“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!

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

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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. 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

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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

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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

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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.

Silke Freund with article in the maga­zine of the Japa­nese Patent Attorneys Association on inno­vations in the German Trademark Law

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With the entry into force of the Trademark Law Modernization Act (MaMoG) on January 14, 2019, there have been extensive changes in the German Trademark Act (MarkenG). The aim of the MaMoG is to adapt the MarkenG to the requirements of the new EU trademark law line. This is intended to further harmonize trademark law in the European Union and strengthen the rights of trademark owners.

In her article for the magazine of the Japanese Patent Attorneys Association, BOEHMERT & BOEHMERT partner and attorney at law Silke Freund goes into detail about the changes in the course of the amendment of the German Trademark Act. Mentioned here are new absolute grounds of refusal, new revocation and invalidity procedures before GPTO as well as the newly introduced German certification mark.

In conclusion, Silke Freund comes to the conclusion in her article that the Trademark Law Modernization Act has so far proven its worth with regard to the harmonization of trademark law in the EU and has thus fulfilled its primary purpose.

The article by Silke Freund is available here as a PDF.

Fabio Adinolfi writes in GRUR 12/2023 on the protec­tion of work titles under trademark law

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In the recently published GRUR issue – Gewerblicher Rechtsschutz und Urheberrecht 12/2023, BOEHMERT & BOEHMERT lawyer Fabio Adinolfi sheds light on the shadowy existence of the trademark law protection of working titles among the trademark rights.

In doing so, he concentrates in detail on particularly practice-relevant questions in connection with the creation of protection as well as the likelihood of confusion with trademarks, among others. This is done with the aim of closing the gap left open by the lack of case law and legal literature.

In his comprehensive contribution, he examines the following aspects in detail:

  1. the work title – definition and delimitation
  2. the origin of title protection
  3. expiry of title protection
  4. enforcement of title protection rights

In conclusion, he comes to the conclusion that some relevant legal questions concerning title protection law, which is highly relevant in practice, are still open and that parts of the previous case law should be critically questioned. The latter would lead to a corresponding need for advice, especially as the popularity and reach of titles should not be underestimated.

Read the entire article (in German) by Fabio Adinolfi entitled “Der kennzeichenrechtliche Werktitelschutz – das Aschenputtel unter den Kennzeichenrechten“ in the 12/2023 issue of GRUR from page 858 onwards. Registered users of Beck-Online can download it here.

Dr. Rudolf Böckenholt comments on the ruling of the Berlin Regional Court on the subsidization of a cultural magazine in GRUR-Prax 11/2023

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A cultural magazine published by a sovereign body may not be subsidized without a sufficient basis for authorization (Berlin Regional Court judgment, February 23, 2023, 52 O 64/22).

In the issue 11 /June, 7, 2023 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis Immaterialgüter- und Wettbewerbsrecht” BOEHMERT & BOEHMERT partner and attorney-at-law Dr. Rudolf Böckenholt explains a hotly debated decision of the Berlin Regional Court of February 23, 2023 (52 O 64/22, GRUR-RS 2023, 4645) on the question of whether the cultural magazine “Sinn und Form”, which is published and distributed by the Berlin Academy of the Arts, may be subsidized in order to cover its costs.

In the absence of a corresponding basis for authorization, the Berlin Regional Court answered this question in the negative and prohibited the Akademie der Künste from continuing to pay the cultural magazine cover contributions. The lawsuit was brought by the competitor “Lettre International,” which felt that these payments distorted competition. Without sufficient legal authority to engage in press activities at all and in a specific area, a sovereign body violates the requirement that the press be independent of the state and thus unfairly interferes with otherwise free competition.

Fabio Adinolfi comments on ECJ judg­ment T-423/21 on the question of like­lihood of confu­sion between two trade marks registered for fish products in GRUR-Prax

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In issue 9/2023 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht, Praxis im Immaterialgüter- und Wettbewerbsrecht” BOEHMERT & BOEHMERT attorney at law Fabio Adinolfi discusses the ECJ judgment T-423/21 of 14.09.2022 on the likelihood of confusion of word/figurative marks.

In this judgment, the court follows the decisions of the lower instances and confirms the likelihood of confusion of two trademarks registered for fish products. A stylized fish as the dominant image in the younger mark was not found to be distinctive.

Attorney at law Fabio Adinolfi welcomes the ECJ ruling, as it puts a stop to the popular strategy of adding a figurative element to word marks in order to prevent a possible likelihood of confusion with third-party marks.

According to Fabio Adinolfi, figurative elements are only distinctive and suitable for avoiding collisions if they have no relation to the own goods and services sought.

Read the complete discussion of the ECJ judgment by Fabio Adinolfi in german language in the issue 09/2023 of GRUR-Praxis! Registered users of Beck-Online can download it here.