Portrait of Stella Euchner, Attorney at Law at BOEHMERT & BOEHMERT

A sandal remains a sandal – also in the opinion of the German Federal Court of Justice

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Summary of the latest decision of the German Federal Court of Justice (BGH) on the copyright protection of Birkenstock sandals

On February 20, 2025, the Federal Court of Justice ruled in a landmark decision that the world-famous Birkenstock sandals do not enjoy copyright protection. The central question was whether the design of the popular sandals is protected as a work of applied art within the meaning of Section 2 (1) no. 4 of the German Copyright Act (UrhG). The District Court in Cologne had still assumed that the sandals were protected by copyright, but the Higher Regional Court in Cologne then denied this. These first-instance decisions had caused great uncertainty in the shoe-producing industry.

Basis of the decision

The plaintiff, which distributes various models of sandals as part of the Birkenstock Group, wanted to ensure that the sandals enjoy copyright protection as works of applied art – primarily to prevent cheaper copies. It argued that the special sole cut and choice of materials had resulted in an iconic and typical design, which, as a creative achievement, must be protected by copyright.

No sufficient creativity

However, the BGH does not share this view, as already became apparent in the oral hearings: the design of the Birkenstock sandals is not sufficient to be considered a work of applied art.

Copyright protection requires a certain level of creativity that reveals the individuality of the author. There must be a scope of creative design that has been used in an “artistic way”. Purely technical work using formal design elements cannot be protected. In simple words: what is required is a creative design that goes beyond the functionality. However, according to the BGH, this is precisely not the case here.

Functionality instead of art

The BGH emphasized that the existing scope for design had not been artistically exhausted in this case, but that the design of the Birkenstock sandals was primarily geared towards functionality. The sandals were not designed as works of art, but as practical “everyday objects”. Therefore, the simple and functional design of the sandals does not meet the requirements for copyright protection.

Impact of the decision

The decision of the BGH has far-reaching consequences for the question of the extent to which everyday objects can be protected by copyright. It shows that copyright protection in Germany is only granted for works that reach a sufficient creative level and do not merely have functional features.

Design protection instead of copyright?

However, Birkenstock announced that it would continue to take legal action against imitators. This is likely to be difficult after the BGH-decision. Although there is still design protection, the deadlines for Birkenstock sandals have already expired a long time ago: the term of protection for a registered design lasts up to 25 years maximum from the filing date, but the sandals were already designed in the 1970s. Therefore, copyright protection, which only expires 70 years after the death of the author, would have been more advantageous for Birkenstock…

Dr. Michael Rüberg, Attorney at Law at BOEHMERT & BOEHMERT

Landmark ruling of CJEU with significant impact on european patent litigation strategies

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Earlier this week, the CJEU has issued its long-awaited ruling in the matter of BSH vs Electrolux (CJEU, judgement of February 25, 2025, C-339/22), thereby significantly expanding the possibilities for both the UPC and national courts in the EU Member-States to grant cross-border injunctions and decide on matters of patent infringement in countries outside the respective court’s own territory.

In its final and non-appealable ruling, the CJEU responded to several questions on the interpretation of the Brussels I-bis Regulation (“BR”). These were raised by a Swedish Court when confronted with BSH’s request to decide on the alleged infringement by Electrolux of all national parts of its European bundle patent, including in a non-EU state. The Swedish court was principally tasked to render a decision on these requests, considering Electrolux is a Swedish company and that Art. 4 (1) BR grants the courts of the EU-Member States general jurisdiction over all infringing acts committed by a person or company domiciled in their respective territory (irrespective of where the act occurs).

However, Art. 24 (4) BR limits such jurisdiction for cases concerning the “validity of patents”. So far, and following a number of earlier CJEU rulings (in particular: Roche v. Primus, Solvay v. Honeywell and GAT v. LUK), this limitation had been understood to apply as soon as a validity challenge had been brought by a defendant in any of the foreign countries concerned. As this challenge is generally available to any defendant, the above understanding and corresponding court practice led most patent owners in the past years to limit their litigation at a national court in the EU (or now also at the UPC) to infringing acts having occurred in the actual territory of the respective court.

