M. Schaefer wrote his doctoral thesis on "Copyright Protection for Garden Design".
5 Feb 2014 | Copyright
musikmarkt 05/2014: Dr. M. Schaefer with contribution "What's to come?".
BOEHMERT & BOEHMERT partner Dr. Martin Schaefer has made a contribution to the specialist magazine musikmarkt (05/2014) entitled "What's to come?" (Was steht an?) in which he explains open legal and political issues with significance for the music industry. In particular, he looked at the review of rules in EU copyright, data storage, the decision of the ECJ with regard to kino.to and developments with regard to GEMA/YouTube, "Martin Vogel" and the EU directive for collecting companies. "Lots to do in 2014", Dr. M. Schaefer concludes. The entire article can be viewed by subscribers at.
30 Dec 2013 | Copyright
„ZUM 1/2014“: Contribution "Serious Rule Changes... " by Prof. J. B. Nordemann and O. Wolters.
BOEHMERT & BOEHMERT partners and copyright experts Prof. Jan Bernd Nordemann and Olaf Wolters have contributed at article to the "ZUM Magazine for Copyright and Media Law" (01/2014) on the amendment to § 97a UrhG ("Serious rules changes to Copyright Infringement Warnings: amendment to § 97a UrhG", page 25 et seq). They explain that the amendment will mean serious changes to Copyright Infringement Warnings. The amendments will affect the following areas: Duties of information in warnings will in future require disclosure of the name of the infringed party, an exact description of the infringement, itemisation of payment claims as damage and expense claims as well as a proposal for rectification of the breach. The claim for reimbursement of legal costs in the case of private infringements by natural persons is also subjected to a limit. The claim for the reimbursement of costs from the person receiving the warning in the case of unjustified or ineffective warnings is also changed. The entire article can be seen here.
16 Dec 2013 | Unfair Competition
“Markenartikel” magazine 12/2013 with an article on “Marketing with review results” by Dr Thomas W. Boddien.
BOEHMERT & BOEHMERT partner and trademark law expert Dr Thomas W. Boddien wrote the article “Marketing with review results” (“Die Werbung mit Testergebnissen”) in the specialist publication Markenartikel. There he examines relatively strict case rulings relating to the use of product and service tests for marketing purposes. “Consumers will often place particular confidence in tests and their purchase decisions are frequently guided by these,” said Boddien. It is also important that the consumer always be provided with the means to assess and interpret the marketing statements correctly, continued Boddien. Moreover, he also identifies which special conditions apply to the use of assessments conducted by consumer watchdog “Stiftung Warentest” for marketing purposes. The entire article is available for subscribers here.
27 Nov 2013 | Patents and Utility Models
The German monthly intellectual property law journal “Mitteilungen der deutschen Patentanwälte” (10/2013) includes article by Dr. J.B. Krauss.
Issue 10/2013 of the “Mitteilungen der deutschen Patentanwälte” includes an article entitled “The requirement for “utility” in the USA following Mayo v. Prometheus – repercussions on the practice of patent applications” written by BOEHMERT & BOEHMERT partner Dr Jan B. Krauss. The article outlines the history of, and reasons for, the Mayo decision and suggests strategies for avoiding problems with patent applications in the USA.
19 Nov 2013 | Trade Marks, Anti-Trust
"Branded products": Article "Antitrust law versus brand image" by Professor J.B. Nordemann and O. Wolters.
The two BOEHMERT & BOEHMERT partners and trademark law experts Professor Jan Bernd Nordemann and Olaf Wolters have written an article "Antitrust law versus brand image" for the journal "Branded Products" (11/2013). In it they examine the current rulings around sales restrictions on traders for the sale of branded goods on the Internet. For some time now there have been antitrust law discussions about whether providers of high-value branded products are allowed to specify how their Internet distributors should carry out sales. The Karlsruhe and Munich Higher Regional Courts had decided in favour of Internet sales restrictions. The Berlin Court of Appeal has now departed from this case law. Now the Federal Supreme Court will have to decide whether Internet sales restrictions, which are considered important to brand manufacturers for image reasons, are permissible. "To prevent their products being sold at a loss on the Web manufacturers have included selection criteria for distributors in their delivery terms," explains Professor J.B. Nordemann. Subscribers can access the complete article at.
6 Nov 2013 | Trade Marks
Dr Schwab in WTR Daily on the trademark ruling on "rarity value".
Writing in the online specialist newspaper World Trademark Review Daily on 30 October 2013, BOEHMERT & BOEHMERT partner and trademark expert Dr Florian Schwab reported on the recent decision by the European Court of Justice (ECJ) (C-597/12 P Isdin SA ./. HABM) from 17 October 2013.. The decision concerned a very rare case in which a trademark decision of the European Court was reversed. The case involved opposition proceedings against the word mark ZEBINIX, based on the earlier community mark ZEBEXIR for pharmaceuticals. Notable in the decision was the fact that the European Court found a risk of confusion contrary to the two first instance decisions. However, the ECJ didn't have to decide on this point in the proceedings against the decision of the European Court. The reversal of the first instance decision was based solely on the formal aspect of insufficient regard for the risk of confusion for the individual goods covered by the community mark. The entire article can be seen here.
31 Jul 2013 | Designs
Dr. Schwab writes in WTR Daily on the “Highlighter ruling”.
