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

Dr. Julian Wernicke, in GRUR Prax 23/2025, discusses statements that violate personal rights in client relationships.

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To what extent are statements that violate personal rights actionable in a client relationship? In a ruling, the Higher Regional Court of Dresden provided important clarifications regarding the assertion of possible injunctive relief claims.

The extent to which such statements are legally actionable is a recurring topic in case law. In a recent ruling dated 8 September 2025, the Dresden Higher Regional Court considered various statements made by a client to their lawyer, providing important clarifications regarding the assertion of possible injunctive relief claims.

In his article ‘Statements within the client relationship’ in GRUR Prax 23/2025, Julian Wernicke of BOEHMERT & BOEHMERT analyses the decision of the Dresden Higher Regional Court. This decision was based on a lawsuit filed by a lawyer who objected to statements made by her client during telephone calls and in a negative online review.

The court found that statements made in the context of a confidential conversation within a client relationship are privileged and cannot therefore be the subject of an injunction. Furthermore, the Dresden Higher Regional Court ruled that the plaintiff was not personally affected by the statements in question, since, despite her position as a partner, she is not identified with the law firm in a way that allows for direct personal attribution.

In his article, Julian Wernicke evaluates the ruling, emphasising that the privilege of confidential client consultations is integral to the legal profession. He also stresses that the question of personal involvement must be carefully examined if statements are not clearly directed at a specific person.

The full article is available in German to registered Beck Online users here.

Prof. Dr. Heinz Goddar and Melanie Müller as co-authors in Les Nouvelles, December 2025, on the potential of the PMAC

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Launching in 2026, the Patent Mediation and Arbitration Centre of the UPC offers confidential, efficient solutions for patent and SEP disputes – a flexible alternative to traditional litigation.

In the article “Potential of the Patent Mediation and Arbitration Centre (PMAC) of the Unified Patent Court (UPC)” in this year’s December issue of the “Journal of the Licensing Executives Society International,” the authors Rebekka Porath (Intellectual Property Fellow Innovation Network Germany), Dr. Peter Camesasca (partner at Camesasca BVBA, Brussels, Belgium), and BOEHMERT & BOEHMERT attorneys Prof. Dr. Heinz Goddar (patent attorney) and Melanie Müller (attorney at law) shed a light on the institutional framework, competence, and procedural potential of the Patent Mediation and Arbitration Centre (PMAC).

This was established as an institutional component with the introduction of the Unified Patent Court (UPC) and is intended to serve as a specialized ADR (Alternative Dispute Resolution) body for patent disputes from 2026 onwards. The PMAC offers mediation and arbitration for European and unitary patents as well as SPCs (Supplementary Protection Certificates). Its aim is to provide efficient, flexible, and confidential proceedings, complementing UPC litigation.

In their article, the authors see particular potential for the PMAC in SEP/FRAND disputes (Standard Essential Patents) following the EU’s withdrawal of the proposed SEP Regulation. The PMAC could fill a gap here by offering a neutral forum for licensing negotiations. However, it lacks mandatory procedures and transparency mechanism envisioned by the SEP regulation. The authors suggest introducing incentives for cooperation and partial disclosure of anonymized outcomes.

Furthermore, the recent decision by the Court of Justice of the European Union (CJEU) in BSH vs. Electrolux and the associated expansion of the jurisdiction of European courts for cross-border patent disputes could increase the attractiveness of the PMAC for global dispute resolution.

Overall, the authors see the PMAC as a new kid on the European patent dispute block – one well worth getting to know, to engage with, and, perhaps in time, to introduce into the family of established international ADR institutions.

Members of the Licensing Executives Society International (LESI) can download the full article here.

Trademark litigation: The non-use defence – Article by Dr S. Engels and Dr J. Wernicke in Trademark Lawyer Magazine 4/2025

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The timing and choice of the most effective and admissible instrument for raising the non-use defence under the specific circumstances are crucial.

In their article “Trademark litigation in Germany: pitfalls in non-use defences”, published in issue 4/2025 of Trademark Lawyer magazine, BOEHMERT & BOEHMERT attorneys at law Dr. Sebastian Engels and Dr. Julian Wernicke highlight the key differences between German and European trade mark law regarding the use requirement and the available non-use defences in litigation.