The CJEU has now clarified the scope of Art. 24 (4) BR in relation to patent infringement cases. In the view of the CJEU, the “validity of patents” mentioned in Art. 24 (4) BR only concerns validity challenges that would lead to an erga omnes nullification of the attacked patent. These challenges still need to be brought in the courts of the patent concerned, e.g. at the Bundespatentgericht in case of a German validation of an EP.  In view of the CJEU, Art. 24 (4) BR does not however apply to an inter partes validity defense raised against a patent infringement claim. Consequently, even if an invalidity challenge was brought in a foreign country, Art. 4 (1) BR would still allow the court of the EU Member-State in which the infringement case has been brought to rule on the infringement in such foreign country, by assessing and taking into account the validity challenge in the foreign country for its inter partes decision.

This ruling is expected to have significant implications for global patent litigation and corresponding strategies, only some of which are:

  • The patent owner may now sue any EU-based defendant in the national courts of its domicile for patent infringement in any country (worldwide), including the request for an injunction and/or damages. Obviously, the question of infringement would then need to be determined on the basis of the applicable foreign law, which could then lead to the necessity of multi-national litigation teams, expert opinions on foreign law, as well as some possible “twist and tweaks” in relation to how a European court may assess and apply foreign (e.g. US) law.
  • Similarly, the owner of a non-opted-out (or opted-in) EP may now sue any defendant domiciled in a UPC member state at the UPC in relation also to EPC states which are not part of the UPC system. In fact, there is already some early precedent in this regard (even predating the CJEU’s decision), namely the LD Dusseldorf’s decision of 28 January 2025 in the matter of Fujifilm vs. Kodak, UPC_CFI_355/2023). Here, the UPC accepted jurisdiction also in relation to alleged infringement of an EP in the UK.
  • While granting broad jurisdiction to national courts and the UPC, the CJEU has accepted that an invalidity challenge in a foreign country is to be considered by the infringement court and could also lead to a potential stay of the infringement case. For defendants, this could imply the need to bring multiple invalidity attacks in national courts at the same time, if patent owners decide to bring an infringement action in only one national court for infringement in various countries. Depending on the scale of such action and the number of countries involved, this could put significant economic pressure upon defendants, who obviously will need to advance most of these costs.
  • One of the big questions left open by BSH vs. Electrolux is the precise scope of the concept of “domicile”, including the highly relevant question of whether joint defendants could be sued using the aforesaid regime, if only one of them does in fact have a place of business in the relevant EU Member-State. While earlier case law of the CJEU provides for some guidance in this regard, there will certainly be many attempts to broaden this concept and hopefully some clarifying decisions in the months and years to come.
  • Lastly, the question of enforcement lingers upon the decision by the CJEU. In case that local authorities of a state, which the decision on infringement extends to, but is not the state of the court seised, are needed to enforce the decision, it is likely that there will be significant pushback by that state, inferring jurisdictional/judicial overreach (especially in the case of a non-EU or non-EPA third party state). Where, however, no help from local authorities of a state, to which a decision extends, is needed, such possible “enforcement-gap” should not be of issue.

For patent owners and possible defendants alike, this is a significant development  that has to be taken into account when planning enforcement strategies or considering the corresponding risk of doing business in the EU. While the discussion of possible further implications of this landmark ruling is evolving rapidly, we will provide further updates within due course.

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

EU Commission confirms: “Emmentaler” remains a generic term

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The cheese is not recognized as a protected designation of origin.

On January 23, 2025, the EU Commission ruled that the term “Emmentaler” will not be recognized as a protected designation of origin within the European Union. Instead, it confirmed that the term is a generic name that may be used freely. BOEHMERT & BOEHMERT successfully represented an international dairy consortium in this case, preventing Switzerland from monopolizing the name.

Background: Dispute Over Origin Protection

In March 2024, Switzerland applied for the international registration of the term “Emmentaler” as a protected designation of origin under the Geneva Act of the Lisbon Agreement. The goal was to reserve the name exclusively for cheese produced in the Swiss Emmental region. However, the EU Commission’s Directorate-General for Agriculture and Rural Development rejected the application, arguing that the term is no longer historically or culturally limited to Switzerland.

