Dr. Rudolf Böckenholt comments on the ruling of the Berlin Regional Court on the subsidization of a cultural magazine in GRUR-Prax 11/2023

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A cultural magazine published by a sovereign body may not be subsidized without a sufficient basis for authorization (Berlin Regional Court judgment, February 23, 2023, 52 O 64/22).

In the issue 11 /June, 7, 2023 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis Immaterialgüter- und Wettbewerbsrecht” BOEHMERT & BOEHMERT partner and attorney-at-law Dr. Rudolf Böckenholt explains a hotly debated decision of the Berlin Regional Court of February 23, 2023 (52 O 64/22, GRUR-RS 2023, 4645) on the question of whether the cultural magazine “Sinn und Form”, which is published and distributed by the Berlin Academy of the Arts, may be subsidized in order to cover its costs.

In the absence of a corresponding basis for authorization, the Berlin Regional Court answered this question in the negative and prohibited the Akademie der Künste from continuing to pay the cultural magazine cover contributions. The lawsuit was brought by the competitor “Lettre International,” which felt that these payments distorted competition. Without sufficient legal authority to engage in press activities at all and in a specific area, a sovereign body violates the requirement that the press be independent of the state and thus unfairly interferes with otherwise free competition.

Fabio Adinolfi comments on ECJ judg­ment T-423/21 on the question of like­lihood of confu­sion between two trade marks registered for fish products in GRUR-Prax

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In issue 9/2023 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht, Praxis im Immaterialgüter- und Wettbewerbsrecht” BOEHMERT & BOEHMERT attorney at law Fabio Adinolfi discusses the ECJ judgment T-423/21 of 14.09.2022 on the likelihood of confusion of word/figurative marks.

In this judgment, the court follows the decisions of the lower instances and confirms the likelihood of confusion of two trademarks registered for fish products. A stylized fish as the dominant image in the younger mark was not found to be distinctive.

Attorney at law Fabio Adinolfi welcomes the ECJ ruling, as it puts a stop to the popular strategy of adding a figurative element to word marks in order to prevent a possible likelihood of confusion with third-party marks.

According to Fabio Adinolfi, figurative elements are only distinctive and suitable for avoiding collisions if they have no relation to the own goods and services sought.

Read the complete discussion of the ECJ judgment by Fabio Adinolfi in german language in the issue 09/2023 of GRUR-Praxis! Registered users of Beck-Online can download it here.

“Digital patents are worth their weight in gold” – article by Dr. Felix Hermann and Dr. Daniel Herrmann in the magazine “Der Mittelstand”

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In the age of IoT (Internet of Things), AI (Artificial Intelligence) and Industry 4.0, even medium-sized companies cannot avoid corresponding digital innovations. The protection of these innovations should not be neglected, is the advice of BOEHMERT & BOEHMERT partners and patent attorneys Felix Hermann (Munich) and Dr. Daniel Herrmann (Frankfurt a. Main) in their article for the magazine “Der Mittelstand”. After all, with digital solutions developed in-house, SME can also create new corporate values and growth for the company.

It is true that the patenting of software-based innovations – and these are mostly what is at issue here – is a challenge due to strict regulations for computer-implemented inventions in European and German patent law. However, if the software is used in the context of solving a technical task in a technical field, it can be protected by patents. In this case, the software makes a technical contribution and thus acquires the “technical character” necessary for patenting.

The complete article in German can be read in “Der Mittelstand”, issue 2/2023, on page 59. The magazine is available for download as a PDF here.

And gone is the trade­mark protection – Fabio Adinolfi with guest article on the cancella­tion of the word mark Flip-Flop in Marken­artikel 3/23

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That inactivity can cost trademark protection is shown by the latest example of the German trademark Flip-Flop. The supplier of the light and airy footwear has now had to pay for its inaction in defending its own trademark protection rights by losing them. The Zweibrücken Higher Regional Court has ruled that the word mark, which has been registered in the trademark register since 1997, is subject to cancellation (Decision dated 02.03.2022 – 4 U 63/21). The designation “flip-flop” does not convey any indication of origin with regard to a specific company, but rather designates a type of footwear per se in linguistic usage.

