Publications Archive - BOEHMERT & BOEHMERT

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

26. January 2023/in Publications

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.

Fabio Adinolfi discusses ECJ judgment in GRUR-Prax on the use of a 3D trademark preserving rights despite the addition of further elements

11. January 2023/in Publications Trade Marks

In issue 23/2022 of “GRUR-Prax – im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOHEMERT attorney Fabio Adinolfi discusses the judgment T-273/21 of the ECJ of 26.10.2022 on the right-preserving use of a 3D trademark.

With its judgment, the court overturned the previous decisions of the Cancellation Division and the Board of Appeal of the EUIPO. It recognized the registered shape of the used shape of a baby bottle for sweets without deviations. Also, the application of colored word marks and other figurative and word elements on the surface of the bottle did not interfere with the recognizability by consumers of the 3D mark, which was registered in Class 30 in 1999 without color.

Read the full discussion of the ECJ ruling by Fabio Adinolfi in issue 23/2022 of GRUR-Praxis. Registered users of Beck-Online can download the article in German here.

Interview with leading patent practitioner Prof. Dr. Heinz Goddar in IAM’s Global Leaders 2023

15. December 2022/in Publications

In the current issue Global Leaders 2023 of IAM, the experienced practitioner and BOEHMERT & BOEHMERT partner Prof. Dr. Heinz Goddar is asked for an interview as one of the leaders of the patent profession.

In it, he answers questions about the development of the German patent environment in the coming years, among other things, and reports on the influence of his academic teaching activities on the practice of his profession.

IAM’s annual Global Leaders medium interviews the leading experts in the field of patent law on today’s most pressing patent issues. For the 2023 edition, 33 luminaries were interviewed who belong to the Gold category in IAM Patent 1000. This directory annually identifies the world’s top law firms and individuals in patent law practice areas.

The interview in German, as an excerpt from the 2023 edition of IAM’s Global Leaders, is available for download as a PDF here. The entire publication is available at iam-media.

“No overall assessment of unrelated evidence in trademark law” – Dr. Rudolf Böckenholt on the decision of the ECJ in a new GRUR-Prax article

9. December 2022/in Publications Trade Marks

In issue 23/2022 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 ECJ of 12.10.2022 (T-752/21, GRUR-RS 2022, 26854) on the overall assessment of evidence in the context of proof of use.

The court held that the requirement of genuine use of a mark is not intended to assess commercial success, nor to control the economic strategy of a company. In considering whether use of a mark was genuine within the meaning of the statute, a comprehensive assessment of the concrete and objective evidence on file must be made.

The evidence could be subject to an interaction and be evaluated in an overall view, but only as far as this was objectively and concretely possible without mere probabilities or presumptions.

Evidence that is unrelated to each other cannot be evaluated together.

Dr. Böckenholts articel in German is available in the printed edition of GRUR-Prax 23/2022 or for subscribers of Beck-Online here.

Dr. Eckhard Ratjen in the “JUVE Handbook of Commercial Law Firms 2022/23” on the reform of the Unfair Competition Act and the weakening of the flying venue rule

8. November 2022/in Publications

Until the UWG reform came into force in December 2020, it was possible for companies to bring Internet-related competition infringements before a freely chosen regional court. This option – called “flying jurisdiction” – was significantly restricted with the reform of the Act to Strengthen Fair Competition and the newly introduced §14 Abs. 2 S. 3 Nr. 1 UWG.
But what scenarios result from this decision? How should companies decide in the future if they intend to pursue Internet-related competition violations in court?

BOEHMERT & BOEHMERT partner and attorney Dr. Eckhard Ratjen provides answers to these questions in his article “UWG-Reform: Was die Abschwächung des fliegenden Gerichtsstands für Unternehmen bedeutet” (UWG-Reform: What the weakening of the flying jurisdiction means for companies), which was recently published in the JUVE Handbook of Commercial Law Firms 2022/23.
In addition to a review of the decision-making practice to date, Eckhard Ratjen points out the consequences that companies will have to reckon with from now on, also due to the lack of expertise of some courts of instance and gives valuable tips for practice.

The complete article by Dr. Ratjen in German is available for download as a PDF here.

Fabio Adinolfi in WTR Daily on an CJEU decision on the jurisdiction of EU trademark courts for counterclaims

31. October 2022/in Publications Trade Marks

In his article “CJEU: EU trademark courts keep jurisdiction for counterclaims even if main action has been withdrawn” on the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney at law Fabio Adinolfi discusses a decision of the Court of Justice of the European Union (CJEU) in case C-256/21 of October 13, 2022, KP v. TV.