EU Commission’s Decision

In its Implementing Decision (EU) 2025/107, the EU Commission justified its ruling by stating that “Emmentaler” has been produced in several EU countries since the 19th century. Three protected geographical indications within the EU already include “Emmentaler” or a linguistic variation of the name, referring to cheese produced outside Switzerland:

  • “Allgäuer Emmentaler” (PDO), produced in Germany,
  • “Emmental français est-central” (PGI), produced in France,
  • “Emmental de Savoie” (PGI), also produced in France.

Implications: Legal Certainty and Fair Competition

The EU Commission’s decision ensures legal certainty and prevents market distortions, as the term “Emmentaler” has long been recognized internationally as a type of cheese with characteristic holes—rather than as an indication of Swiss origin.

Dairies in the EU and beyond retain their production freedom. Manufacturers may continue using the name as long as they comply with national production regulations, such as Germany’s Cheese Ordinance. Protecting the term as a PDO would have led to significant adaptation costs and market confusion. In Austria alone, approximately 14,000 tons of Emmentaler are produced annually—more than in Switzerland itself.

By classifying “Emmentaler” as a generic term, the EU Commission also strengthens the position of other countries seeking to defend traditional names against excessive protection claims. Furthermore, the case highlights the importance of strategic legal representation that takes into account both international agreements and European regulations, as well as industry-specific market and consumer perceptions.

B&B Partners obtain patentee-friendly decisions from the Boards of Appeal of the European Patent Office

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Rule 80 EPC – Multiple independent claims for defending a patent in opposition proceedings

Within a short period of time, the Boards of Appeal of the European Patent Office have issued two parallel decisions that were obtained by partners of BOEHMERT & BOEHMERT in favour of our clients. Both decisions were published on 14 October 2024 and in both cases the interesting legal question is whether R. 80 EPC precludes the limited defence of a European patent in opposition proceedings with a set of claims that, instead of an independent claim of the granted patent, contains several independent claims that constitute different limitations of the independent claim of the granted patent.

Appeal T0123/22 – several independent claims limited by different features from the description

In the appeal case T0123/22, patent attorney Dr. Daniel Herrmann succeeded in setting aside the first-instance decision of the Opposition Division, according to which European Patent EP 2822613 B1 was revoked on the basis of R. 80 EPC. The Opposition Division had wrongly assumed that R. 80 EPC precluded a defence of the patent in a limited version by replacing an independent claim of the granted version with several independent claims, each containing different features from the description for the purpose of limitation. This decision was set aside by the Board of Appeal in a decision containing a catchword and remitted to the Opposition Division.

The Board of Appeal first clarified that R. 80 EPC is a purely substantive norm concerning the allowability of an amendment in opposition proceedings. According to the Board, the only relevant factor in assessing the requirement of R. 80 EPC is whether the amendment made is occasioned by a ground for opposition. In this regard, it was necessary to examine whether the amendment should be considered a genuine attempt to address a ground for opposition. In doing so, the board referred to the cited decision T0750/11. The circumstances of the individual case had to be taken into account. In the headnote and reasons, the board emphasised that R. 80 EPC does not provide any general guidelines as to how a patent proprietor may amend claims and, in particular, that it is irrelevant for R. 80 EPC whether the features additionally included in an attacked claim originate from dependent claims or from the description. In the present case, all three independent claims had been limited in relation to the opposed and not further pursued independent claim of the granted version and therefore apparently served to overcome the ground for opposition in the respective claim – and thus also overall. Therefore, R.80 EPC was fulfilled in the present case. According to the board, it is generally legitimate to cover several sub-areas at the same time that, in the opinion of the patent proprietor, are not affected by the ground for opposition. The purpose of R 80 EPC is not to prevent the patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds for opposition.

Appeal case T1191/22 – several independent claims limited by different dependent claims

In the case T1191/22, patent attorney Felix Hermann succeeds in having the first-instance decision set aside, which had rejected an auxiliary request as contrary to R. 80 EPC because, in addition to an amended claim 1, it included further independent claims 12 to 15 based on granted dependent claims.