In his guest article in Markenartikel 3/23, Fabio Adinolfi, attorney at law at BOEHMERT & BOEHMERT, analyzes the factors that led to the cancellation of the registered word mark, describes how this could have been prevented, and provides tips for trademark owners who could face a similar fate.

Read more in the print edition of the German magazine Markenartikel 3/23, which can be ordered here.

Dr. Florian Schwab analy­ses and comments on ECJ leading decision on design protec­tion in WTR Daily

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Papierfabriek Doetinchem BV vs Sprick GmbH Bielefelder Papier und Wellpappenwerk & Co (Case C 684/21), ECJ Judgment of 2 March 2023

The Court of Justice of the European Union, in its judgment in the long-standing legal dispute between Sprick GmbH and the competitor Papierfabriek Doetinchem, has repeatedly commented on practice-relevant questions of the barriers to design protection in the context of the reference for a preliminary ruling by the Düsseldorf Higher Regional Court:

  1. When assessing the technical functionality of a design, how should the fact that the owner of the design in question has numerous alternative designs be dealt with?
  2. Is it to be taken into account for the exclusion of design protection that a registered design allows for a multi-coloured appearance, but this colour design does not result from the registration?

In his article in WTR Daily, Dr. Florian Schwab concludes that, as in its leading decision DOCERAM (judgment of 8 March 2018, C-395/16), the ECJ tends towards a rather broader interpretation of the exclusion clause. Although it is relevant for the determination whether the holder of the contested registered Community design has a large number of alternative designs, this circumstance is not decisive. In any case, the potential multicolour design of the product was not to be taken into account if this was not apparent from the registration of the design.

The article by Dr. Florian Schwab is available for download as a pdf here. This article first appeared in WTR Daily, part of World Trademark Review, in March 2023. For further information, please go to www.worldtrademarkreview.com.

Interview with Dr. Michael Rüberg and Dr. Markus Engel­hard in the SMART Legal Guide supple­ment of the news­paper “Die Welt”

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Opportunities and risks of the European Unitary Patent System

With the entry into force of the new European Unitary Patent System, it is possible to obtain patent protection in up to 25 EU-member states with a single application. This is an immense simplification for patent protection in the EU area, but one that also presents certain stumbling blocks that companies and patent owners should keep in mind.

In the article “New Unitary Patent System – Correctly Weighing Opportunities and Risks”, attorney at law Dr. Michael Rüberg and patent attorney Dr. Markus Engelhard – two of BOEHMERT & BOEHMERT’s UPC experts – raise awareness of this topic in an interview. In addition, they provide insight into other questions that companies should focus on when the Unified Patent Court starts its work.

The interview with Dr Michael Rüberg and Dr. Markus Engelhard, publishes on 21 March 2023, is available for download in German as a PDF here. You can find the complete edition of the SMART Legal Guide here.

“BioNTech goes – what does Germany do?” article by Dr. Ute Kilger and Elmar Jehn in the maga­zine “Euro­pean Bio­tech­nolo­gy”

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BioNTech, the superstar of mRNA research, announces its strategic partnership with the British government at the beginning of January 2023 and with it the establishment of a regional headquarters for the company in London for the development and application of personalised mRNA therapies and vaccines against cancer.

A step that raises questions about Germany as a research location. The framework conditions for such projects seem to be more attractive elsewhere – shouldn’t this be a wake-up call for the German biotech industry?

