Presentation of the Chinese Open Licence System by Zichen Jia, Prof. Dr. Goddar and Melanie Müller in Les Novelles, June 2025

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In the June 2025 issue of the Journal of the Licencing Executives Society International, the authors Zichen Jia (attorney at law in China, TU Dresden) and BOEHMERT & BOEHMERT attorneys Prof. Dr. Heinz Goddar (patent attorney) and Melanie Müller (attorney at law) discuss the Open Licence System in Chinese patent law, which was introduced in 2021 with the fourth revision of the Patent Law of the People’s Republic of China.

The aim of the Chinese Open Licence System is to facilitate the voluntary licensing of patents and make innovations more widely accessible. The system has been in force nationwide since 2024, having previously been piloted in several provinces. By the end of 2023, over 59,000 patents and more than 3,200 patent holders had taken part.

In their article, the authors explain in detail the key points of the Chinese system in terms of
– Proposal and withdrawal of the Open License Declaration
– Open license fees and reduction or exemption of annual fees
– Alternative dispute resolution under the new system (mediation, legal action)

Finally, the authors compare the Chinese system with the German one. The main differences here are that in Germany, an open license declaration can be submitted before the patent is granted, with a halving of the renewal fees. In addition, the German Patent and Trademark Office (DPMA) can set the license fee in a binding manner in the event of a dispute, whereas in China the patent authority (CNIPA) only plays a mediating role.

Members of the Licencing Executives Society International, LESI for short, can download the full article here.

Dr. Julian Wernicke with article on the legal protection of non-conventional trade mark forms in markenartikel issue 5/2025

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In the magazine for brand management “markenartikel”, attorney at law Dr. Julian Wernicke explains the significance and protection of non-conventional trade mark forms such as sound, smell, haptics & taste, 3D shapes or colors.

Trade marks are generally understood to be word, image or, in combined form, word/image trade marks. Prominent examples are the word creation Lego or the Nike swoosh.
However, trade mark law also provides for the protection of sounds, smells or multimedia works. In this case, trade mark law refers to “non-conventional trade marks”.

In his article “Jingles, smells and video clips – legal protection of non-conventional trade mark forms” in the current issue 5/2025 of the trade magazine “markenartikel”, BOEHMERT & BOEHMERT attorney at law Dr. Julian Wernicke explains the process of protecting these non-conventional trade marks, emphasizes their importance in the context of marketing, gives tips and also addresses current official practice.

His conclusion is clear: The importance of unconventional trade marks is constantly increasing, which is why companies should consider the legal protection of sounds, colors, product shapes, video sequences and holograms in the future.

You can read the article by Dr. Julian Wernicke in issue 5/2025 of the trade journal “markenartikel”. The magazine in German can be ordered here for a fee.

Prof. Dr. Heinz Goddar und Rechtsanwältin Melanie Müller von BOEHMERT & BOEHMERT zum Beitrag in der Festschrift zum 125-jährigen Bestehen des Patentanwaltsberufs

Contribution by Prof. Dr. Heinz Goddar and attorney at law Melanie Müller in commemorative publi­cation for the 125th anniver­sary of the patent attorney profession

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In the commemorative publication for the 125th anniversary of the patent attorney profession, BOEHMERT & BOEHMERT partner and patent attorney Prof. Dr. Heinz Goddar, together with attorney at law Melanie Müller, contributed an article on the topic of complementary protection for innovations through patents and partial secrecy.

The article examines the role of the patent attorney as a link between technology and law, demonstrating how patents and secrecy can be combined to provide innovations with a higher level of protection. It addresses the challenges of the vaccine and tech era, discusses the patenting of AI systems and provides practical examples, such as the production of turbine blades using AI and 3D printing. Prof. Dr. Heinz Goddar and Melanie Müller suggest the creation of a trusted depository for trade secrets and data records, and emphasise that the profession and training for patent attorneys must continue to evolve.

The full article by the two attorneys from BOEHMERT & BOEHMERT can be found on pages 355–356 of Festschrift aus Anlass des 125-jährigen Bestehens des Patentanwaltsberufs, which was recently published by Carl Heymanns Verlag.

