Dr. Eckhard Ratjen in the “JUVE Handbook of Commercial Law Firms 2022/23” on the reform of the Unfair Competition Act and the weakening of the flying venue rule

/in

Until the UWG reform came into force in December 2020, it was possible for companies to bring Internet-related competition infringements before a freely chosen regional court. This option – called “flying jurisdiction” – was significantly restricted with the reform of the Act to Strengthen Fair Competition and the newly introduced §14 Abs. 2 S. 3 Nr. 1 UWG.
But what scenarios result from this decision? How should companies decide in the future if they intend to pursue Internet-related competition violations in court?

BOEHMERT & BOEHMERT partner and attorney Dr. Eckhard Ratjen provides answers to these questions in his article “UWG-Reform: Was die Abschwächung des fliegenden Gerichtsstands für Unternehmen bedeutet” (UWG-Reform: What the weakening of the flying jurisdiction means for companies), which was recently published in the JUVE Handbook of Commercial Law Firms 2022/23.
In addition to a review of the decision-making practice to date, Eckhard Ratjen points out the consequences that companies will have to reckon with from now on, also due to the lack of expertise of some courts of instance and gives valuable tips for practice.

The complete article by Dr. Ratjen in German is available for download as a PDF here.

Fabio Adinolfi in WTR Daily on an CJEU decision on the jurisdiction of EU trade­mark courts for counterclaims

/in

In his article “CJEU: EU trademark courts keep jurisdiction for counterclaims even if main action has been withdrawn” on the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney at law Fabio Adinolfi discusses a decision of the Court of Justice of the European Union (CJEU) in case C-256/21 of October 13, 2022, KP v. TV.

In it, the court clarifies that an EU trademark court still has jurisdiction to rule on the validity of a trademark in the context of a counterclaim even if the infringement action has been withdrawn.

The decision was issued in the context of a reference for a preliminary ruling from the Higher Regional Court of Munich and will avoid unnecessary proceedings with the risk of contradictory decisions in the future.

Registered users of WTR Daily can access the full article in English online here!

Dr. Rudolf Böckenholt on disguised advertising and surreptitious advertising in the current edition of the Münchener Anwaltshandbuch Gewerblicher Rechtsschutz

/in

In the now 6th edition, BOEHMERT & BOEHMERT partner and attorney Dr. Rudolf Böckenholt discusses in his article “Tarnung des kommerziellen Zwecks geschäftlicher Handlungen” (Camouflaging the commercial purpose of business acts) the fundamentals and characteristics of the prohibition of camouflaged advertising and surreptitious advertising in the Münchener Anwaltshandbuch Gewerblicher Rechtsschutz.

The prohibition of camouflaging the commercial purpose of business acts is dealt with in terms of constitutional law, competition law as well as press and media law, in particular with regard to advertising in editorial form and statements by supposedly neutral third parties in scientific publications, product tests and rankings. Particular emphasis is placed on the evaluation of influencer marketing.

Dr. Böckenholt’s article can be found in the printed edition of the Münchener Anwaltshandbuch Gewerblicher Rechtsschutz under §21 on pages 697-724.

Felix Hermann in „The Patent Lawyer” on the EPO’s new guidelines for examination at the EPO and their implications on the examination procedure for patent applicants

/in

In 2018, the European Patent Office (EPO) began revising section F.IV.4 of the EPO Guidelines for Examination related to clarity and interpretation of claims. The focus of the amendments was on the adaption of the description of patent applications to the (amended and allowable) claims required for the grant of European patent applications. These new guidelines, and their imposed legal risks and increase on the work and costs for applicants have led to an ongoing debate between the EPO and the user community.

In the September/October 2022 issue of “The Patent Lawyer”, BOEHMERT & BOEHMERT partner and patent attorney Felix Hermann provides a comprehensive insight into the discussion as well as the legal issues involved. In addition, he highlights the impact of the revised EPO Guidelines for Examination 2022 on the EPO’s examination of European patent applications.

The article by Felix Hermann is available here on page 11 of the download PDF.

Dr. Florian Schwab discusses European Court ruling on long-running GUGLER case in WTR Daily

/in

In the online portal of the trade journal World Trademark Review, Boehmert & Boehmert partner and attorney Dr. Florian Schwab reports on the dismissal of Gugler France’s action against the European Union Intellectual Property Office (EUIPO) for cancellation of the GUGLER trademark due to bad faith filing before the General Court (GC).
The judgment of July 13, 2022, puts a (temporary) end to the long-standing legal dispute between the parties Gugler France and Gugler GmbH.

Dr. Florian Schwab concludes that in the decision (Case T-147/21), the court applied the dazzling concept of bad faith in the application for an EU trademark in the context of former business partners and quite appropriately denied its existence based on the specific circumstances.

