“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.

“Only the register is relevant in opposition proceedings” – Dr. Rudolf Böckenholt on the decision of the General Court in GRUR-Prax 6/2024

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In the current issue 6/2024 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 General Court of 20 December 2023 (T-655/22, GRUR-RS 2023, 36614 – WINE TALES RACCONTI DI VINO/WINE TALES) on the question of whether circumstances outside the register are relevant to determine the likelihood of confusion in opposition proceedings.

The court’s answer is a clear: “No!”

The meaning and design of the trade marks’ representation and their planned and actual use play no role in determining whether goods/services are similar. This must be assessed solely on the basis of the information shown on the register. In the original case, it was disputed in particular whether advertising services could be similar to alcoholic beverages, if the trade mark gives rise to the presumption that the advertising services relate to alcoholic beverages.

The court clarifies that products and services can be complementary, but there must be such a close connection between products that one is indispensable or otherwise important for the other. The existence of common points of reference is not sufficient.

The complete article by Dr. Rudolf Böckenholt in German can be found in the printed edition of GRUR-Prax 06/2024. Subscribers to Beck-Online can view it online here.

Christoph Angerhausen, Dr. Daniel Herrmann and Dr. Michael Rüberg with article in Chambers Litigation Guide 2024

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Germany – Law and Practice

A comprehensive guide to intellectual property law, Chambers’ annual Global Practice Guide: Patent Litigation 2024 covers 24 jurisdictions. The content focuses on the latest developments in the legal framework and practical implementation that have occurred since the previous edition. It covers all relevant aspects of patent litigation, from infringement proceedings and the licensing of IP rights to cost developments and alternative dispute resolution.

BOEHMERT & BOEHMERT partners Christoph Angerhausen and Dr. Daniel Herrmann (both patent attorneys) and attorney at law Dr. Michael Rüberg have contributed the comprehensive Law and Practice section for the German jurisdiction. They shed light on the latest developments in the legal framework and practical implementation in Germany that have arisen since the previous year.

The complete Patent Litigation Guide 2024 is available for free on the Chambers website.

The BOEHMERT & BOEHMERT Partner contribution “Germany – Law and Practice” can be viewed here.

Fabio Adinolfi in GRUR-Prax 04/2024 on the deter­mination of object value for unsolicited adverti­sing emails

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Most e-mail users are probably annoyed by unsolicited advertising e-mails, but very few take action against them. Not so a plaintiff who took legal action against 5 senders of unsolicited online advertising addressed to him in the first step before the Berlin Regional Court (LG).

BOEHMERT &BOEHMERT attorney at law Fabio Adinolfi deals in the current GRUR-Prax with the object value that is generally to be determined for a first advertising email and repeat offenses. In his article, he deals with the calculation methodology of the Berlin Court of Appeal (KG), which was consulted after the plaintiff sought to set a higher value in dispute for fees.

The full article in German language by lawyer Fabio Adinolfi can be found in GRUR-Prax 04/2024. Subscribers to Becks-online can view the article here.

Dr. Oliver Tarvenkorn, Patent Attorney at BOEHMERT & BOEHMERT

Article by Oliver Tarvenkorn in Markt & Wirtschaft Westfalen on the sensible combination of patenting and secrecy

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BOEHMERT & BOEHMERT patent attorney Oliver Tarvenkorn uses two practical examples in his article “Patenting and secrecy: (not) a contradiction?” to illustrate that patenting and secrecy protection are part of a successful innovation strategy.

How can innovations be protected? By applying for a patent or is it sufficient to effectively protect inventions from access by your own employees or external parties?

BOEHMERT & BOEHMERT patent attorney Oliver Tarvenkorn answers the latter question with a clear “no” and uses two practical examples to demonstrate how secrecy protection and patenting not only complement each other as part of a good innovation strategy, but must be mutually dependent.

Oliver Tarvenkorn’s article was published on March 8, 2024 in the trade magazine Markt & Wirtschaft Westfalen and is available online in German here.