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.

Dr. Michael Rüberg, Attorney at Law at BOEHMERT & BOEHMERT

Article by Dr. Michael Rüberg on the principle of territorial jurisdiction in European patent law in the magazine of the Japanese Patent Attorneys Association

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In view of the ongoing globalization of the political and economic order, the territoriality of European patent law is increasingly being called into question. Consequently, efforts are being made to successively extend the scope of protection of patents. The European unitary patent system is a prominent example of this.

BOEHMERT & BOEHMERT partner and attorney at law Dr. Michael Rüberg addresses these issues as well as the latest trends and topics in European and German patent law in his article “The principle of territorial jurisdiction in European patent law and its effects on the enforcement of patents” for the monthly magazine of the Japanese Patent Attorney Association.

He discusses the principle of territorial jurisdiction in European patent law, highlights the effects on the enforcement of “traditional” patents and explains exemplary infringement proceedings that go beyond the limits of territorial jurisdiction.

The article concludes with comments on the enforcement of patents in the new European unitary patent system.

The publication by D. Michael Rüberg was released in the December issue of the magazine of the Japan Patent Attorneys Association JPAA and is available here as a PDF in Japanese.

General Court confirms the validity of a Lego figure as 3D trade mark: Dr. Florian Schwab analyzes the court’s decision in WTR

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In his legal update in the online magazine World Trademark Review (WTR) of January 8, 2024, BOEHMERT & BOEHMERT attorney and partner Dr. Florian Schwab discusses the decision of the General Court in case T-297/22, in which the court upholds the decision of the EUIPO- Board of Appeal upholding the validity of the contested 3D trade mark of a Lego-toy figure.

In its decision of December 6, 2023, the General Court dismisses the application for a declaration of invalidity by the German company BB Services GmbH and confirms the registrability of the 3D-EU-trademark registration consisting of the shape of a Lego-toy figure.

BB Services GmbH had seeked invalidation of the 3D-mark on the basis of that mark allegedly only consisting of shapes resulting from the nature of the goods or necessary to obtain a technical result (Articles 7 (1) (e) EUTMR). In this complex and highly technical matter – as in previous attacks against the registrability of the Lego brick as such – the General Court confirmed its liberal tendency of registrability of 3D-marks and of interpreting the technical functionality exemption restrictively.

The article by Dr. Florian Schwab is available in full length to registered users of WTR Daily here.

“Title over title” – Fabio Adinolfi in GRUR-Prax 22/2023 on dealing with the variety of titles

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In the last decades titles were mostly reserved for books, movies or plays, but nowadays there is a flood of titles for works and products. After all, every podcast, every playlist or even just a piece of furniture with a great inventive spirit has to be named.

In view of the sheer inexhaustible mass of titles in a wide variety of forms and designs, BOEHMERT & BOEHMERT attorney at law Fabio Adinolfi gives an insight into title categories in his article in GRUR-Prax, issue 22/2023, and clarifies the question of how these should be classified and evaluated.

Read the full article „Titel über Titel – wie umgehen mit mehreren Titeln?“ (Title over title – how to deal with multiple titles?) by Fabio Adinolfi in GRUR-Prax 22/2023! Registered users of Beck-Online can download it here in German.

“Phonetic similarity of trade marks sub­ordi­nated in case of purchase on sight” – Dr. Rudolf Böcken­holt on the decision of the EU Trade Mark Office in GRUR-Prax 20/2023

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In the current issue 20/2023 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis Immaterialgüter- und Wettbewerbsrecht” (GRUR-Prax – Intellectual Property and Copyright Law / Practice Intellectual Property and Competition Law), BOEHMERT & BOEHMERT partner and attorney-at-law Dr. Rudolf Böckenholt explains a decision of the EUIPO of July 21, 2023 (R 2425/2022-5, GRUR-RS 2023, 18993 MENA) on the question of the effect of phonetic similarities of trade marks in the case of visual differences, if the products are predominantly purchased on sight.
The EUIPO takes the position that in such a case the visual impression of the marks is ultimately decisive.

“Buying on sight” means that customers do not ask for products in the supermarket, for example, but move through shelves in a search oriented on memory patterns, i.e. looking in particular for “familiar” labels, colours, design shapes and types of packaging. If it could be established that products would be bought on sight, the otherwise applicable rule that the public orientates itself on the simplest element, i.e. as a rule the word element, would no longer apply. The EUIPO is not alone in this view, but similar arguments before German courts have tended to be unsuccessful in the past.

The complete article by Dr. Rudolf Böckenholt can be found in German in the printed edition of GRUR-Prax 20/2023. Subscribers to Beck-Online can view it online here.

Dr. Florian Schwab in WTR Daily on the EUIPO’s refusal to register the Porsche sound mark

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Porsche applied to register an electronic sound sequence simulating the rapid acceleration of an engine. EUIPO refused the application, finding that the sound mark was devoid of distinctive character.

In its article “EUIPO refuses to register Porsche’s sound mark” on the online portal of the trade journal World Trademark Review, WTR Daily, dated September 7, 2023, BOEHMERT & BOEHMERT partner and lawyer Dr. Florian Schwab discusses a decision of the European Union Intellectual Property Office (EUIPO) dated August 25, 2023 unfavorable towards Porsche.

In this decision, the EUIPO denied the registrability of a sound trademark of Porsche – in the form of the artificial reproduction of an accelerating engine – for lack of distinctiveness for the claimed goods of, inter alia, motor vehicles, model vehicles and various digital services and refused registration.

Interestingly, the German office registered the corresponding sound mark and the EUIPO also granted protectability to a quite comparable sound mark of another automobile group. The filing of an appeal by Porsche would come as little surprise.

The complete article by Dr. Schwab is available online in English for registered users of WTR Daily here!