BOEHMERT & BOEHMERT partner and trademark expert Dr. Florian Schwab has reported on the ruling recently issued by the European General Court (EGC) of June 27, 2013 (T-608/11 Beifa Group Co. Ltd. v. HABM) in the online professional journal World Trademark Review Daily of July 26, 2013. The court was dealing with the case in question for the second time. It ordered the cancellation of a Community design featuring a highlighter pen, because of an older 3D trademark belonging to Schwan-Stabilo. In doing so the court appears to have broken new ground, laying important foundations for the intersection of these two types of industrial property right.
25 Jul 2013 | Copyright
Prof. Dr. J. B Nordemann writes in AIPPI e-News on the subject of “Hosting Provider Liability”.
AIPPI e-News no. 31 (July) of the International Association for the Protection of Intellectual Property (AIPPI) has published a contribution by BOEHMERT & BOEHMERT partner Prof. Dr. Jan Bernd Nordemann on the subject of “Hosting Provider Liability”. Together with Corey Field, Ballard & Spahr, Los Angeles, USA, Jan Nordemann compares current case studies from the US and Europe concerning the issue of “user-generated content” in copyright and trademark law. The comparison shows the different interpretations of the host provider’s obligations within the two legal systems. www.aippi.org - e-News no. 31 (July 2013).
5 Jul 2013 | Trade Marks
Commentary by Dr. Guido M. Becker on the subject of the “Levi’s jeans cloth flag” appears in the GRUR (07/2013).
BOEHMERT & BOEHMERT lawyer Dr. Guido M. Becker has published a commentary in the GRUR (journal on industrial property and copyright law, 07/2013, pp. 724 - 725) with regard to the ECJ ruling on the matter of C-12/12 (Colloseum Holding AG/Levi Strauss & Co.) of April 18, 2013. The ruling concerns the issue of “genuine use” of a position trademark, namely the positioning of the cloth flag on the back pocket of the well-known Levi’s brand of jeans.
31 May 2013 | Patents and Utility Models
"Intellectual Property in Common Law and Civil Law" with contribution from Dr Jan B. Krauss.
Edward Elgar Publishing Ltd has now published "Intellectual Property in Common Law and Civil Law", edited by Toshiko Takenaka, University of Washington, Seattle, USA. BOEHMERT & BOEHMERT partner Dr Jan B. Krauss contributes the section on "Equitable Doctrines in internal patent laws". The book provides information and analysis on various legal comparative aspects of intellectual property law and procedure. It is aimed at IP specialists of all kinds, patent lawyers and lawyers specialising in IP. T. Takenaka (Editor), Verlag Edward Elgar Publishing Ltd., 2013, 499 pages, ISBN 978 0 85793 436 9. It can be ordered here.
15 May 2013 | Trade Marks
Dr. Schwab in WTR Daily on the decision "Continental Bulldog Club Deutschland".
BOEHMERT & BOEHMERT partner and trademark law expert Dr. Florian Schwab reported via the online journal World Trademark Review Daily dated 02.05.2013 about the European Union Court (EuG) decision (T-383/10 Continental Bulldog Club Deutschland eV ./. HABM) dated 17 April 2013. This was mainly focused on the - recently negated - eligibility for registration of the brand CONTINENTAL. The Luxemburg judges saw in this a primarily descriptive, non-registerable content for the claimed services "The keeping and breeding of dogs" on the part of the German applicant. The full article can be viewed here.
14 May 2013 | Copyright
Commemorative publication for Artur-Axel Wandtke with articles by BOEHMERT & BOEHMERT partners published.
On the occasion of the 70th birthday of the Berlin Professor for civil law, industrial property and copyright law, Dr. Artur-Axel Wandtke, selected lawyers and legal scholars have written a commemorative publication in his honour. Six BOEHMERT & BOEHMERT partners contributed to this with various articles. The subjects covered were the following: Prof. Dr. Wilhelm Nordermann and Prof. Dr. Axel Nordemann: "The time duration of the granting of usage rights in the work relationship" Dr. Christian Czychowski: "GTB examination of comprehensive usage rights clauses, the so-called assignment limited to purpose principle and the intellectual property rights remuneration law" Prof. Dr. Jan B. Nordemann: "The termination of intellectual property contracts: automatic reversion of rights?" Dr. Anke Nordemann-Schiffel: "No licence for unlimited investigation: The right to examine according to § 101a Intellectual Property Act (UrhG) in interim injunction proceedings“ Dr. Martin Schaefer: "Are remuneration rights, in the meaning of § 63a UrhG, transferred in the case of the overall transfer of company-related performance and service rights according to §§ 85 Sect. 2 p.1, § 87 Sect. 2 p. 1 or 94 Sect. 2 p.1 UrhG?“ The commemorative publication was published by Winfried Bullinger, Verlag Walter de Gruyter. 2013. ISBN 978-3-11-028348-4
10 May 2013 | Patents and Utility Models
China Intellectual Property Magazine with Part 2 of the article by Prof. Dr. Goddar and Dr. Haarmann published.
In edition 3-4/2013 of the highly reputed Chinese journal China Intellectual Property Magazine, the second part of the article written by the two BOEHMERT & BOEHMERT partners Prof. Dr. Heinz Goddar and Dr. Carl-Richard Haarmannby has been published, as announced. In the article "Patent Litigation in Germany - An Introduction (II)”, the authors continue their explanation of on the way in which the German patent protection and litigation system is composed and what proceedings must be initiated in cases of infringement. The first part of the article was published in edition 1-2/2013 of the journal.
26 Mar 2013 | Copyright
Prof J. B. Nordemann and Dr C. Czychowski summarise Copyright Law 2012 in NJW.