The two Berlin-based lawyers, who are highly experienced in trade mark law, emphasise the importance of understanding the different rules for registration and enforcement of trade marks in Germany and the EU. In their article, Dr. Sebastian Engels and Dr. Julian Wernicke specifically address:

  • The advantages and risks of filing revocation requests for non-use before the GPTO or EUIPO as a defence strategy in trade mark disputes.
  • The significance of timing and the choice of the right instrument for the non-use defence – such as objection, revocation request, or counterclaim.
  • Practical guidance for trade mark owners and defendants on how to respond strategically to the use requirement and which pitfalls may arise if the defence is raised too late.
  • The differences in enforcing and defending German trade marks and EU trade marks, especially regarding the five-year grace period for use and the impact on ongoing court proceedings.

The full article is available for free on the Trademark Lawyer magazine website. You can also download the PDF of the article “Trademark litigation in Germany: pitfalls in non-use defences”.

Dr. Eckhard Ratjen, Attorney at Law at BOEHMERT & BOEHMERT

Dr. Eckhard Ratjen in GRUR Prax 22/2025 on misleading advertising regarding the reporting requirement for online purchases of precious metals

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Advertising by a coin dealer stating that “Orders over € 2,000 are not subject to reporting requirements with us!” is a misleading commercial practice under Section 5 of the German Unfair Competition Act (UWG). In future, advertising companies will not be able to rely on the blanket assumption that expressed legal opinions are always excluded from misleading advertising tests as expressions of opinion.

In his article  „Irreführende Werbung zur Meldepflicht bei Online-Edelmetallkäufen“ (Misleading advertising regarding the reporting requirement for online precious metal purchases) in GRUR Prax 22/2025, BOEHMERT & BOEHMERT partner and attorney at law Dr. Eckhard Ratjen explains the ruling of the Higher Regional Court of Karlsruhe of September 19, 2025 (14 U 72/25) against an online coin dealer whose advertising with the statement “Orders over €2,000 are not subject to reporting requirements with us!” constituted a misleading commercial practice under Section 5 of the German Unfair Competition Act (UWG).

According to the court, the online coin dealer’s statement gave the impression that there was a legal reporting obligation in the stationary precious metals trade that did not apply to online trading. In fact, the Money Laundering Act (Section 4 V No. 1 lit. b GwG) only provides for identification and risk management obligations; there is no general reporting obligation. The reporting obligation under Section 43 I GwG only applies in cases of concrete suspicion. The court clarified that advertising statements on the legal situation could be classified as factual claims if they suggested a binding regulation.

In his article, Dr. Ratjen evaluates the decision of the Higher Regional Court of Karlsruhe and recommends in practice that advertising statements on legal issues must be complete and accurate in terms of content, as simplistic or selective representations can quickly be considered misleading or sensationalist and thus, under certain circumstances, classified as factual claims. In future, advertising companies should no longer rely on the fact that legal opinions expressed are always excluded from misleading advertising tests as expressions of opinion.

The full article in German by Dr. Eckhard Ratjen is available for download to registered users of GRUR-Prax here.

Dr. Ute Kilger, Patent Attorney at BOEHMERT & BOEHMERT

Challenges for the bio­pharma­ceutical sector posed by US policy – article by Dr. Ute Kilger in Euro­pean Bio­tech­nology

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Article by Dr. Ute Kilger on the pressure exerted by the US government on the bio­pharma­ceutical industry and the consequences.

In the fall 2025 issue of European Biotechnology, BOEHMERT & BOEHMERT partner and patent attorney Dr. Ute Kilger explains the impact of US policy on the pharmaceutical and biotech industries in her article “Challenges for the biopharmaceutical sector posed by US policy”.

Dr. Kilger states that both the US and Europe are facing considerable challenges. Measures taken by the US government, such as the Inflation Reduction Act (IRA), the Orange Book initiative, the planned Most Favored Nation pricing regulation, and the proposed Trump-Lutnick patent tax, could hinder innovation and make investment in small molecule drugs unattractive.

In doing so, US policy favors generic drug entry and puts innovative companies under pressure. European companies are also affected, especially those that are heavily dependent on the US market. The EU is pursuing similar trends but has toned down some proposals following criticism from industry. If Europe acts decisively, it could benefit from the US measures and overtake the US in terms of innovative strength, concludes Dr. Kilger.

