Portrait of Victor V. Fetscher, Attorney at Law at BOEHMERT & BOEHMERT Munich.

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.

Dr. Florian Schwab with article in WTR Daily on case T-76/23 – DDP Specialty Electronic Materials US 8 LLC v. EUIPO

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In the online magazine World Trademark Review Daily, BOEHMERT & BOEHMERT partner and attorney at law Dr. Florian Schwab analyzes the decision of the General Court of the European Union of 17 April 2024 (Case T-76/23) on the infringement of the right to be heard in opposition proceedings by the Board of Appeal.

In its decision of April 17, 2024, case T-76/23, the General Court of the European Union annulled the decision of the Board of Appeal on formal and substantive grounds. The General Court found that there was no likelihood of confusion between the EU trade mark application AMBERTEC for specific “ion exchange resins for use in water treatment” in Class 1 and “chemicals for the manufacture of components of chemical installations” in Class 1 and “chlorides” in Class 3 protected by the earlier EU trade mark registration AMPERTEC. In its very technical analysis, this led the Court deny a likelihood of confusion, contrary to the previous instance. In addition, the Court found a violation of the rights of defense such as the right to be heard of the proprietor of the AMBERTEC EU trademark application due to the procedural treatment of prima facie evidence in the context of genuine use of the prior AMPERTEC registration and the interpretation of corresponding documents for the infringement analysis by the Board of Appeal.

The article by Dr. Schwab was published on May 02, 2024 and is available online in English for registered users of WTR Daily.

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

Dr. Julian Wernicke with article on invoices as proof of use in trade mark law in GRUR-Prax 07/2024

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In issue 07/2024 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht, Praxis im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOEHMERT lawyer Dr. Julian Wernicke discusses a judgment of the General Court of the European Union of 7 February 2024 (T-792/22), which deals with invoices as proof of rights-preserving use of the trade mark WOXTER.

After the expiry of a five-year grace period for use, the trademark proprietor must, at the request of a third party, prove that it is actually using the trademark in the course of trade. Invoices are an important part of this proof. In the decision, the Court points out the problems that can arise with invoices as proof of use. Dr. Julian Wernicke discusses these and places them in the context of previous European case law. In particular, he discusses the distinction between use as a company or trade name, the lack of a direct link between the mark and the goods or services, and the use of a different representation of the mark.

The full discussion of the decision can be found in German in GRUR-Prax 07/2024, Beck-Online subscribers can read the article here.

Prof. Dr. Heinz Goddar and Melanie Müller write article as part of commemorative publication for Prof. Dr. Thomas Kühnen

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Commemorative publication on the occasion of Prof. Dr. Thomas Kühnen’s retirement from judicial service

Prof. Dr. Thomas Kühnen set standards as a patent attorney and as a judge for patent law at the Higher Regional Court Dusseldorf. He retired from the judiciary on January 31, 2024.

In recognition of his achievements, Carl Heymann Verlag has published the work “Festschrift für Thomas Kühnen” under the editorship of Dusseldorf attorneys at law Christian Harmsen and Axel Verhauwen. Numerous authors express their appreciation for Prof. Dr. Kühnen with contributions on the topics of patent infringement proceedings and the Unified Patent Court.

BOEHMERT & BOEHMERT partner and patent attorney Prof. Dr. Heinz Goddar and BOEHMERT & BOEHMERT attorney at law Melanie Müller took part in this tribute as joint authors with the article „Lizenzbereitschaftserklärung gem. § 23 PatG – sinnvoller Mechanismus zur Bestimmung von FRAND-Bedingungen bei SEP-Lizensierung?“ (Declaration of willingness to license pursuant to Section 23 PatG – a useful mechanism for determining FRAND conditions in SEP licensing?).

The commemorative publication is available in German, both in hardcover and as an online subscription. Further information can be found here in the Wolters Kluwer online store.

Dr. Eckhard Ratjen comments on the GC judgment T-736/22 on the question of the likelihood of confusion of trade marks when descriptive elements of signs are identical in GRUR-Prax 06/2024

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In issue 06/2024 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht, Praxis im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Eckhard Ratjen discusses the General Court judgment T-736/22 on the likelihood of confusion in the case of trade marks which are only identical with regard to descriptive elements of the sign.

In this judgment, the court follows the first instance decision and confirms that there is no likelihood of confusion in the case of the trade marks SNACK MI and CAMPOFRIO SNACK’IN.
A similarity in descriptive elements of the signs is not sufficient for a likelihood of confusion even if these elements visually dominate the signs.

Dr. Eckhard Ratjen welcomes the ruling of the General Court in his article.
For a higher degree of legal certainty for trade mark applicants, it is to be hoped that the Opposition Divisions and Boards of Appeal of the EUIPO will heed the standards set by the General Court in cases such as the one described, according to the attorney at law.

The complete article by Dr. Eckhard Ratjen was published in the 06/2024 issue of GRUR-Prax. Registered users of Beck-Online can download the article in German here.