BOEHMERT & BOEHMERT partners Prof Jan Bernd Nordemann and Dr Christian Czychowski have contributed the article "High Court Jurisprudence and Legislation in Copyright Law 2012" in the legal journal Neue Jouristische Wochenschrift (NJW 11/2013, page 756 et seq). For a number of years, the two copyright law experts have made a regular contribution to the NJW summarising developments in copyright law at both national and EU level and report on new case law. Subscribers can download the complete article under www.njw.de. The NJW is the most eminent legal journal in the German language.
21 Mar 2013 | Patents and Utility Models
Czychowski/ Engelhard/ Nordemann explain MTA agreements in Mitteilungen der Deutschen Patentanwälte.
In an article published in the 3/2013 edition of Mitteilungen der Deutschen Patentanwälte (page 108 et seq.), BOEHMERT & BOEHMERT partners Dr Christian Czychowski, Prof Jan B. Nordemann and patent lawyer Dr Markus Engelhard explain "MTA agreements and their legal limits in German law". Material Transfer Agreements (MTA agreements) have for some years already been applied for research in the field of biotechnology. These are contracts on the basis of which one institution transfers certain materials to another, e.g. DNA sections, cell lines, proteins or micro-organisms for research purposes or commercial use. The contents and legal requirements contained in such MTA agreements are discussed by the authors in the article. Subscribers can access the article here online.
17 Mar 2013 | Trade Marks
Dr Schwab in WTR Daily on the decision in the "MOST-Praline" case
In the online magazine World Trademark Review Daily from 01.03.13, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision (Ref.: I ZR 217/10 from 13 December 2012) of the Federal Supreme Court which builds on and clarifies case law on keyword advertising. Those subscribing to WTR Daily can see the entire article here.
19 Feb 2013 | Patents and Utility Models
“China Intellectual Property Magazine” with an article by Prof. Dr. Goddar and Dr. Haarmann.
An article by BOEHMERT & BOEHMERT partners Prof. Dr. Heinz Goddar and Dr. Carl-Richard Haarmann has been published in issue 1-2/2013 of the widely acclaimed Chinese trade journal “China Intellectual Property Magazine”. In the article “Patent Litigation in Germany - An Introduction (I)”, the authors explain how the German patent right system is constructed and what kind of action is to be taken in cases of infringement. The second part of the article will be published in the upcoming issue (3-4/2013) of the journal. Part 1 of the article is available as a PDF in English here.
17 Feb 2013 | Patents and Utility Models
“Constructing European Intellectual Property” published with article by Dr. Jan B. Krauss.
Edward Elgar Publishing Ltd has now published “Constructing European Intellectual Property”, which was edited by Christophe Geiger, CEIPI, University of Strasbourg. BOEHMERT & BOEHMERT partner Dr. Jan B. Krauss has written the article “Construction of Efficient and Balanced Patent System: Patentability and Patent Scope of Isolated DNA Sequences Under US Patent Act and EU Biotech Directive” with Toshiko Takenaka. The work provides approximately 500 pages of information and analyses on various aspects of intellectual property and its handling in Europe. The handbook is primarily aimed at all kinds of IP specialists. ISBN 978 1 78100 163 9, Edward Elgar Publishing Ltd., 2013. It can be ordered here for example.
4 Feb 2013 | Licensing
“Research Handbook on Intellectual Property Licensing” published with article by Prof. Dr. H. Goddar.
Edward Elgar Publishing has now published the “Research Handbook on Intellectual Property Licensing”, which was edited by Jacques de Werra from the University of Geneva. BOEHMERT & BOEHMERT partner Prof. Dr. Heinz Goddar has written an article on the topic “Technology licensing between academic institutions and private companies”. The publication offers approximately 520 pages of information, research tools and international best practice examples on various types of licence agreements. The handbook is aimed at all kinds of IP specialists, patent agents and attorneys dealing with licensing of intellectual property rights. ISBN 978 1 84980 440 0, Edward Elgar Publishing Ltd., 2013. It can be ordered here for example.
9 Jan 2013 | Unfair Competition
12th edition of Beck's Procedural Form Book with contribution from Dr C. Götz
The 12th revised and extended edition of the Beck Procedural Form Book (Beck´schen Prozessformularbuch) is now available. BOEHMERT & BOEHMERT partner Dr Catharina Götz has completely revised the chapter on the Unfair Competition Act (Gesetz gegen den unlauteren Wettbewerb (UWG)). The reference work provides practical information on all types of procedure - civil proceedings, arbitration, international civil procedure, enforcement, insolvency, employment tribunal and administrative procedure - on over 2,500 pages. The new edition takes account of all legal reforms since autumn 2009. The work is aimed primarily at judges, lawyers, notaries, auditors, tax consultants and judicial officers. The 12th revised and extended edition 2013 is available as book with CD-ROM, ISBN 978-3-406-62937-2. Beck Shop.
13 Dec 2012 | Trade Marks
Dr. Schwab in World Trademark Report Daily on determination of similarity of goods.
In the online magazine World Trademark Review Daily from 03.12.2012, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice in the case ATLAS ./. OHIM from 21 November 2012. The case focused primarily on the criteria for determining the similarity of goods. Those subscribing to WTR Daily can access the entire article here.
12 Nov 2012 | Copyright
Prof J. B. Nordemann contributes article on "GTC Control in Copyright Law" in NJW
BOEHMERT & BOEHMERT partner Prof Jan Bernd Nordemann, Certified Lawyer for Industrial Property and Copyright and Media Law, has contributed an article entitled "GTC Control on Granting Rights of Use by the Copyright Holder" in the Neue Juristische Wochenschrift (NJW 43/2012, S. 3121 et seq). The background to the article is formed by the recent decision of the Federal Supreme Court (BGH) on "Terms and Conditions of Fees for Freelance Journalists". The article serves as a means of determining location for GTCs in copyright law. The NJW is the most eminent legal journal in the German language.
