Dr. Oliver Tarvenkorn, Patent Attorney at BOEHMERT & BOEHMERT

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

/in

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

/in

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

/in

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

/in

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

/in ,

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

/in

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!

“The new european patent landscape: what companies should know” – article by Dr. Rüberg, Dr. Kretschmann and Dr. Hofmann in The Patent Lawyer

/in

Dr. Michael Rüberg, Dr. Dennis Kretschmann and Dr. Matthias Hofmann explain in The Patent Lawyer Magazine, Sept/Oct 2023 issue, the successful launch of the European Unified Patent Court and strategic considerations for enforcing patents across the continent.

After more than 50 years of preparation, the European Unified Patent System will enter into force on June 1, 2023. The project of the century includes a new “European patent with unitary effect” (UP) and a “Unified Patent Court” (UPC), which will decide on the above-mentioned unitary patents as well as on all conventional European patents.

But what are the advantages of this European unitary patent system? Does it apply only to newly granted patents or also to existing bundle patents? What is the opt-out option?
BOEHMERT & BOEHMERT partners Dr. Michael Rüberg (attorney-at-law), Dr. Dennis Kretschmann and Dr. Matthias Hofmann (both patent attorneys) answer these and other questions in their article “The new European patent landscape: what companies should know” in the September/October issue of “The Patent Lawyer”.

In addition, the authors raise detailed strategic considerations as to whether and under what circumstances owners of traditional bundled packages should enforce questionable IP rights before the UPC or whether they would not be better advised to give preference to national proceedings.

Finally, Dr. Rüberg, Dr. Kretschmann and Dr. Hofmann give detailed tips for which patent applicants the unitary patent is worthwhile and for which not and discuss the interesting strategy of parallel filing in Germany and Europe.

Read the complete article in the attached PDF for download!

Dr. Michael Rüberg, Attorney at Law at BOEHMERT & BOEHMERT
Dr. Michael Rüberg, Attorney at Law at BOEHMERT & BOEHMERT
Dr. Dennis Kretschmann, Patentanwalt bei BOEHMERT & BOEHMERT
Dr. Dennis Kretschmann, Patentanwalt bei BOEHMERT & BOEHMERT

Jan Göring on the importance of IP protection in the electromobility sector, ATZ – Automobiltechnische Zeitschrift 09/2023

/in

For a long time, Germany was far ahead of the international competition when it came to patent applications for combustion engines and the like. However, when it comes to patent applications in the environment of booming electromobility, China has taken the leading role and has long since ceased to be just a low-cost producer, but is now a recognized leader in technology and innovation.

In his article in the Automobiltechnische Zeitschrift ATZ 09/2023, Jan Goering, patent attorney at BOEHMERT & BOEHMERT, analyzes how China has been able to position itself as a leader in patent applications and gives recommendations to German companies on how inventiveness can be promoted and intellectual property secured through targeted IP management.

Not only since the Unified Patent Court came into force on June 1, 2023, and the first lawsuits for alleged patent infringements in the field of electromobility have become clear: German companies should prioritize the protection of their intellectual property at an early stage.

Read more about this in the print edition of ATZ – Automobiltechnische Zeitschrift 09/23 or online auf der Website der ATZ. The complete article in German language by Jan Goering is also available for download here as a pdf.

 

Dr. Julian Wernicke comments decision of the OLG Düsseldorf on the use of the sign “Ei, Ei, Ei, Ei, Ei” for egg liqueur as a trade mark in GRUR-RR

/in

In the issue 8-9/2023 of “GRUR-RR – Gewerblicher Rechtsschutz und Urheberrecht, Rechtsprechungs-Report”, BOEHMERT & BOEHMERT lawyer Dr. Julian Wernicke discusses the judgement of the OLG Düsseldorf of 27.04.2023 (case: 20 U 41/22) on the distinction between the use of a trade mark and the use of a purely descriptive sign.

Specifically, the question is whether the plaintiff’s trade mark “Eieiei” is infringed by the text “Ei, Ei, Ei, Ei, Ei” on packaging for egg liqueur. For this to be the case, the disputed sign would have to be used as a trade mark, i.e. the sign would have to contain an indication of the origin of the product. According to Dr. Julian Wernicke, the Düsseldorf Higher Regional Court was right to reject this and dismiss the action. The relevant public perceives the product presentation as a particularly catchy, keyword-like indication of ingredients (Ei is German for egg) or as an advertising campaign in the sense of a particularly strong expression of surprise (German expression: Ei, ei, ei).

You can read the complete judgement of the OLG Düsseldorf and the comment of Dr. Julian Wernicke in issue 8-9/2023 of GRUR-RR from page 349 or download the article as a registered user of Beck Online here.

Secret patents and First Filing Requirements – Project report by Christian W. Appelt and Dr Giulio Schober

/in

Different national regulations for patent applications in Europe

How should inventions and patent application be treated that possibly concern national security interests and are therefore bound to secrecy regulations? What requirements are posed on the applicant in such cases? What procedures have to be followed, depending on the countries in which the invention has been made or depending on the nationality of the inventor? As this concerns national regulations, considerable differences in this matter occur on an international level as well as on European level.

In cooperation with and on behalf of JETRO (Japanese External Trade Organization), BOEHMERT & BOEHMERT partner and patent attorney Christian W. Appelt and patent attorney Dr. Giulio Schober have, in cooperation with further colleagues and experts from different European countries, collected these regulations and have compiled a summary report. This report has been published by JETRO in Japanese and English language, the English version can be viewed at the JETRO-Website as pdf.