In it, the court clarifies that an EU trademark court still has jurisdiction to rule on the validity of a trademark in the context of a counterclaim even if the infringement action has been withdrawn.

The decision was issued in the context of a reference for a preliminary ruling from the Higher Regional Court of Munich and will avoid unnecessary proceedings with the risk of contradictory decisions in the future.

Registered users of WTR Daily can access the full article in English online here!

Dr. Rudolf Böckenholt on disguised advertising and surreptitious advertising in the current edition of the Münchener Anwaltshandbuch Gewerblicher Rechtsschutz

29. October 2022/in Publications Unfair Competition

In the now 6th edition, BOEHMERT & BOEHMERT partner and attorney Dr. Rudolf Böckenholt discusses in his article “Tarnung des kommerziellen Zwecks geschäftlicher Handlungen” (Camouflaging the commercial purpose of business acts) the fundamentals and characteristics of the prohibition of camouflaged advertising and surreptitious advertising in the Münchener Anwaltshandbuch Gewerblicher Rechtsschutz.

The prohibition of camouflaging the commercial purpose of business acts is dealt with in terms of constitutional law, competition law as well as press and media law, in particular with regard to advertising in editorial form and statements by supposedly neutral third parties in scientific publications, product tests and rankings. Particular emphasis is placed on the evaluation of influencer marketing.

Dr. Böckenholt’s article can be found in the printed edition of the Münchener Anwaltshandbuch Gewerblicher Rechtsschutz under §21 on pages 697-724.

Felix Hermann in „The Patent Lawyer” on the EPO’s new guidelines for examination at the EPO and their implications on the examination procedure for patent applicants

20. October 2022/in Publications Patents and Utility Models

In 2018, the European Patent Office (EPO) began revising section F.IV.4 of the EPO Guidelines for Examination related to clarity and interpretation of claims. The focus of the amendments was on the adaption of the description of patent applications to the (amended and allowable) claims required for the grant of European patent applications. These new guidelines, and their imposed legal risks and increase on the work and costs for applicants have led to an ongoing debate between the EPO and the user community.

In the September/October 2022 issue of “The Patent Lawyer”, BOEHMERT & BOEHMERT partner and patent attorney Felix Hermann provides a comprehensive insight into the discussion as well as the legal issues involved. In addition, he highlights the impact of the revised EPO Guidelines for Examination 2022 on the EPO’s examination of European patent applications.

The article by Felix Hermann is available here on page 11 of the download PDF.

Dr. Florian Schwab discusses European Court ruling on long-running GUGLER case in WTR Daily

5. October 2022/in Publications Trade Marks

In the online portal of the trade journal World Trademark Review, Boehmert & Boehmert partner and attorney Dr. Florian Schwab reports on the dismissal of Gugler France’s action against the European Union Intellectual Property Office (EUIPO) for cancellation of the GUGLER trademark due to bad faith filing before the General Court (GC).
The judgment of July 13, 2022, puts a (temporary) end to the long-standing legal dispute between the parties Gugler France and Gugler GmbH.

Dr. Florian Schwab concludes that in the decision (Case T-147/21), the court applied the dazzling concept of bad faith in the application for an EU trademark in the context of former business partners and quite appropriately denied its existence based on the specific circumstances.

Read the entire article. This article previously appeared on WTR Daily (part of World Trademark Review) on August 10, 2022. For more information, please visit: www.worldtrademarkreview.com.

“Trademark Law Aspects of Real Estate Business Law” – Article by Dr. Rudolf Böckenholt in the multidisciplinary “Handbuch Immobilienwirtschaftsrecht”

13. September 2022/in Publications Trade Marks

In the first edition of the “Handbuch Immobilienwirtschaftsrecht”, published in 2022, BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt discusses trademark aspects of real estate business law.

This concerns protection concepts, utilization and exploitation concepts, transfer of rights, infringement claims and expiration of protection of trademarks and business designations in the context of the real estate industry, from planning to construction to management and exploitation of real estate projects.

Das “Handbuch Immobilienwirtschaftsrecht” covers the entire life cycle of a real estate project, starting with project organization, through acquisition, utilization, operation and real estate financing, to real estate capital market law and exploitation, in each case taking into account the framework of civil and public law. The Handbook of Real Estate Business Law is edited by Guido Meyer, lawyer and head of the legal department of a real estate business in Düsseldorf. It unites as authors scientists and practitioners in a cross-disciplinary new standard work.