15 Oct 2012 | Copyright
New edition of the Münchener Anwaltshandbuch Gewerblicher Rechtsschutz with BOEHMERT & BOEHMERT - authors.
In the revised and extended 4th edition 2012, published at the end of September 2012, of the reference work "Münchener Anwaltshandbuch Gewerblicher Rechtschutz", BOEHMERT & BOEHMERT partners Prof. Axel Nordemann and Dr Christian Czychowski contributed the chapters "Copyright and Related Property Rights" and "International Copyright and Related Property Rights". The new edition updates the work to summer 2012. The work is part of the range "Münchener Anwaltshandbücher" and can also be accessed at.
15 Oct 2012 | Unfair Competition
New edition of the Münchener Anwaltshandbuchs Gewerblicher Rechtsschutz with BOEHMERT & BOEHMERT - authors.
In the revised and extended 4th edition 2012, published at the end of September 2012, of the reference work "Münchener Anwaltshandbuch Gewerblicher Rechtschutz", BOEHMERT & BOEHMERT partner Dr Rudolf T. Böchenholt has provided a revised version of his chapter "Camouflage of Advertising Measures". The new edition brings the work up to date and takes account of the implementation of the EU Directive 2010/13/EU on audio-visual media services. This is especially relevant for Product Placement. Both case law and the literature have been updated to July 2012. The work is part of the Münchener Anwaltshandbücher range and can be accessed at.
1 Oct 2012 | Copyright
Speech on "Collective Licensing" by Dr M Schaefer in "Intellectual Property Journal".
The IP Osgoode Hall law School - York University, Canada, held a conference entitled "European Perspective on Copyright Law in the Information Era" in October 2011. The issue under discussion was: "Can Canada learn anything from Europe?". BOEHMERT & BOEHMERT partner Dr Martin Schaefer was invited to speak on the subject of "Collective Licensing". This speech has now been included in the "Intellectual Property Journal" published by Carlswell Verlag and can be ordered online from the publisher: „Collective Licensing: Promises and Pitfalls“, in: Intellectual Property Journal, Toronto 2012, S. 133-142. Publisher: Giuseppina D'Agostino and David Vaver. ISBN: 0824-7064.
21 Sep 2012 | Patents and Utility Models
"EPC Guide for Practitioners" in 4., extended edition published in Japanese.
The renowned "EPC Handbook - Guide for Practitioners" has just been published in the 4th edition in Japanese (ISBN 978-4-905443-05-6). This edition too was compiled by BOEHMERT & BOEHMERT partners Prof Heinz Goddar and Christian W. Appelt and translated by the Japanese authors Motohiko Fujimura, S. Nagaoka and Key Konishi. The book can be purchased in Japanese bookshops for JPN 2,940.
27 Jun 2012 | Copyright
Manual "Art Law" in revised 2nd edition
The completely revised 2nd edition of the "Art Law Manual" has just been published by C.H. Beck. The two BOEHMERT & BOEHMERT partners Prof Wilhelm Nordemann and Dr Andreas Dustmann are responsible for the "Copyright" section and have updated and expanded this section. The Manual on Art Law aims to cover all legal questions relating to art: from creation, economic exploitation all the way to tax and customs law. The manual includes comprehensive information on looted art, art insurance law, theft/forgeries, exhibition law, artists' social insurance law and copyright. The team of publishers and authors include renowned art law experts. Ebling/Schulze (Publisher.), ISBN 978 3 406 62699 9. Verlag C. H. Beck, 2012.
5 Jun 2012 | Trade Marks
Dr. Schwab analyses ECJ judgement in the Lindt chocolate bunny case in the LebensmittelZeitung.
On 1 June 2012, BOEHMERT & BOEHMERT partner and trademark expert Dr Florian Schwab makes a guest contribution to the magazine LebensmittelZeitung entitled "Only one of many" (Nur einer unter anderen). Here, he looks at the decision of the European Court of Justice (ECJ) in relation to the EU-wide trademark protection for the Lindt chocolate bunny. Registration of the golden bunny with the red ribbon as 3D community mark was rejected by the Court as not capable of registration. Dr Florian Schwab comments: "The judgement shows, generally it is difficult for a product shape as such to find original trademark protection at EU level. The bunny shape cannot claim trademark protection. The judgement of the ECJ is also significant for its restrictive tendency in respect of the community trademark." Those subscribing to LebensmittelZeitung can see the entire article here.
14 May 2012 | Trade Marks
Dr. Schwab in WTR Daily on Beatle vs. Beatles decision of the ECJ.
In the online magazine World Trademark Review Daily from 19.04.2012, BOEHMERT & BOEHMERT partner and brand law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (General Court) in the BEATLE / BEATLES case. In the decision, the Court - different to the Opposition Division - upheld the opposition to various BEATLES brands in connection with the famous British pop group raised against a picture mark BEATLE used mainly for wheelchairs. The Court upheld exploitation of the known BEATLES brand. In so doing, the Court drew protection of reputation very widely so that goods which are not prima facie similar are also included. Those subscribing to WTR Daily can see the entire article here.
19 Apr 2012 | Copyright
"Sex and the City" - explained by O. Wolters in ZUM 05/2012.