Dr. Alexander Thamer and Dr. Julian Wernicke on moral rights in election campaign events

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“No concert of wishes in election campaigns: moral rights in a political context” – essay by Dr. Alexander Thamer and Dr. Julian Wernicke in issue 4/2025 of ZUM

In the 04/2025 issue of the “Zeitschrift für Urheber- und Medienrecht” (Journal of Copyright and Media Law), ZUM for short, the BOEHMERT & BOEHMERT attorneys at law Dr. Alexander Thamer and Dr. Julian Wernicke deal with the use of popular music in political election campaigns – a tool that is often used due to its emotionalizing effect.
Most recently, for example, the Junge Union played “Zeit, dass sich was dreht” by Herbert Grönemeyer at the arrival of CDU chancellor candidate Friedrich Merz, which was reported on by LTO and others.

In recent years, musicians have increasingly invoked moral rights in order to enforce a court ban against certain uses in the political arena. Of particular interest here is the tension between this moral right and existing rights of use granted via collecting societies. The article classifies the case law to date and shows the limits of party-political music use.

Subscribers to beck online can access the article in German by Dr. Alexander Thamer and Dr. Julian Wernicke online here.

Law and Practice – Christoph Angerhausen, Dr. Herrmann and Dr. Rüberg write in Chambers Patent Litigation Guide 2025

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Recent developments in the legal framework and practical implementation in Germany

In the 2025 edition of the Chambers Patent Litigation Guide, the three BOEHMERT & BOEHMERT partners Christoph Angerhausen, Dr. Daniel Herrmann (both patent attorneys) and Dr. Michael Rüberg shed light on the extensive area of “Law and Practice Germany”. In ten comprehensive chapters, the authors deal with the latest developments in the legal framework and implementation in practice. This includes, for example, information on alternative dispute resolution, current cost developments and the licensing of IP rights.

The article by Christoph Angerhausen, Dr. Daniel Herrmann and Dr. Michael Rüberg is available online in English on the Chambers website.

Chambers and Partners is one of the world’s leading independent legal directories. In addition to detailed rankings for various practice areas, the company publishes practice guides such as the Patent Litigation Guide. The annual guide covers 24 jurisdictions and covers.

Dr. Oliver Tarvenkorn, Patent Attorney at BOEHMERT & BOEHMERT

“A plea for the utility model” – Article by Oliver Tarven­korn in Markt & Wirtschaft Westfalen 03/25

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In the March issue of the trade magazine, Oliver Tarvenkorn explains defensive IP strategies for small and medium-sized companies.

The utility model is generally regarded as the “little patent”. However, embedded in an appropriate strategy, utility models can be particularly interesting for SMEs. The costs and effort involved are low compared to patents and yet they are suitable for diversifying one’s own innovation approaches, creating a defensive position against third-party property rights and making it more difficult to build up third-party patent portfolios.

In his article “A plea for the utility model”, BOEHMERT & BOEHMERT patent attorney Oliver Tarvenkorn goes into the details of a modern IP strategy, accompanied by tactical instructions.

The article was published in German in the March issue of Markt & Wirtschaft Westfalen (Market & Economy Westfalen) and is available online here.

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

Tina vs. Bibi & Tina – Dr. Eckhard Ratjen in GRUR-Prax 02/2025 on the judgment of the General Court of 13.11.2024 – T-444/23

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Bibi & Tina – Likelihood of confusion if one of two equivalent word elements of the earlier figurative mark is adopted

In issue 2/2025 of the magazine “Gewerblicher Rechtsschutz und Urheberrecht in der Praxis” (GRUR-Prax, Intellectual property and copyright law in practice), BOEHMERT & BOEHMERT partner and attorney at law Dr. Eckhard Ratjen addresses the question of whether there is a likelihood of confusion when an averagely distinctive word element is taken from an earlier figurative mark that contains another, equivalent and averagely distinctive word element.

The background to this is the decision of the General Court of the European Union of 13.11.2024 – T-444/23 Tina/Bibi&Tina, which confirms a likelihood of confusion in Classes 3 and 5 between the name element “Tina” of the EU trade mark Bibi&Tina and the disputed trade mark “Tina” for various cosmetics and hygiene products. Although there was a slight visual similarity and an average phonetic similarity, the General Cout took the view that the disputed trade mark would be perceived as a different version of the earlier mark “Bibi&Tina” and not as an independent mark with a different commercial origin.

