Dr Florian Schwab discusses in WTR Daily a recent judgement of the CJEU in the dispute about the protectability of the word/figurative mark “achtung!”

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On the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr Florian Schwab reports on a decision of the Court of Justice of the European Union according to which the EU part of the international registration of the word/figurative mark “achtung!” was refused protection.

The CJEU thereby confirmed the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO), which had already rejected international protection of the trademark “achtung!” in 2019 due to a lack of distinctive character. 

Dr Schwab summarizes the judgment as follows:
“The decision of the Court of Justice (ECJ) confirms the view of the previous instances that for the Union trademark part, an international registration of the word/figurative mark Achtung! of a German advertising agency for goods and services in various classes is devoid of distinctive character. The mark will be perceived by the German-speaking public only as an ordinary advertising message and not as an indication of commercial origin. Therefore, the finding of the lower courts that the mark is purely descriptive is in itself incorrect and irrelevant to the decision on the merits. Moreover, earlier conflicting decisions of national offices or even of the EUIPO on the identical sign do not preclude this”. 

The complete article in English is available here as a PDF document for download!

Silke Freund and Dr. Sebastian Engels with article in the “International Comparative Legal Guide – Copyright Laws and Regulations 2021”

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The Global Legal Group has published a new edition of the “International Comparative Legal Guide” on copyright law. The guide is aimed specifically at corporate lawyers and provides comprehensive information on copyright laws and regulations for 18 countries from Australia to Zimbabwe. 

BOEHMERT & BOEHMERT lawyers Silke Freund and Dr. Sebastian Engels have taken over the part for Germany. In their article entitled “Germany: Copyright Laws and Regulations 2021”, they provide an insight into the legal situation in Germany and deal in seven chapters with general questions on copyright subsistence, ownership and exploitation of rights, owner and enforcement rights as well as criminal offences and current developments. 

The complete article is available online here and can also be downloaded as PDF.

Handbuch Immobilienwirtschaftsrecht with contribution by Dr. Rudolf Böckenholt on the subject of protection concepts and exploitation of the name of a property

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Together with his research assistant, Ms. Melanie Müller, Dr. Rudolf Böckenholt takes the opportunity to contribute his expertise in the field of trademark law in the area of real estate business law, as far as the protection of the name of a property or a real estate project is concerned and the possibilities of exploiting this protection. The article is part of an interdisciplinary handbook published by C.H. Beck on all legal aspects of the real estate industry.

The publication of the work is planned for early summer 2021.

Foreign tax consultancy firms which offer all the services of a tax consultancy firm in Germany without being entered in the register of tax consultants cannot invoke the freedom of establishment and the freedom to provide services but act in an anti-competitive manner – Dr. Rudolf Böckenholt discusses a ruling by the Mannheim Regional Court in his latest GRUR-Prax article.

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In issue 8/2020 (page 168), Dr Rudolf Böckenholt discusses a decision of the Hamm Higher Regional Court (OLG) according to which barriers to admission for tax assistance do not infringe the fundamental freedoms of freedom of establishment and freedom to provide services in the EU because they are justified by overriding general interests and the targeted public requires high-quality advice from representatives entered on the list of qualified advisers within the confusing and difficult to understand German tax law. A foreign company with advisers qualified under the law of another Member State does not meet those conditions. If, nevertheless, all tax services are offered in Germany, the company acts anti-competitively and the partners representing it are personally liable.

The technical framework conditions of the ERVV concretise the standard for file formats that can be processed in court, but are not conclusive – Dr. Rudolf Böckenholt discusses a ruling by the Mannheim District Court in his latest GRUR-Prax article.

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In issue 20/2020, Dr. Rudolf Böckenholt explains the decision of the Mannheim District Court (LG Mannheim), according to which the mere infringement of the legal requirements regarding file formats in electronic legal transactions with the courts does not mean that the document is deemed not to have been submitted, provided that the court can actually process the submitted format. The procedural document in DOCX format submitted in the dispute could be used as a representative document in PDF/A format due to the technical capabilities of the court. Dr. Rudolf Böckenholt describes that the litigant concerned was lucky in these proceedings, but that the decision cannot be generalised.

The magazine GRUR-Prax can be obtained from the publisher. Further details can be found here.