In the May edition of the copyright and media law magazine ZUM (05/2012, page 38), BOEHMERT & BOEHMERT partner and practising lawyer Olaf Wolters explains the decision of the Berlin Administrative Court (9.11.2012, 27 A 64.07) on the TV series "Sex and the City". The case involved the certification of an episode of the series and the legal dispute between a private broadcaster and the Commission for Protection of Youth in the Media (KJM). O. Wolters, a media law specialist, criticises the judgement, in particular with respect to the "deficient balance of fundamental rights" and artistic freedom. The Chamber also failed to recognise that higher courts recognise the creeping sexual liberalisation of society which must be taken into account. The judgement also touches on the "right of sexual self-determination". ZUM is one of the most renowned German legal publications.
19 Apr 2012 | Patents and Utility Models, Trade Marks, Copyright
Dr C Czychowski contributes article to specialist magazine "Markenartikel".
BOEHMERT & BOEHMERT partner Dr Christian Czychowski has contributed the article "More Objectivity (Mehr Sachlichkeit)" to the 05/2012 edition of the magazine "Markenartikel". The article reviews intellectual property law in 2012. Changing behaviour and demands have moved the goal posts for the protection of intellectual property, Czychowski claims. In the article, he sets out the status quo in the various areas of law. "It would be desirable for the discussion to again take account of the importance of intellectual property for the knowledge society, in particular in Germany, the land of ideas," Czychowski sums up. He also demands more objectivity in the discussion about the justification and change of protection rights. The magazine Markenartikel is aimed at decision-makers in brand article companies, at advertising and media agencies and opinion leaders in politics and society.
21 Mar 2012 | Copyright
Prof J. B. Nordemann and Dr. C. Czychowski summarise Copyright Law 2010/2011 in NJW.
BOEHMERT & BOEHMERT partners Prof Jan Bernd Nordemann and Dr Christian Czychowski have contributed the article "High Court Jurisprudence and Legislation in Copyright Law 2010 and 2011" in the legal journal Neue Jouristische Wochenschrift (NJW 11/2012, page 732 et seq). For a number of years, the two copyright law experts have made a regular contribution to the NJW summarising developments in copyright law at both national and EU level and report on new case law from the reporting period. Subscribers can download the complete article under www.njw.de. The NJW is the most eminent legal journal in the German language.
20 Feb 2012 | Trade Marks
GRUR-Prax, with comment from Dr R. Böckenholt on the “akustilon” case.
In the 04/2012 edition of GRUR-Prax from 17th February, BOEHMERT & BOEHMERT partner and attorney Dr Rudolf Böckenholt has provided a comment on the decision made by the Federal Court of Justice on 17th August 2011 regarding the “akustilon” case. This high-court decision states that in trade mark cancellation proceedings at the German Patent and Trade Mark Office, it is not a deciding factor whether or not the registered owner is actually also the owner of the trade mark, or whether this still even exists. This is to be assumed in the official procedure, and examined only in any potential action for trade mark cancellation before the ordinary courts (state courts). This question has previously not had a uniform answer in the case law or the literature of industrial property law. The first civil senate of the Federal Court of Justice responsible for trade mark law now draws on general procedural case law. Since 2009, Dr Böckenholt has been a regular contributor to GRUR-Prax. The article can be viewed by subscribers at.
22 Jan 2012 | Unfair Competition
January 2012: “Nordemann: Wettbewerbsrecht – Markenrecht” (Competition and Trademark Law) 11th edition now released.
At the beginning of 2012 the 11th edition of the renowned standard work and text book “Nordemann: Wettbewerbsrecht – Markenrecht” (Competition and Trademark Law) was released. BOEHMERT & BOEHMERT partners Prof. Dr. Axel Nordemann, Prof. Dr. Jan Bernd Nordemann and Dr. Anke Nordemann-Schiffel are the book’s authors. The book, now considered a “classic” was first created in 1971 by Prof. Dr. Wilhelm Nordemann. It offers a rapid and yet thorough orientation in competition law. The directive “Unfair Business Practices” and the resulting UWG-amendment (Unfair Practices Act Amendment) of 2008 are discussed comprehensively. The trademark section explains German and EU law thoroughly as well as international trademarks. The text also contains sample forms for warning notices, caveats, and writs of summons as well as other items to aid and simplify legal activity. Nordemann: “Wettbewerbsrecht – Markenrecht”, 2012. 930 S. ISBN: 978-3-8329-4172-7. Can be sourced from Nomos Publishers.
12 Jan 2012 | Patents and Utility Models, Patent Valuation, Copyright
Handbuch Wirtschaftsstrafrecht (Handbook of Commercial Criminal Law - HWSt) with contributions from BOEHMERT & BOEHMERT partners.
The revised and expanded third edition of the renowned “Handbuch Wirtschaftsstrafrecht“ or Handbook of Commercial Criminal Law – HWSt) edited by Prof. Dr. Hans Achenbach and Prof. Dr. Andreas Ransiek is now available through C.F. Müller Publishers, Heidelberg. The chapters on copyright law and patent law are written in full by lawyers from BOEHMERT & BOEHMERT. The chapter on copyright criminal law was written by Prof. Dr. Axel Nordemann. Malte Nentwig substantially revised the chapter covering “Patent and Utility Model Law”. Dr. Florian Schwab is responsible for the chapter “Countering Product Piracy”. All authors were involved in the production of the previous editions of the handbook. The handbook offers a compact representation of the most important areas of commercial criminal law in 1762 pages and focuses on the explanation of aspects relevant to practice. Handbuch Wirtschaftsstrafrecht (Handbook of Commercial Criminal Law). Series: Recht in der Praxis (Law in Practice). C. F. Müller, Heidelberg, 2012. ISBN 978-3-8114-3721-0.