In line with decision T0123/22, the board corrected the opposition division’s decision by stating that R. 80 EPC is a substantive rule and not a procedural one. Referring to the earlier decision T0937/00, the board ruled that defending the patent with several parallel independent claims is in principle admissible and does not violate R. 80 EPC if the formulation of new independent claims in the opposition proceedings is aimed at overcoming asserted grounds for opposition.

Furthermore, the board stated that procedural aspects of allowability such as the lack of convergence of the independent claims or the effect of the auxiliary request on procedural economy are not relevant for the assessment of allowability under R. 80 EPC. The Board of Appeal decides to set aside the decision of the Opposition Division and to maintain the patent on the basis of the auxiliary request not admitted at first instance.

Extended scope of action for patent proprietors

The two decisions T0123/22 and T1191/22 both emphasise the substantive aspect of R. 80 EPC and distinguish it from procedural issues concerning the admissibility of a request. Both decisions, which were issued by two different boards of appeal, also confirm the principle that R. 80 EPC does not preclude a replacement of an independent claim of a granted patent with several amended independent claims in order to defend the patent in limited form, as long as the amendments can be considered a serious attempt to overcome the asserted grounds for opposition. This basically recognises the right of patent proprietors under R. 80 EPC to cover several sub-areas of the original subject-matter at the same time, i.e. in one and the same request, which from the point of view of the patent proprietors are not affected by the grounds for opposition asserted in the opposition proceedings.

 

Dr. Adrian Steffens, Patentanwalt bei BOEHMERT & BOEHMERT

Patent Applications for AI Technologies at Record High

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The innovation landscape in the field of artificial intelligence (AI) is flourishing. This is the result of a recent analysis by the German Patent and Trade Mark Office (DPMA). Speaking in Munich, Eva Schewior, President of the DPMA, reported that the number of patent applications for Germany has risen by 40 percent over the past five years, particularly in technology classes with a strong connection to AI. The core areas of AI, including special digital computer systems and neural networks, including the associated learning methods, have even seen a tripling of applications since 2019.

This development shows that AI technologies, such as generative tools, are increasingly being integrated into everyday life and are likely to play an important role in many areas of life in the future. In addition to the core areas, the DPMA found a high level of innovation in fields such as image analysis, computer technology, medical technology and transport and vehicle technology.

In terms of patent applications for the German market, US applicants lead with a share of 32.4 percent of all applications published in 2023. Germany follows with 17.1% and Japan with 12.4%. China and the Republic of Korea show the largest increase in publications compared to the previous year.

Inventions related to AI are regularly based on mathematical models implemented as software. Patent protection for these computer-implemented methods is limited in that computer programs as such are not patentable. Instead, patent protection requires that the invention contributes to solving a specific technical problem by technical means. This contribution may, for example, relate to the control of an autonomous vehicle.

BOEHMERT & BOEHMERT has already supported and accompanied many of these AI patent applications. With our experience in the field of AI technology, we are able to advise our clients in a targeted manner and respond specifically to their needs in the dynamic environment of AI innovations.

Trade Mark Misuse in Practice

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To the chagrin of honest entrepreneurs, trade marks are sometimes misused and used against them. The aim of the applicant may be to obtain a blocking position against competitors. Alternatively, the application may be speculative, based on the hope that a company will want to use the mark for its goods or services in the future and will therefore buy or license it from the applicant.

Case Law on Bad Faith Trade Mark Applications

Businesses are not unprotected against such trade mark applications. Case law divides these cases into those with and without intent to injure, under the general heading of bad faith. If, for example, a trade mark application is filed to prevent a competitor from continuing to use the trade mark, bad faith is usually present because of the intention to block and obstruct. Since the Classe E decision, the German Federal Supreme Court (Bundesgerichtshof – BGH) has also assumed that there is an “abusive exploitation of a merely formal legal position” if someone

  • registers a large number of trade marks
  • has no serious intention of using the marks, and
  • the trade marks are essentially hoarded for the purpose of obtaining injunctions and claims for damages against third parties using identical/similar designations (BGH, judgement of 23 November 2000, I ZR 93/98, § 35 – Classe E).

Proof of the subjective elements, i.e. proof of the applicant’s lack of intention to use, is regularly problematic in the practical application of the law.