LESI Article of the Month September 2020 by Prof. Dr. Heinz Goddar on “Patent law based concepts in the age of AI and IoE”

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How can modern patent systems, in the face of huge portfolios, create freedoms to exploit and develop inventions in the field of AI/IoE? Additionally, how can it be guaranteed that SEPs can be used by competitors under FRAND conditions? 

BOEHMERT & BOEHMERT partner and patent attorney Prof. Dr. Heinz Goddar explicates these and other questions – together with co-author Lakshmi Kumaran, Esq., Lakshmikumaran & Sridharan, Delhi, India – in the article “Patent Law Based Concepts For Promoting Creation And Sharing Of Innovations In The Age Of Artificial Intelligence And Internet Of Everything”. 

The paper, which has been available on the Elsevier portal “Social Science Research Network” (SSRN) since the end of 2019, has now been selected by LES International as article of the month and published on the society’s website under “Les Nouvelles September 2020”. 

You can download the full article here!

“No General Third Party Effect!” – Comment by Dr. Martin Schaefer on the DSM Directive on the CCC portal

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The EU Directive on the “Digital Single Market” (DMS) must be transposed into German law by the beginning of June 2021. The subject of the controversial directive is copyright law in the digital single market and thus a whole bundle of legislative issues ranging from text and data mining to the preservation of cultural heritage and copyright contract law. 

Special focus is given to Article 17 of the DMS Directive and thus the role of Online Content Sharing Service Providers (OCSSP) – providers of online services for user-generated content such as YouTube, Facebook, Instagram and Co.

For the general public, the Directive is linked to the debate about the so-called “upload filter”, which is nothing more than the routine known for many years as “notice and stay-down” and which has been practiced without any problems. But it also raises licensing issues: Who needs a licence in connection with such user-generated content and who does not? 

In his blog article “No General Third Party Effect!” on the portal of the company “Copyright Clearance Center” BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer provides answers  and refers to old familiar structures which continue to exist unchanged in the new environment.

Read the complete article here! 

About CCC
The Copyright Clearance Center (CCC) is, according to own statements, a world leader in voluntary collective licensing and a promoter of copyright law. For more than 40 years, the company has been setting standards with its products and services for an efficient global market of exploitation rights and licensing solutions. 

Dr. Eckhard Ratjen in an interview with the trade magazine “Tightly Packed” on the subject of “How do I protect a packaging?”

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In the jungle of offers of similar products, not only the brand serves potential customers as orientation, but also the packaging of a product. Consequently, their protection under trademark law is often very important. 

But how do you proceed when applying for registration of a packaging as a trademark? Which protection criteria must be fulfilled? And can any product packaging be protected as a trademark? 

BOEHMERT & BOEHMERT attorney Dr. Eckhard Ratjen addresses these and other questions as well as prominent case studies in his detailed interview with the trade magazine “Tightly Packed”. 

Read the complete interview here (temporarily only available in German)!

Dr. Laura Haas on “Supplementary Protection Certificates” in the summer 2020 issue of European Biotechnology

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In the “Summer Edition 2020” of the specialist magazine “European Biotechnology”, BOEHMERT & BOEHMERT patent attorney Dr Laura Haas discusses a legal case before the Court of Justice of the EU which resulted in a specific set of rules for patent protection in the case of SPCs (Supplementary Protection Certificates). 

In detail, the CJEU ruled that it is in principle possible to grant an SPC, even if the product is not specifically disclosed in the basic patent. However, a person skilled in the art must be able to deduce directly and unequivocally that the product falls within the scope of protection of the basic patent. 

As a consequence of this CJEU ruling, Laura Haas, who holds a doctorate in biochemistry, sees the option that an infringement defense can be created based on a later obtained patent which is the result of “independent inventive activity” over a basic patent. 

Read the detailed presentation of the ECJ decision here and learn more about the background (only available in English)!

Silke Freund and Dr. Sebastian Engels contribute to the “International Comparative Legal Guide – Digital Business 2020“

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The Global Legal Group has published the first edition of the “International Comparative Legal Guide – Digital Business 2020”. The guide is aimed specifically at corporate attorneys and offers a comparative legal analysis of current legal requirements and topics for digital business. 

Under the heading “Digital Business Laws and Regulations – Germany”, BOEHMERT & BOEHMERT attorneys Silke Freund and Dr. Sebastian Engels provide an insight from a German perspective. 

In eleven chapters, they deal with regulations for e-commerce, data protection, cyber security, cultural norms, brand enforcement online, cloud computing and further digital topics. 

The complete article is available here online or as PDF.