2 Dec 2011 | Trade Marks
Dr Florian Schwab comments in WTR Daily.
Writing in the online edition of the World Trademark Review Daily on 2 December 2011, BOEHMERT & BOEHMERT partner and trademark expert Dr Florian Schwab has commented on the decision by the European Court of Justice in the Buffalo Milke Automotive Polishing Products Inc. vs. Office for Harmonization in the Internal Market (OHIM) case. The decision deals with the question of right-preserving usage, a matter very relevant in practice and as yet treated with some irregularity in the case law of the European courts. Here, the case deals with requirements placed on usage documents submitted on appeal.
25 Nov 2011 | Trade Marks
“CHROMA” - Dr. F. Schwab in World Trademark Review Daily.
The online edition of the World Trademark Review Daily of 21.01.2011 includes an article by BOEHMERT & BOEHMERT partner Dr. Florian Schwab. The short contribution entitled “Transliteration of Greek word for ‘colour’ held to be descriptive” deals with the ruling handed down by a court of first instance of the European Communities on 16th December 2010, in which the transliteration of ‘chroma’ was rejected as a marker for sanitary fittings on the grounds that it was purely descriptive. Dr. Schwab is a long-standing and regular contributor on.
18 Oct 2011 | Copyright
Dr Martin Schaefer in "50 years GVL".
In autumn 2009, a symposium was held at the Institute for the Protection of Industrial Property Rights and Copyright of the Humboldt University, Berlin, to mark the 50th anniversary of the Gesellschaft zur Verwertung von Leistungsschutzrechten (GVL), the collective body representing secondary exploitation rights of artists and manufacturers. The contributions made there have now been revised and updated in the publication "50 years of GVP - 50 years of collective assertion of copyright", published by Tilo von Gerlach and Guide Evers. BOEHMERT & BOEHMERT partner Dr Martin Schaefer is represented in the publication with his contribution "Sound Recordings and the GVL". The work is published by Gruyter Verlag and can be ordered from this link. ISBN 978-3-11-024887-6.
18 Oct 2011 | Copyright
Guide: "Copyright in the Information Society" – with contribution from Dr Martin Schaefer.
BOEHMERT & BOEHMERT partner Dr Martin Schaefer contributes the chapter on Germany in the recently published manual "Copyright in the Information Society: A Guide to National Implementation of the European Directive". The manual explains the current state of implementation of the Copyright Directive 2011/29/EC in the various member states of the European Union. The book, by Edgar Elgar Publishing, was published by Brigitte Lindner and Ted Shapiro. The Guide can be purchased online for USD 235 from the publisher. ISBN 978 1 84980 010 5, 2011, 648 pages.
9 Sep 2011 | Copyright
Dr Martin Schaefer explains the dispute GEMA vs. YouTube in "musikmarkt".
In edition 35/2011 of the specialist magazine "musikmarkt", BOEHMERT & BOEHMERT partner Dr Martin Schaefer explains the background to the continued dispute between GEMA and YouTube and proposes a number of options for its resolution. Both parties have been unable to agree upon an appropriate payment model as yet. As a result, numerous well-known videoclips cannot by accessed on YouTube. The dispute concerns, inter alia, how to measure the value of music. "GEMA views YouTube as a download service and wants to apply the same tariffs as are applied to iTunes," Dr M Schaefer explains. "YouTube, however, views itself as a broadcaster. This is a huge difference," the music law expert goes on. That there is a possibility for agreement is seen from the contracts agreed by YouTube with record labels with or without GEMA sister companies. The full article "Much Ado About Nothing?" can be found at.
9 Sep 2011 | Patents and Utility Models
Commemorative Publication "50 Years of the Federal Patent Court" with contribution from Dr Klaus Dieter Langfinger.
The Federal Patent Court will celebrate its 50th anniversary this year. To mark the event, the publication "50 Years of the Federal Patent Court" will appear and will include articles on industrial property rights from around 70 authors on 1184 pages. BOEHMERT & BOEHMERT partner Dr Klaus Dieter Langfinger has contributed the article "Olazapon - A Paradigm Shift" (p 379). The publication is published by presiding judges at the Federal Patent Court Munich, Achim Bender, Klaus Schülke and Dr Volker Winterfeldt and can be ordered from Wolters Kluwer Publishers: ISBN 978-3-452-27526-4.
15 Aug 2011 | Patents and Utility Models, Information Technology
Dr. Stefan Schohe comments on the latest decision by the Federal Court of Justice on computer-implemented inventions.
In the July/August issue of the IP Journal "Mitteilungen der deutschen Patentanwälte", BOEHMERT & BOEHMERT expert Dr. Stefan Schohe comments on the latest decision by the Federal Court of Justice (Bundesgerichtshof) on statutory requirements for the patentability of computer-implemented inventions (decision X ZR 121/09 - Website Display (Webseitenanzeige)). He especially puts this decision in context to the most recent case law of the Federal Court of Justice and of the European Patent Office.
15 Aug 2011 | Patents and Utility Models
Dr Jan B. Krauss in "Journal of Patent and Trademark Office Society"
Together with Prof Toshiko Takenaka (University of Washington, Seattle), BOEHMERT & BOEHMERT partner Dr Jan B. Krauss has contributed an article to the Journal of Patent and Trademark Office Society (JPTOS) (edition 02/2011 volume 93, issue 2) entitled "A Special Rule for Compound Protection for DNA-sequences - Impact of the ECJ "Monsanto" decision on Patent Practice".
4 Jul 2011 | Patents and Utility Models
"Notices from German Patent Lawyers": Dr Jan B. Kraus on the decisions G1/08 and G2/07.