Abusive Exploitation of a Merely Formal Legal Position

The requirements laid down by the BGH have recently been applied by the regional courts in Stuttgart and Hamburg in several cases. A manufacturer of sports watches, represented by BOEHMERT & BOEHMERT, faced Capella EOOD, a company based in Bulgaria and represented by Mr Erich Auer. Mr Auer is well known in the trade mark scene for having registered thousands of trade marks over the years through various shell companies such as Ivo-Kermatin Ltd, Suebi Ltd and Segimerus Ltd. In the present case, he took action against the watch manufacturer and its European dealers on the basis of one of these many trademarks. The case concerned a sports watch offered under the same name as the trade mark. In response to these warnings, we issued a letter of cease and desist to Capella EOOD on behalf of the watch manufacturer for unauthorised warnings of intellectual property rights. This is because a claim for injunctive relief under trademark law is precluded by the defence of abuse of rights in the case of an application made in bad faith, i.e. it cannot be enforced in the long term.

The Regional Court of Stuttgart had to decide and issued a preliminary injunction against Capella, which we had applied for and which it confirmed on opposition (judgment of 18 October 2023, 32 O 73/23 KfH, not yet final). The difficulty in the proceedings was to establish that the trade mark applicant had no subjective intention to use the trade mark and was acting in bad faith based on the objective circumstances of the case. The following facts indicated that the applicant had never intended to use the trade mark itself in its own business or for third parties on the basis of a consultancy concept: no external marketing efforts were made, no comprehensible business model or trade mark concept could be presented, and the trade mark was transferred back and forth between Erich Auer’s various companies. In addition, the applicant cancelled the majority of its trade marks after the expiry of the official deadline for the payment of fees. All in all, there was every indication that he had hoarded the trade marks essentially for the purpose of obtaining injunctions and damages against third parties using identical or similar designations. This constituted an abuse of the formal legal position of the trade mark proprietor. The Stuttgart Higher Regional Court (Oberlandesgericht) dismissed Capella’s appeal against this decision on the grounds that it was obviously unlikely to succeed under Section 522(2) of the German Code of Civil Procedure (ZPO) (decision of 27 February 2024, 2 U 187/23).

This is not the first decision in which Mr Auer’s business model has been found to be dishonest. Only recently, the General Court of the European Union also found bad faith in one of his trade mark applications – in this case by Copernicus EOOD (General Court, judgment of 17 January 2024, T-650/22 – ATHLET).

Fabio Adinolfi, Rechtsanwalt bei BOEHMERT & BOEHMERT

Radiator grille element infringes Audi brand

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In its judgment of January, 25 (C-334/22), the CJEU clarified that a car manufacturer can prohibit the use of a sign for spare parts if it contains an element that is similar or identical to a trademark.

Audi’s well-known four-rings trademark is registered in the EU for vehicles and spare parts, among other things. A Polish dealer was selling copied radiator grilles intended for older Audi vehicles. The radiator grilles contained an element whose shape is similar or identical to the Audi trademark and is also intended for mounting the four-ring trademark.

In 2017, Audi took action against this dealer in Poland. The aim was to obtain a ban on marketing copied radiator grilles of the aforementioned type. The Polish court referred the case to the CJEU with the request to clarify whether the marketing of replacement car parts at issue (specifically: radiator grilles) constituted “use of a sign in the course of trade” that could impair the functions of the Audi brand. Furthermore, the national court wanted to clarify whether the owner of this trademark can prohibit a third party from such use.

In its judgment, the Court affirms this. It states that in the present case, the radiator grilles did not originate from the trade mark proprietor and had been placed on the market without its consent. The part intended for affixing the Audi emblem was integrated into the radiator grilles for their marketing by the third party. It is therefore visible to the public wishing to purchase such a spare part. This could constitute a factual link between the spare part in question and the owner of the AUDI mark. Therefore, such use could impair the functions of the trademark (including the origin or quality of the goods).

However, the specific legal dispute still has to be decided by the court in Warsaw, which is bound by the legal opinion of the CJEU. The CJEU left it to the Polish court to examine whether the disputed part on the radiator grille is identical or similar to the Audi brand.