In their article “BioNTech goeas – what does Germany do?” in the spring issue of the trade magazine “European Biotechnology”, BOEHMERT & BOEHMERT partner and patent attorney Dr. Ute Kilger and Elmar Jehn, partner at Global Nation Consulting, analyse the German response to the BioN-Tech decision and attest to the fact that politics and industry representatives are generally too defensive in international competition.
While politicians have to make the framework conditions more efficient and research-friendly, the biotech industry itself has to represent its interests more clearly. What is needed is greater self-confidence in view of the immense contribution of research-based companies to the well-being of people and the economy. What is needed is a political and media offensive that focuses on the achievements of biotech and at the same time conveys understanding and knowledge for the requirements of a successful research future.
BioNTech’s decision shows that others in the industry must exert all the more influence on German politics to push forward legislative projects for faster procedures for the approval of factories, medicines and research projects.

The article of Dr. Ute Kilger and Elmar Jehn is available in English here on page 12 of the e-Journal of European Biotechnology.

New Commentary “Ingerl/Rohnke/­Nordemann – Markengesetz: MarkenG” 2023 in fourth edition with sub­stantial partici­pation of BOEHMERT & BOEH­MERT Attorneys at Law

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In the recently published commentary “Ingerl/Rohnke/Nordemann – Markengesetz: MarkenG” in its fourth edition, no less than five BOEHMERT & BOEHMERT partners and attorneys-at-law can be found in the team of 14 authors. In addition to Dr. Andreas Dustmann, LL.M., Dr. Sebastian Engels, Dr. Ludwig Kouker and Dr. Volker-Schmitz-Fohrmann, Dr. Martin Wirtz also comments in the newly revised standard work.

The commentary, which is aimed at lawyers and patent attorneys, as well as companies and courts, sets high quality standards due to its precise and well-founded argumentation. It deals trademark related decisions of national as well as European courts.

The commentary “Ingerl/Rohnke/Nordemann – Markengesetz: MarkenG” is published by C.H. Beck in German language and can be ordered from the online bookstore beck-shop.de.

Publication of the Sedona Guidelines with co-author Dr. Michael Rüberg

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Publication of the Sedona Guidelines for the Efficient Resolution of Disputes before the upcoming Unitary Patent Court with contributions of BOEHMERT & BOEHMERT partner Dr. Michael Rüberg

BOEHMERT & BOEHMERT is pleased to announce that its partner and co-head of the firm’s legal patent litigation group, Dr. Michael Rüberg, has contributed to the Sedona Guidelines for the Efficient Resolution of Disputes before the upcoming Unitary Patent Court (UPC).

The Sedona Conference Working Group Series was established to pursue in-depth study of issues in the areas of, inter alia, intellectual property rights, with the goal of producing high-quality, nonpartisan commentary and guidance of immediate, practical benefit to the bench and bar. It is widely recognized in the industry as one of the leading commentaries in its field.

Dr. Michael Rüberg has been a longstanding member in the Sedona Conference Working Group Series, including Working Group 10 on Patent Litigation Best Practices, which has published the aforesaid Guidelines on the UPC.

The publication is aimed at patent owners, defendants, practitioners and judges who may be involved in future UPC proceedings. The UPC, which is currently scheduled to begin operations in June 2023, will allow for more cost-effective litigation. However, there is still uncertainty about the future procedural practice of the court. Judges and practitioners are therefore advised to consider not only numerous new provisions and rules, but also existing case law under the current European patent regimes. Only in this way they will be able to determine how disputes can be resolved efficiently, fairly and equitably.

The Guidelines have been open to public commentary and, once fully published, will be available for download to registered users here.

Dr. Rudolf Böckenholt comments in GRUR-Prax judgment on the processing of payments in the event of abusive warnings

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In issue 3/2023 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht/Praxis im Immaterialgüter- und Wettbewerbsrecht” BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt discusses a judgment of the Higher Regional Court of Cologne of December 9, 2022 (6 U 46/22, GRUR-RS 2022, 36629) on the question of the effects of an abusive cease-and-desist warning on payments made in connection with a contractual cease-and-desist declaration. The answer: none, as long as the person issuing the warning notice cannot be proven to have committed fraudulent misrepresentation or intent to cause damage.

The article in German by Dr. Rudolf Böckenholt can be found in the printed edition of GRUR-Prax 03/2023. Subscribers to Beck-Online can view it online.

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