BOEHMERT & BOEHMERT partner Dr Jan Krauss contributed an article entitled "What are <essentially biological procedures>?" in the current edition 06/2011 of the specialist magazine "Mitteilungen Deutscher Patentanwälte" and comments on the decisions G1/08 and G2/07. These decisions centred on the clarification of the term "essentially biological procedures" used in the European Patent Convention, for example, to exclude procedures for the growing of plants from patentability.
6 Jun 2011 | Trade Marks, Copyright, Unfair Competition
Dr Boddien describes the pitfalls of direct marketing in "Markenartikel" (06/2011).
Writing in the current edition of the specialist legal magazine "Markenartikel" (06/2011, page 48 et seq), BOEHMERT & BOEHMERT partner Dr Thomas W. Boddien describes everything "from cold calls to opt ins". In his article, Boddien explains which aspects entrepreneurs must pay attention to when pursuing direct marketing strategies and which advertising measures are prohibited without express consent from the recipient. Dr Boddien recommends having the legality of advertising measures checked in advance, in particular in relation to personal data. Consent from the recipient must be secured in advance. In Germany, cold calling is generally prohibited. Dr Boddien points out that consent for the call must be in position before the call. The same is true for direct advertising by fax, SMS/MMS or by e-mail. There is, however, an exception: Advertising e-mails to existing customers are permitted under certain conditions. Nevertheless, it is also advisable that companies have this checked by a lawyer prior to engaging in such activity. Dr Boddien is active in the field of protection of industrial property rights and specialises in copyright, competition and trademark law. He also provides advice on data protection issues. The "Markenartikel" is a specialist magazine for trademarks and is published by the Markenverband in Berlin.
16 May 2011 | Copyright
Prof. Dr. J. B. Nordemann comments on current developments in the zu Guttenberg affair in “Welt” and “Berliner Morgenpost” newspapers.
In its 11th May 2011 edition, in the article titled “Guttenbergs nächstes Problem” (Guttenberg‘s next Problem) the “Welt” reports on the latest development in the plagiarism affair surrounding Karl-Theodor zu Guttenberg. As the first victim of the plagiarism has now lodged legal complaint, the likelihood of charges against zu Guttenberg has increased. BOEHMERT & BOEHMERT partner Prof. Dr. Jan Bernd Nordemann considers the consequences of the charges to be potentially considerable. In the “Welt” he states: “It has become significantly easier for the Public Prosecution Office to press charges outside the normal channels. The office is no longer limited to invoking claims of public interest resulting from the high profile and political importance of the perpetrator.” In such cases it depends upon the public prosecutors and whether they wish to create a precedent. The “Berliner Morgenpost” of the same day reports on the zu Guttenberg plagiarism affair and on the Member of the European Parliament Silvana Koch-Mehrin. Prof. Dr. J. Nordemann is also quoted in this article. The full “Welt” article is available here.
27 Apr 2011 | Copyright, Information Technology
JIPITEC 01/2011 mit Artikel von Prof. Dr. J. B. Nordemann
Das Journal of Intellectual Property, Information Technology and E-Commerce Law (JIPITEC) ist ein 2010 lanciertets Online-Fachmedium zum Themenbereich Intellectual Property, Informationstechnologie und E-Commerce. BOEHMERT & BOEHMERT-Partner Prof. Dr. Jan Bernd Nordemann hat hier den Artikel „Liability for Copyright Infringements on the Internet: Host Providers (Content Providers) - The German Approach“ veröffentlicht (Ausgabe 1/2011). Er ist hier einsehbar und steht zum Download bereit. Der thematische Schwerpunkt des JIPITEC liegt im Europäischen Recht, sowohl im Hinblick auf EU-Recht als auch im Hinblick auf das Recht der Mitgliedsstaaten. Artikel werden in englischer, deutscher oder französischer Sprache veröffentlicht. ISSN: 2190-3387.
15 Apr 2011 | Copyright
Dr. Martin Schaefer discusses “Netzsperre” or Internet blocking in “musikmarkt” magazine.
In volume 15/2011 of the music magazine “musikmarkt” BOEHMERT & BOEHMERT partner Dr. Martin Schaefer comments on a key problem for the music industry. Despite increasing legal online music sales, the overall problem is still not solved. In the case of unpermitted music offers which cannot be suppressed at the source, other methods must be employed to ensure they cannot be used, and this with the help of Internet access providers too. To what degree providers can be requested and obliged to help in such suppression is part of the discussion. It is technically feasible in several different ways. Within the scope of the debate about possibilities for cooperation by providers, the term “Netzsperre” or Internet blocking creates confusion with its continuing lack of precise definition. It can refer to the locking of individual user accounts through to blocking of entire domains. One thing is sure however according to Dr. Schaefer: “The political course set regarding the fundamental obligations of providers to participate in the prevention of legal infringements when they have ‘nothing to do with’ these infringements will be a decisive element in the further development of the content industries.
6 Apr 2011 | Trade Marks
Dr F. Schwab in WTR Daily: "General Court Confirms Strict Approach to Time-Limits to Prove Genuine Use".
In the online edition of the World Trademark Review Daily (WTR Daily) from 29 March 2011, BOEHMERT & BOEHMERT partner Dr Florian Schwab discusses the decision in Efemy's Holding GmbH v. OHIM, Case T-50/09 of the European Court of Justice (ECJ). Of interest to trade mark lawyers are the statements of the ECJ on the formal requirements for proof of genuine use in the opposition proceedings. The German company Efemy's Holding GmbH responded to the objection of non-use, in keeping with the time limit, by stating that it would submit a fax consisting of 200 pages of usage documentation. The usage documentation was then received by the Office for Harmonisation after expiry of the time limit. Dr Schwab regularly comments in this newspaper.