The full article by Dr. Kilger in English can be found in the fall issue of European Technology starting on page 33 and is available online here.

 

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

In GRUR Prax 19/2025, Dr. Böckenholt discusses two recent decisions on the concept of competitors in competition law

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Definition of the concept of competitors. Contexts that lead to diverging interpretations of the concept of competitors. Detailed practical advice.

In his article „Mitbewerber durch funktionale Substitution: echte Divergenzen zwischen EuGH und BGH oder Einzelfälle“ (‘Competitors through functional substitution: genuine divergences between the Court of Justice of the European Union (CJEU) and the Federal Court of Justice (BGH) or individual cases’) in GRUR Prax, issue 19/2025, BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt asks when a (sufficiently close) competitive relationship exists between two companies to be eligible for claims under the UWG (German Unfair Competition Act). In this context, the term ‘competitor’ must be defined under German and European law and it must be determined how broadly or narrowly this definition should be interpreted.

Against this background, Dr. Böckenholt compares a decision of the Court of Justice of the European Union (CJEU) of 8 May 2025 (GRUR 2025, 1001 – HUK-COBURG/Check24 = GRUR-Prax 2025, 367 [Baronikians]) with the ruling of the Federal Court of Justice (BGH) of 27 March 2025 (GRUR 2025, 589 – Fluggastrechteportal = GRUR-Prax 2025, 469 [Bärenfänger]). Both decisions deal with the status of competitors in digital contexts, but come to different conclusions: while the CJEU requires structural similarity of services, the Federal Court of Justice considers functional substitutability sufficient to establish a competitive relationship.

But what contexts lead to such divergent interpretations of the concept of competition? And what does this mean for legal advice? Dr. Böckenholt examines these questions in detail in his article and provides readers with comprehensive practical guidance.

The full article by Dr Rudolf Böckenholt is available for download in German to registered users of GRUR-Prax here.

 

Interview with Dr. Matthias Hofmann and Dr. Jakob Valvoda in the Handelsblatt Supplement Rechtsguide 2025

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Artificial Intelligence in IP Law: Opportunities, Challenges and Legal Perspectives

In the newly published Smart Rechtsguide 2025, a supplement to the Handelsblatt dated 25 September 2025, BOEHMERT & BOEHMERT partners and patent attorneys Dr. Matthias Hofmann and Dr. Jakob Valvoda discuss the growing relevance of artificial intelligence (AI) in the field of intellectual property law.

The interview highlights how AI not only drives technical innovation but also raises new legal questions – for example, regarding the patentability of AI-generated inventions, the attribution of developer contributions, or the adaptation of existing IP rights to automated processes. The two experts outline how law firms and companies can strategically prepare for these developments to ensure legally sound and future-oriented protection of innovation.

Particular attention is given to the question of how existing legal frameworks can keep pace with the dynamic evolution of AI technologies. Physicist Dr. Matthias Hofmann and computer scientist Dr. Jakob Valvoda emphasize the importance of interdisciplinary legal advice that combines technological expertise with legal precision.

The full interview is available on page 5 of the Smart Rechtsguide 2025. The publication is in German and can be accessed online or downloaded as a PDF.

Dr. Daniel Herr­mann and Dr. Michael Rüberg analyze Germany’s IP frame­work in The Legal 500: IP Compara­tive Guide

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Legal Landscapes: Germany – Intellectual Property

In the latest country report “Legal Landscapes: Germany – Intellectual Property,” published as part of the renowned Comparative Guides by The Legal 500, patent attorney Dr. Daniel Herrmann and attorney at law Dr. Michael Rüberg of BOEHMERT & BOEHMERT provide a concise overview of recent developments and the current legal framework governing intellectual property in Germany. The article highlights the key areas of protection – including patents, trademarks, designs, and copyrights – and emphasizes Germany’s harmonized and efficient enforcement mechanisms.

Unitary Patent and UPC: New momentum for European patent protection

A central focus of the article is the introduction of the Unitary Patent and the Unified Patent Court (UPC) in 2023. These innovations mark a milestone in the cross-border enforcement of technical IP rights within Europe. Companies benefit from centralized filing and uniform enforcement across participating EU member states, offering significant advantages especially for internationally operating businesses.