Should Audi actually prevail in the proceedings, the practical consequence of the ruling is likely to be that radiator grille manufacturers will in future maintain a significant distance from (automotive) brands when designing corresponding products in order to avoid brand collisions.

Copyright and freedom of use – the Warhol case

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In May 2023, the US Supreme Court surprisingly restricted artistic creativity in favor of broad copyright protection.

This article first explains how the Supreme Court limited the scope of permissible re-use. It then outlines current approaches in German case law regarding the adaptation and transformation of copyrighted works.

The doctrine of fair use in US law

The decision of the US Supreme Court was based on a portrait of the musician Prince that Andy Warhol produced as a silkscreen from a photograph taken by the plaintiff, Lynn Goldsmith. By licensing “Orange Prince” to the media company Condé Nast, the Andy Warhol Foundation had infringed the photographer’s copyrights.

The legal issue was the doctrine of fair use. This is set out in Section 107 of the US Copyright Act. The fair use doctrine is a four-factor test of whether a copyrighted work has been fairly used: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use on the potential market for or value of the copyrighted work.

The Supreme Court looked at the first factor. This factor considers whether the new work is being used for commercial or nonprofit educational purposes, and whether the transformation has added something new, such as an additional purpose or a change in character. Based on these criteria, the court rejected fair use and thus upheld Goldsmith’s claim. The key factor was that Warhol’s work had been used commercially. Furthermore, the modified portrait did not represent something fundamentally different or new. Not every slightly modified copy could enjoy copyright protection, otherwise it would be circumvented and thus undermined.

The court of first instance had accepted fair use on the grounds that Warhol had changed the character of the photograph. This is because Prince appears vulnerable in the photograph, but iconic in the image. The work was therefore immediately identifiable as a “Warhol” work. Supreme Court Justice Kagan’s minority opinion also follows the classic utilitarian approach. She fears that the majority decision will stifle creative progress and undermine creative freedom.

Free use and copyright limitations in German law

In Germany, two approaches to such borderline cases – between exclusivity and freedom of access – are currently conceivable:

First, the approach of the Federal Court of Justice: For adaptations or other modifications of a work, Section 23(1) Act on Copyright and Related Rights (UrhG) provides that the author’s consent is not required only if the newly created work maintains a sufficient distance to the work used. According to the Porsche 911 decision of the Federal Court of Justice, this so-called free use requires that “in view of the uniqueness of the new work, the borrowed personal characteristics of the protected older work fade away”. Fading in this sense occurs when the new work is so distant that the personal characteristics of the old work recede. The use of the older work may only appear as an inspiration for a new, independent work (BGH, judgement of 7 April 2022 – I ZR 222/20, § 43). In some instances, this case law even permits the clear adoption of the older work, provided that this is necessary for the artistic creation.

The Higher Regional Court of Hamburg recently took a different approach: the reproduction of the song “Metall auf Metall” and its transformation into an independent new work by means of sampling falls under the term pastiche within the meaning of Section 51a UrhG and is therefore a legally permissible use (judgement of 28 April 2022 – 5 U 48/05). The Federal Court of Justice stayed the subsequent appeal proceedings (case I ZR 74/22) and referred the question to the European Court of Justice.

Whichever way you look at it, the BGH and OLG Hamburg seem to have internalized the mantra “Cultural creation must build on the earlier work of other authors” more than the US Supreme Court. Over here in Germany, the Warhol case might have ended differently.

 

EPC: Amendments to rules for postal and electronic notification by the EPO

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Amendments to Rules 126(2), 127(2) and 131(2) EPC concern the postal and electronical notification by the European Patent Office (EPO), and the calculation of time periods triggered by a notification

 On 13 October 2022, the Administrative Council adopted changes to Rules 46, 49, 50, 57, 65, 82, 126, 127 and 131 of the Implementing Regulations to the European Patent Convention (CA/D 10/22). The amendments concern, inter alia, Rules 126(2), 127(2) and 131(2) EPC which relate to the notification of documents served by the EPO by postal services and by electronic means, and to the calculation of periods triggered by the notification. New Rules 126(2), 127(2) and 131(2) EPC enter into force on 1 November 2023 and apply to documents served by postal services or electronic means on or after that date.