14 Mar 2011 | Patents and Utility Models, Information Technology
Dr. Stefan Schohe – Comments on the Decision Amazon.com, Inc. vs. Attorney General of Canada et al. by the Canadian Court of Appeal
The famous Amazon “One-click” application was subject matter of a decision of the Canadian Court of Appeal, which dealt in a fundamental manner with the issue of patenting business –related inventions. In the February issue of IP journal “Mitteilungen der deutschen Patentanwälte” (p. 78), BOEHMERT & BOEHMERT expert Dr. Stefan Schohe summarized the essentials of the court’s reasoning and put it in context with recent decisions in the USA (In re Bilski) and in Europe.
14 Mar 2011 | Patents and Utility Models
Dr Klaus-Dieter Langfinger on "Research Privilege and Indirect Patent Infringement".
The current newsletter 1/2011 of the Association of Industrial Property Experts (VPP) includes an article composed by BOEHMERT & BOEHMERT partner Dr Klaus-Dieter Langfinger on the subject of "Research Privilege and Indirect Patent Infringement". The article is based on a speech given by Dr Langfinger at the VPP Autumn Conference.
7 Mar 2011 | Copyright
Prof Jan B. Nordemann explains EU copyright development in IP Magazine.
In the March 2011 edition of the Intellectual Property Magazine, BOEHMERT & BOEHMERT partner Prof Jan Bernd Nordemann working together with Dr Matthias Berberich contributes the article "Recent and future copyright developments in EU copyright legislation" (p. 55 et seq). Both authors give a detailed explanation of the various innovations, trends and effects of amended copyright law and the EU-wide harmonisation of IP law. The article can be viewed here as pdf.
7 Mar 2011 | Patents and Utility Models
"Notices from German Patent Lawyers": Dr. Jan B. Krauss on the <Monsanto decision>.
In the 02/2011 edition of "Mitteilungen Deutscher Patentanwälte" (Notices from German Patent Lawyers), BOEHMERT & BOEHMERT partner Dr Jan B. Krauss has contributed an article entitled "Welcome to the Privileges of Substance Protection for DNA Sequences - The Monsanto Decision and Information-related Substance Protection" and has commented on this decision.
7 Feb 2011 | Patents and Utility Models, Trade Marks
"China Intellectual Property Magazine" with article by Prof Goddar and Dr Haarmann.
BOEHMERT & BOEHMERT partner Prof Dr Heinz Goddar and Dr Carl-Richard Haarmann recently published an article in the 11/12-2010 (China IP 11-12/2010,pp 68/72) edition of the much respected Chinese specialist newspaper "China Intellectural Property Magazine"(ISSN 1811-4822). The article entitled "The defence against unjustified attacks based on IPR on the opportunity of trade fairs and exhibitions in Germany" looks at the risks faced by exhibitors committing infringement of industrial property rights in trade fairs taking place in Germany. The authors also explain which strategies can be employed to avoid these risks. The article is available in English at. or as pdf here
3 Nov 2010 | Trade Marks
Dr. F. Schwab in World Trademark Review Daily
BOEHMERT & BOEHMERT partner Dr. Florian Schwab, discussed the remarkable judgment, in terms of trademark law, of the Federal Supreme Court of 19.11.2009 in the matter of “MIXI” in the online edition of the World Trademark Review Daily of 29.10.2010. The case concerned the independent distinctive role of a composite mark. Dr. Schwab has been a regular contributor to the magazine for many years.
29 Sep 2010 | Patents and Utility Models
Expanded 3rd edition of the EPC Guide for Practitioners has been released in Japan.
The Japanese version of the 3rd edition of the well-known “EPC Handbook - Guide for Practitioners” was released recently (ISBN 978-4-7693-7180-9). This edition was also co-authored by BOEHMERT & BOEHMERT Partners, Prof. Dr. Heinz Goddar and Christian W. Appelt, and translated into Japanese by the Japanese authors, Motohiko Fujimara, S. Nagaoka and Key Konishi. In particular, the third edition covers the extensive changes to the European Patent Convention (EPC) which came into force on 1st April 2010. Versions of the EPC Handbook are also available in China, Taiwan and India, as well as in Arabic.
9 Aug 2010 | Trade Marks
World Trademark Review Daily with article by Dr. F. Schwab
In the 30.7.2010 online edition of the World Trademark Review Daily BOEHMERT & BOEHMERT partner Dr. Florian Schwab discussed the ruling of the European Court of Justice in the case of Grain Millers Inc. vs. OHIM concerning proof of use of a company name as part of opposition proceedings. Dr. Schwab is a long-time contributor of regular articles to the journal.
9 Jul 2010 | Patents and Utility Models, Information Technology
Dr. Stefan Schohe – Comments on the Opinion G 3/08 by the Enlarged Board of Appeal of the European Patent Office
BOEHMERT & BOEHMERT expert Dr. Stefan Schohe provided a contribution on current legal developments in the field of computer-implemented inventions in issue 06/2010 (p. 285) in the professional journal “Mitteilungen der deutschen Patentanwälte”. Dr. Schohe commented on the opinion G 3/08 of the Enlarged Board of Appeal of the European Patent Office, which discusses of the role of the Boards of Appeal of the European Patent Office and the issue of patentability of computer-implemented inventions in a fundamental manner. The opinion was preceded by extensive proceedings, during the course of which about 100 amicus curiae briefs were filed.