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.

Dr. Florian Schwab in WTR Daily on case T-157/24 – Meica Ammer­ländische Fleisch­waren­fabrik Fritz Meinen GmbH & Co. KG v. the EUIPO

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In the online magazine “World Trademark Review Daily”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Florian Schwab comments on a recent decision of the General Court of the European Union (Case T-157/24), in which the Luxembourg court confirms the absence of a likelihood of confusion between the EU word mark application CHIPSY KINGS and Meica’s opposition mark in the form of the word mark CURRY KING.

In its decision of December 11, 2024 in Meica Ammerländische Fleischwarenfabrik Fritz Meinen GmbH & Co. KG v EUIPO (case T-157/24), the General Court of the European Union, following the decision of the Board of Appeal, found that there was no likelihood of confusion between the EU trademark application CHIPSY KINGS and the earlier EU-part of the International Registration of the word mark CURRY KING.
Both trademarks had identically or similarly claimed, inter alia, “meat, vegetarian and potato products and retail food services”. However, the overall impression of the two composite marks was sufficiently different.
In particular, the common component KING(S) was considered to be laudatory and, therefore, of weak distinctiveness. CURRY was also understood as descriptive of Indian food or of the spice.
In the case of the younger trademark, the component CHIPS was considered either also being descriptive (“chipsy”) or, on the contrary, fanciful and, in this case, more distinctive – and thus less likely to cause confusion – compared to the (common) element KING(S).

The article by Dr. Schwab entitled “General Court confirms lack of likelihood of confusion between CHIPSY KINGS and CURRY KING” was published on January 7, 2025 and is available online for registered users of WTR Daily here.

Dr. Ute Kilger, Patent Attorney at BOEHMERT & BOEHMERT

Dr. Ute Kilger with a review of one year of the UPC in the magazine European Biotechnology

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The Unified Patent Court (UPC) began its work just over a year ago: how has it gone so far and what does the future hold?

In her article “Unified Patent Court: quo vadis” in the winter issue of European Biotechnology magazine, BOEHMERT & BOEHMERT partner and patent attorney Dr. Ute Kilger looks back on the first year of activity of the Unified Patent Court (UPC).

Among other things, it questions the argumentation that is always used in favor of the Unified Patent Court that proceedings before only the UPC court are less costly than before national courts. Initial experience has shown that both plaintiffs and defendants before the UPC have to reckon with a considerable amount of time and therefore also costs for the preparation of proceedings. However, one advantage of the new court lies in the faster results that the UPC delivers in first-instance judgments within a time frame of one year and a second in the uniform interpretation of claims in infringement and validity actions.

She further examines how extensively the UPC and the opt-out option are used and derives a tendency of the court with regard to the plaintiff-friendliness from the first judgments.

Subscribers can find the complete analysis by Dr. Ute Kilger in the winter issue of the European Biotechnology Magazine.

Fabio Adinolfi on the legal jungle of import/export in GRUR-Prax 2024, 747

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General principles of Customs law and connecting factors under trade mark law

Every year, goods worth trillions of euros are imported into the European Union from third countries or brought into another third country via the EU. In that context, not only customs law details have to be taken into account. Aspects of trade mark law as well come into play, as imported or transit goods can also be counterfeit products.

BOEHMERT & BOEHMERT attorney at law Fabio Adinolfi addresses the broad field of import and export as well as associated legal “traps” in his article “Einfuhr, Durchfuhr, Grenzbeschlagnahme, Produktpiraterie, Zoll – Ein Überblick im Dschungel des Imports/Exports” (Import, transit, border seizure, product piracy, customs – an overview in the jungle of import/export) in GRUR-Prax 2024, issue 747.

In addition to the basics of customs law and types of procedure, Fabio Adinolfi deals in detail with the import and transit of original and counterfeit products from a trade mark law perspective as well as the prerequisites regarding the destruction of imported or exported goods, whether they are original products or product piracy.

Registered users of beck-online.de can download the article in German here.

Victor V. Fetscher with article in UPC special edition of The Patent Lawyer magazine

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A changing landscape: German courts in the maelstrom of the UPC

For decades, the German national courts, in particular Düsseldorf, Munich and Mannheim, have been the go-to places for patent disputes in Europe. The introduction of the Unified Patent Court (UPC), to whose one-year anniversary The Patent Lawyer magazine is dedicating a special issue, has opened up new options for patent proprietors who plan to litigate.

What does this mean for the German courts and what future lies ahead for the UPC? BOEHMERT & BOEHMERT attorney at law Victor V. Fetscher addresses these questions in his article “A changing landscape: German courts in the maelstrom of the UPC”.

His full article, written in English and published in the special issue “Unified Patent Court: one year in” on September 30, 2024, can be found as a pdf here.

Dr. Ute Kilger, Patent Attorney at BOEHMERT & BOEHMERT

Dr. Ute Kilger investi­gates the Aplidin® case in the Euro­pean Bio­techno­logy Magazine

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Topic of the article: Aplidin® – a politically motivated scandal? Dr. Ute Kilger sheds light on the EMA failure and the political intervention in the Aplidin® case.

In the autumn issue of the European Biotechnology Magazine, BOEHMERT & BOEHMERT patent attorney and partner Dr. Ute Kilger examines the questionable refusal of the European Medicines Agency (EMA) to allow the Spanish biotech company PharmaMAR to market the cancer drug Aplidin®.The EMA scientific advisory group, which included an expert with a demonstrable conflict of interest, had denied the safety and efficacy of the drug.

