General Court denies likelihood of confusion between pharmaceutical marks containing “mar” element- Article by Dr. Florian Schwab in WTR Daily

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On the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr. Florian Schwab discusses a decision of the General Court (Fifth Chamber) in Case T-261/19 20 January 2021, Stada Arzneimittel AG v. European Union Intellectual Property Office (EUIPO).

In this judgment, the Court upholds the decision of the First Board of Appeal of EUIPO that there is no likelihood of confusion between the EU figurative mark sign OPTIMAR and the earlier word mark MAR. For the latter, the evidence of genuine use was limited to “medical nasal sprays”.

With regard to the identically covered element MAR, the Court considered a below-average distinctive character in view of the recognisably descriptive reference to “sea” for medical nasal sprays.

The full article in English is available to registered users of WTR Daily here online and as a PDF download!

“Patent System Solutions for AI and IoT Inventions” – Article by Prof. Dr. Goddar in the February issue of GRUR

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In the current edition of “GRUR – Zeitschrift der Deutschen Vereinigung für gewerblichen Rechtsschutz und Urheberrecht” (German Association for the Protection of Intellectual Property), BOEHMERT & BOEHMERT patent attorney Prof. Dr. Heinz Goddar devotes himself to the specific challenges for the patent system in the age of artificial intelligence (AI). 

In his article with the original title “Patent System Solutions for AI and IoT Inventions”, Prof. Dr. Goddar not only deals in detail with problems such as the patentability of AI-related inventions or the use of standard essential patents of competitors under FRAND conditions. He also warns of the consequences that a predictable multiplication of patent portfolios would mean for new developments based on AI and IoT and recommends using already existing conflict solution mechanisms of the patent system also with regard to AI and IoT. 

The article was published on the occasion of Prof. Dr. Peter Meier-Beck’s 65th birthday as a commemorative article in the 2/2021 issue of GRUR. Subscribers to Beck-Online can access it under GRUR 2021, 196.

Article by Dr. Michael Rüberg and Lars Eggersdorfer in “Legal Era” on the judgement of the OLG Düsseldorf on the continued use of advertising after product modifications

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If advertising material that was originally used for a patent-infringing product continues to be used as such, this may constitute an independent patent infringement. And this even if the advertised product has been technically modified in a way that a patent infringement is excluded.

BOEHMERT & BOEHMERT attorneys Dr. Michael Rüberg and Lars Eggersdorfer report on this judgement as well as a subsequent decision in a penalty payment proceeding of the Higher Regional Court of Düsseldorf in their article for the Indian trade journal “Legal Era” – combined with useful tips on how to deal with this problem in practice.

The full article in English entitled “Higher Regional Court of Dusseldorf decides on further use of advertising after product modification” is available online here.

Podcast: Dr Eckhard Ratjen in an interview with “Packaging Europe” on the topic of “Trademarks in Packaging”

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In view of the large range of similar products, packaging is becoming increasingly important in the context of the purchase decision. The competition for new packaging formats and designs is correspondingly fierce. So it seems likely to protect not only the product but also its packaging under trademark law. 

But under what conditions is it possible to register packaging as a trademark? When does trademark protection make sense at all? And which parts of a packaging can be protected as a trademark? 

In an interview with Elisabeth Skoda from the online platform “Packaging Europe”, BOEHMERT & BOEHMERT attorney Dr. Eckhard Ratjen answers these and other questions, explains practical examples and gives useful tips on the protection of product packaging under trademark law. 

The interview is available as a podcast here!

“Germany: Constitutional Court Requires Equal Arms in Preliminary Injunction Matters” – Article by Dr. Rudolf Böckenholt in les Nouvelles of LES International

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In the December 2020 edition of “les Nouvelles Online”, the trade journal of the Licensing Executives Society International, BOEHMERT & BOEHMERT attorney Dr. Rudolf Böckenholt provides detailed information about a decision of the German Constitutional Court in summer 2020 to strengthen the “equality of arms” of all parties in the injunction proceedings.

The background to this is the common practice for decades, according to which the defendant was only heard in the oral hearing upon objection, i.e. after the preliminary injunction had already been issued and was to be observed.

The German Constitutional Court is again putting paid to this procedure with its ruling in June and July of this year, after having already strengthened the rights of the defendant in September 2018.

According to the decision of the German Constitutional Court, the opponent must be given a legal hearing before a decision is made, and this must be on the specific subject matter in dispute. Both parties must be equally involved in the legal proceedings.

Subscribers of the LESI Magazine can download the detailed article by Dr. Böckenholt here!

New GRUR article “The Digital Private Copy in the Age of Exception Based Business Models” by Dr. Martin Schaefer

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In the 12/2020 issue of the journal “GRUR – Zeitschrift der Deutschen Vereinigung für gewerblichen Rechtsschutz und Urheberrecht” (GRUR is the German Association for the Protection of Intellectual Property, the largest and oldest association in Germany that is dedicated to the protection of intellectual property), on the occasion of two judgements of the German Federal Court of Justice, BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer analyses the current practice, in Germany, of basing commercial business models on exceptions and limitations of German copyright law that in their majority had been created for non-commercial use only. 

Under the title „The Digital Private Copy in the Age of Exception Based Business Models”, Dr. Schaefer calls for such business models to be examined more closely than so far regarding their compatibility with the requirements of EU law. 

The article is available in German only either in print or to subscribers on the Beck-Online platform under: GRUR 2020, 1248.

„Why Metadata Matters for the Future of Copyright” – Article by Dr. Martin Schaefer on the Kluwer Copyright Blog

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There is a growing recognition that for the market for copyrighted content to work, metadata is the grease that keeps the engine running. So far, all projects for centralized databases have failed. The reason lies in the instability of metadata. Is there a solution to the problem?

BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer examines this question in his blog article “Why metadata is important for the future of copyright” and describes as a possible approach a “metadata search engine” as a decentralised, non-commercial open source tool for research and enrichment of metadata. This blog post was published in English in the well-known Kluwer Copyright Blog under the title “Why Metadata Matter for the Future of Copyright” and is available here in full length.

About the Kluwer Copyright Blog
The Kluwer Copyright Blog is a publication of Kluwer Law International with information and news about European copyright law. It is compiled by a group of leading experts, consisting of practicing lawyers and academics, to report on the latest developments.

“When to file for a patent? The scientist’s perspective” – Article by Dr. Jan Krauß and Dr. David Kuttenkeuler in “New Biotechnology”

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At what point in time may it be reasonable to start filing a patent application? Is there enough information in the application to make or perform the invention? And is the invention as defined in the claims sufficiently supported by the description as provided by the application, in order to work the invention across its full scope? 

BOEHMERT & BOEHMERT patent attorneys Dr. Jan Krauß and Dr. David Kuttenkeuler answer these and other questions in their article in the January 2021 issue of the scientific journal “New Biotechnology”. In addition, researchers are provided with information on the current status of disclosure requirements in the context of patenting in the field of life sciences. 

The article in English is available here until 9 December 2020 without registration.

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.