Germany as a key jurisdiction for IP law and innovation

Germany’s national patent system remains attractive and highly relevant. Following a temporary decline during the pandemic, the number of patent filings is rising again—particularly in emerging technology sectors such as artificial intelligence. Specialized courts and efficient procedures continue to position Germany as one of the leading jurisdictions for IP litigation in Europe. The German IP framework is characterized by a close alignment between national law and EU regulations, ensuring a high level of legal certainty and innovation-friendliness. According to the authors, ongoing reforms are addressing current challenges such as digitalization and the use of AI, helping to future-proof the system.

The full article by Dr. Daniel Herrmann and Dr. Michael Rüberg is available in English as a PDF download and on The Legal 500 website.

About The Legal 500: Comparative Guide

The Comparative Guides have been an integral part of The Legal 500 since 2016 and now cover over 50 areas of law in more than 80 jurisdictions. They are considered a valuable tool for in-house counsel.

Patents and trade secrets as comple­men­tary protection mechanisms – article by Prof. Dr. Goddar and M. Müller as co-authors in Les Nouvelles 09/2025

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Protecting innovations through patents and trade secrets, international perspectives, generative AI as a challenge, and “trusted depository” as an innovative solution

In Volume VIII, No. 3, September 2025, of les Nouvelles, the magazine of the Licensing Executives Society International (LESI), BOEHMERT & BOEHMERT attorneys Prof. Dr. Heinz Goddar (patent attorney) and Melanie Müller (attorney at law) are co-authors of the article “Patents and trade secrets as complementary protection mechanisms.”
The article is based on a workshop conducted by the authors at the LESI Conference 2025 in Singapore. Other co-authors are, in alphabetical order, Peter Camesasca, DuckSoon Chang, Joo Sup Kim, Ralph Nack, Ichiro Nakatomi, and Jonathan Porath.

The article highlights the strategic combination of patents and trade secrets as complementary protection mechanisms for innovations. While patents grant exclusive rights of use for a limited period of time through disclosure, trade secrets offer potentially unlimited protection for confidential information – provided that secrecy is actively maintained. In practice, both instruments are often used together: patents protect the core technology, while know-how for implementation, optimization processes, or training data are treated as trade secrets.

In addition, the authors highlight different approaches in the European Union, Germany, Japan, and Korea, and identify the challenges posed by generative AI as a central issue. As an innovative solution, the authors propose a “trusted depository” for trade secrets – a trustworthy, blockchain-based system for the secure, tamper-proof storage of confidential information – but also discuss the legal risks that may be associated with its use.

In conclusion, the authors emphasize that trade secrets play an increasingly important role in protecting innovation, especially in areas where formal property rights do not apply. The combination of patents and secrecy represents an effective but complex protection model that brings with it new legal and strategic challenges. A trusted depository could help overcome these challenges while maintaining the balance between protection and competition.

Members of the Licensing Executives Society International (LESI) can download the full article here.

Dr. Florian Schwab, Rechtsanwalt bei BOEHMERT & BOEHMERT

Dr. Florian Schwab in WTR Daily on case T-76/24 – no likelihood of confusion between PRESIDENT marks

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In the online magazine “World Trademark Review Daily”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Florian Schwab sheds light on the decision of the General Court of the European Union (T-76/24) in the case Benschop v. EUIPO of June 4, 2025.

In long-running proceedings the General Court finally annulled the EUIPO Board of Appeal’s decision, rejecting the opposition against the EU figurative mark ALWAYS RUN 4PRESIDENT by Seven Bell Group’s earlier figurative mark PRESIDENT’S.

Despite the goods and services (including purses, clothing, advertising) being identical or similar, the court found no likelihood of confusion due to the low degree of visual, phonetic, and conceptual similarity between the marks. The court emphasized that the enhanced distinctiveness of the earlier mark was insufficient to offset these differences. Moreover, the common term “President” would be understood by the relevant public in the EU as being part of the basic English vocabulary and being perceived as laudatory for the relevant goods and services. According to the court, this would lead to the additional elements in the contested mark conveying a below average only conceptual similarity.

 

 

The detailed article by Dr. Schwab entitled “General Court annuls Board of Appeal decision in PRESIDENT dispute” was published on June 16, 2025 and is available online for registered users of WTR Daily here.