The full article by Dr. Eckard Ratjen entitled „Bibi & Tina – Verwechslungsgefahr bei Übernahme eines von zwei gleichwertigen Wortbestandteilen der älteren Bildmarke“ was published in German in the printed edition of GRUR-Prax 02/2025. Subscribers to beck-online.de can also access the article online here.

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

Fixed-date transaction! Scope of the objection unchangeable after expiry of the objection period – Dr. Rudolf Böckenholt in GRUR Prax 2/2025

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Dr. Rudolf Böckenholt on the decision of the General Court of the European Union of 20.11.2024 – T1159/23

In the current issue 2/2025 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht” (Intellectual Property and Copyright Law / Practice in Intellectual Property and Competition Law), BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt explains a decision of the General Court of 20 November 2024 on a procedural problem in opposition proceedings at the EUIPO.
The court states that the ground stated in the opposition and the area of protection of the earlier right can no longer be changed at a later date – after expiry of the opposition period – which also means that no narrowing can take place.

In the specific case, the opponent had designated the earlier non-registered trademark right with the EUIPO protection area, which the court interpreted as a reference to the entire EU. The reasoning only refers to use in a few EU member states.

The court considers this to be inadmissible overall. It is crucial to specify precisely and conclusively the territories and property rights when filing an opposition. Following a change, the EUIPO’s online portal, which can be used to file oppositions, no longer provides for the previous selection option “EUIPO”, but only the individual EU member states within the framework of Art. 8 (3) EUTMR. Any misunderstandings that may have been the cause of this are therefore no longer possible.

The full article by Dr. Rudolf Böckenholt entitled “Fixgeschäft! – Tragweite des Widerspruchs nach Ablauf der Widerspruchsfrist unveränderlich” can be found in German in the printed edition of GRUR-Prax 02/2025. Subscribers to beck-online.de can access the article here.

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

No exhaustion of an EU trade mark when placing products on the market in Turkey – Article by Dr. Julian Wernicke in GRUR-Prax 01/2025

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In the first issue of the new year of the journal “Gewerblicher Rechtsschutz und Urheberrecht in der Praxis” (GRUR-Prax), attorney at law Dr. Julian Wernicke from BOEHMERT & BOEHMERT addresses the question of whether the rights of a German trade mark or a Union trademark are exhausted when the trade mark owner has already placed the products on the market in Türkiye. This issue touches on a key topic in trade mark law practice that is of significant importance to internationally operating companies.

This question was raised in a decision of the Higher Regional Court of Nuremberg (OLG Nürnberg) dated October 29, 2024 (3 U 881/24, GRUR-RS 2024, 30069 – Kurukahveci Mehmet Efendi). The trade mark owner had filed a lawsuit against an importer who had brought the coffee cans, which the trade mark owner had sold in Türkiye, into Germany and resold them. The court ruled in favor of the trade mark owner, deciding that placing products on the market in Turkey does not lead to trade mark exhaustion in relation to the holder of a German or Union trade mark. In making its decision, the court also took into account the provisions of the “Additional Protocol to the Agreement of September 12, 1963, establishing an Association between the European Economic Community and Türkiye.”

The full article by Dr. Julian Wernicke, titled “No exhaustion of a Union trade mark when products are placed on the market in Türkiye,” can be found in the printed edition of GRUR-Prax 01/2025. Subscribers to Beck-Online can also access the article in German online here.

Dr. Martin Wirtz, Rechtsanwalt bei BOEHMERT & BOEHMERT

Dr. Martin Wirtz with article in the Mitteilungen der deutschen Patentanwälte, issue 01/2025 – News from trademark law

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For the 34th time in a row, BOEHMERT & BOEHMERT attorney at law and partner Dr. Martin Wirtz has dealt with the latest developments in trademark law in the 116th edition of the Mitteilungen der deutschen Patentanwälte and published them in his article entitled “News from Trademark Law”.

In it, he deals with current decisions and new developments in trademark law. It does not claim to be exhaustive and deals primarily with decisions from the year 2024. The article goes into detail on case law decisions in Germany and at EU level on the protectability of trademarks, likelihood of confusion, rights-preserving and infringing use, protection of identity, protection of reputation.

Subscribers can find the article in German language by Dr. Martin Wirtz on pages 1-12 in issue 01/2025 of Mitteilungen der deutschen Patentanwälte, published by Carl Heymanns Verlag.