The biotech company filed an appeal against this rejection with the European Court of Justice in October 2018. This was upheld in full in 2020. Estonia and Germany then appealed against the court’s decision, followed by the Netherlands and the EU. An unusual political move that remains a mystery. Dr. Ute Kilger raises the question of how the EMA intends to guarantee the impartiality of its experts in the future and how to deal with the damage caused to PharmaMAR by seven years of litigation and lost ROI.

The experienced patent attorney also highlights the fact that the approval figures for cancer drugs appear to be falling in Europe, while they are stagnating in the USA and rising sharply in China. This leads to the assumption that the requirements in Europe are too strict compared to other countries or that there is too much bureaucracy. She concludes that Europe does not appear to be the first port of call for new cancer drugs.

Subscribers can find the full article in the European Biotechnology Magazine Vol 23/2024 on page 36.

Makiko Maruyama, European Patent Attorney bei BOEHMERT & BOEHMERT

Dr. Makiko Maruyama in the magazine of the Japan Patent Attorney Association on the EPO’s problem-solution approach

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The European Patent Office’s method for determining inventive step

In the July issue of the Japan Patent Attorney Association magazine, BOEHMERT & BOEHMERT European Patent Attorney Dr. Makiko Maruyama describes the European Patent Office’s (EPO) approach to determining inventive step.

The European Patent Office uses its own method, the so-called “problem-solution approach”, which is also used by numerous national patent offices in Europe.
This “problem-solution approach” consists of three main steps: determining the state of the art as a starting point for determining inventive step, determining an objective technical problem and checking obviousness. The criteria for each step are precisely defined.

In her article, Dr. Maruyama explains the basics of the “problem-solution approach” and its application to inventions that contain “non-technical features”, such as computer-related inventions. She also discusses numerous points to consider when drafting applications and during the examination procedure at the EPO with regard to the EPO’s criteria for determining inventive step.

Dr. Makiko Maruyama’s article is available online in Japanese here.

Fabio Adinolfi in GRUR-Prax 15/2024 on the signifi­cance of domain names under trademark law

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Protection of domains in the context of trademark, company trademark and title protection law.

Domains are far more than a user-friendly variant of a numerical IP address, comparable to an individual telephone number. Their value has been recognized a long time ago and they have developed into valuable economic assets.

In his current article in GRUR Prax, BOEHMERT & BOHMERT attorney at law Fabio Adinolfi therefore looks at the protectability of these goods, as domains not only enjoy trademark protection but also, under certain conditions, protection as a company name or work title in accordance with Section 5 II, III MarkenG (German Trademark Act).

He also examines the latest domain-specific regulations brought about by the recently adopted Quality Regulation (Regulation (EU) 2024/1143) and summarizes their practical consequences.

Registered users of GRUR-Prax can download the full article by Fabio Adinolfi here.

 

“No competitive relationship between airline and air passenger rights portal” – Article by Dr. Rudolf Böckenholt in GRUR-Prax 11/2024

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Dr. Rudolf Böckenholt discusses the decision of the Higher Regional Court of Hamburg of 14 March 2024, 5 U 132/22, GRUR-RS 2024, 6288 – Papierkrieg mit Airline, in the magazine of the publisher C.H.Beck.

In the current issue 11/2024 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt explains a decision of the Higher Regional Court of Hamburg from March 14, 2024 (15 U 132/22, GRUR-RS 2024, 6288 – Papierkrieg mit Airline) on the question of whether a competitive relationship exists between offers from airlines and air passenger rights portals if both deal with the processing of claims for damages (e.g. due to delays or flight cancellations).

The court’s answer is: No!

The activities are neither similar nor interchangeable. The airline was fulfilling its duty as a debtor of claims under the Passenger Rights Regulation, whereas the Passenger Rights Portal offered legal services.
What sounds logical and comprehensible is currently highly controversial in case law, which is why the Higher Regional Court of Hamburg has also allowed an appeal to the Federal Court of Justice, which is actually being conducted there.

The full article in German by Dr. Rudolf Böckenholt entitled “No competitive relationship between airline and air passenger rights portal” can be found in the printed edition of GRUR-Prax 11/2024. Subscribers to Beck-Online may access the article here.

Fabio Adinolfi in GRUR-Prax 09/2024 on the effects of social media posts on design rights

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BOEHMERT & BOEHMERT attorney at law Fabio Adinolfi explains in his article in GRUR-Prax 09/2024 how the sneakers worn by Rihanna in a social media post prevented Puma from obtaining Community design rights.

The registration of a Community design (RCD) of the sporting goods manufacturer Puma for sneakers from 2016 was declared invalid by the EUIPO at the request of a third party. The reason given for this was the “disclosure” of the RCD through posts on pop star Rihanna’s Instagram account two years earlier.

The General Court confirmed the decision of the EUIPO in its judgment (T-743/22) of March 6, 2024. At the time of the application, the RCD therefore had no individual character within the meaning of Art. 6 CDR.

Fabio Adinolfi’s conclusion is thus: If a similar design is shown to the public via social media a long time before the registration of a RCD, this constitutes a disclosure within the meaning of Art. 7 I CDR, which deprives the RCD filed for registration of its individual character. The author also recommends companies that commission influencers for their product advertising to file the corresponding RCD or design application promptly after the disclosure of a new product. After all, the legislator has set a decision period of twelve months for such cases.

Registered users of GRUR-Prax can download the full article by Fabio Adinolfi here in German.