These amendments remove the 10-day notification fiction according to the current Rules 126(2) EPC and 127(2) EPC, according to which a document is deemed to be served successfully on the tenth day after the date stated on the document, which is taken into account in calculating periods triggered by the notification of communications from the EPO. Instead, new Rules 126(2) and 127(2) EPC provide for a new notification fiction, according to which postal and electronic notification are deemed to occur on the date of the document. The EPO expects that the new notification fiction will result in a simplification for users since it brings the EPC and PCT notification regimes closer together.

Amended Rules 126(2) and 127(2) EPC also govern the burden of proof in exceptional cases in which notification of the documents is in dispute. As before, the EPO retains the obligation to prove the fact and the date of delivery in such instances. If the EPO is unable to prove that a document was delivered to the addressee within seven days of the date it bears, a so-called “safeguard” will be applied, resulting in that a period triggered by the deemed receipt of that document will be extended by the number of days by which these seven days are exceeded.  The general principles governing time-limit extensions set out in Rule 134 EPC will apply to the period recalculated applying this safeguard.

Rule 131(2) EPC has been adapted to the effect that the rule now explicitly refers to the fiction of notification of the documents as the relevant event for the purposes of time limit calculation.

Amended Rules 126(2), 127(2) and 131(2) EPC are intended to take into account the principle of instantaneous notification in the digital world. The EPO mailbox is deemed a reliable service available to all professional representatives and applicants in the EPC contracting states and covering 99% (by volume) of all documents issued by the EPO. For applicants and representatives, new Rules 126(2), 127(2) and 131(2) EPC impose a change in the practice of recording time limits and thus also the training of staff, in particular with regard to the handling of exceptional cases in which notification of the documents is in dispute, even if the latter are unlikely to occur in daily practice.

Important URLs:

https://www.epo.org/law-practice/legal-texts/official-journal/2023/03/a29.html

https://www.epo.org/law-practice/legal-texts/official-journal/2022/11/a101.html

Termination of the Swiss-German Agreement of 1892 – what trademark owners have to consider

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Effective May 31, 2022, Germany has terminated the “Agreement between Switzerland and Germany Concerning the Reciprocal Protection of Patents, Designs and Trademarks” of 1892. For more than 100 years, this bilateral Agreement had provided for facilitations for owners of industrial property rights in the territory of the respective other contracting party. The exact reasons for the termination are not known, but the Agreement had already been criticized for some time as being outdated.

Termination of the Agreement particularly significant for trademark owners

The most important practical relevance of the German-Swiss Agreement was in the field of trademark law and here in considerable simplifications in the proof of genuine use of trademarks in revocation proceedings. Under both German and Swiss trademark law, the requirement of proof of genuine use of a trademark for the registered goods and services aplies five years after registration or after expiration of the opposition period. As a matter of principle, only those acts of use are considered to be relevant which took place in the respective territory – i.e. in Germany in the case of German trademarks and in Switzerland in the case of Swiss trademarks. This principle was modified by the German-Swiss Agreement to the extent that acts of use in the territory of the respective other party were also recognized as a suitable basis for genuine use. Thus, a Swiss trademark could be successfully defended against an application for revocation although it had not been used in Switzerland at all, but only had been used in Germany for the relevant goods and services, and vice versa. This modification of the principle of territoriality ceases to apply with the termination of the German-Swiss Agreement.

Relevance in terms of timing

The termination of the German-Swiss Agreement takes place ex-nunc, i.e. there is no retroactive effect of termination of the Agreement. Although much is still unclear in detail, there are indications that it will still be possible to rely on acts of use in the territory of the other party during the relevant period of the past five years, but only with regard to such acts of use until May 31, 2022. The full relevance of the termination of the Agreement will therefore only unfold after May 31, 2027, when all acts of use in the territory of the other party are outside the five-year period.

Considerations for the trademark strategy

Owners of German or Swiss trademarks who can only show use in the respective other part must prepare themselves for a deterioration of the use situation. It is particularly advisable to check the trademark portfolio for possible new applications for the respective trademarks (as far as permissible from the point of view of repeat applications) in order to maintain trademark protection.