Read the entire article. This article previously appeared on WTR Daily (part of World Trademark Review) on August 10, 2022. For more information, please visit: www.worldtrademarkreview.com.

 

“Trademark Law Aspects of Real Estate Business Law” – Article by Dr. Rudolf Böckenholt in the multidisciplinary “Handbuch Immobilienwirtschaftsrecht”

/in

In the first edition of the “Handbuch Immobilienwirtschaftsrecht”, published in 2022, BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt discusses trademark aspects of real estate business law.

This concerns protection concepts, utilization and exploitation concepts, transfer of rights, infringement claims and expiration of protection of trademarks and business designations in the context of the real estate industry, from planning to construction to management and exploitation of real estate projects.

Das “Handbuch Immobilienwirtschaftsrecht” covers the entire life cycle of a real estate project, starting with project organization, through acquisition, utilization, operation and real estate financing, to real estate capital market law and exploitation, in each case taking into account the framework of civil and public law. The Handbook of Real Estate Business Law is edited by Guido Meyer, lawyer and head of the legal department of a real estate business in Düsseldorf. It unites as authors scientists and practitioners in a cross-disciplinary new standard work.

Dr. Rudolf Böckenholt discusses in GRUR-Prax ECJ decision on missing a time limit for appeal during a pandemic

/in

In issue 10/2022 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht” BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt discusses a decision of the ECJ of March 24, 2022 (T-544/21, GRUR-RS 2022, 6292) on missing a time limit for appeal during the Covid-19 pandemic.

“Chaotic conditions during the Covid 19 pandemic are neither unforeseeable nor force majeure”

The court states that fortuity and force majeure only exist in the case of objective, extraordinary circumstances with inevitable consequences outside the sphere of influence of the affected party, against which the latter cannot subjectively take precautions without making unreasonable sacrifices in order to avoid a legal disadvantage.

At the time of service of the first-instance decision in the fall of 2021, the Covid 19 pandemic had not been an abnormal or unforeseeable circumstance, but had been known for more than a year, and restrictions on public and private life no longer changed this, insofar as the lockdown had not been complete. Appropriate precautionary and preparatory measures would have to be taken to ensure the processing of deadline-bound transactions within a prolonged global pandemic situation.

Dr. Böckenholt’s article in German can be found in the printed edition of GRUR-Prax 10/2022 of May 18, 2022 on page 297 or for subscribers of Beck-Online here.

Dr. Martin Schaefer comments in GRUR on the ECJ ruling: Compensation obligation for stored private copies of protected works in the cloud – Austro-Mechana/Strato

/in

In GRUR issue 8/2022, 558 of April 15, 2022, BOEHMERT & BOEHMERT partner and attorney at law Dr. Martin Schaefer comments on a decision of the European Court of Justice of March 24, 2022 – C-433/20 (Austro-Mechana/Strato) on the mandatory statutory remuneration for private copies of protected works stored in the cloud. 

The background is the legal dispute between GEMA´s Austrian sister organisation, Austro-Mechana, and Strato AG, a German provider of cloud services. The Vienna Higher Regional Court had submitted a request for a preliminary ruling to the European Court of Justice, concerning two questions relating to Art. 5 II lit. b InfoSoc Directive (2001/29). 

In his note to the ECJ judgement in GRUR 2022, 558, Dr. Martin Schaefer comments on the argumentation, employed by the ECJ, followed by conclusions presenting ideas for new ways to deal with the situation created by the CJEU´s ruling. 

Users of GRUR can download the commentary by Dr. Martin Schaefer here.

Dr. Ute Kilger writes about the “Digitalisation of Medicine” in the trade magazine Plattform Life Sciences

/in

The digitalisation of medicine – a challenge also for patenting 

Artificial intelligence, augmented reality, robotics, machine learning and big data are the trends and challenges of our time and will also revolutionise our healthcare system.
But how can innovations in these technical fields be protected? What needs to be considered when patenting software-based processes? After all, therapeutic and diagnostic procedures on the human body as well as software are generally excluded from patentability in Europe.

BOEHMERT & BOEHMERT partner and patent attorney Dr. Ute Kilger deals with these questions in her article “Digitalisation of Medicine” in the March 2022 issue of the trade journal Plattform Life Sciences.
In this article, Dr. Kilger appeals to take these new challenges into consideration when drafting a patent application and summarises that corresponding technical expertise with regard to software, medical devices and life sciences will be indispensable in the future.

The article by Dr. Ute Kilger on page 44 of the journal is available online in German here.

“General Court overrules previous instance: No likelihood of confusion between CODY’S and CODE-X for marks in beverages sector” – Article by Dr. Florian Schwab in WTR

/in

On the online portal of the trade journal World Trademark Review (WTR), BOEHMERT & BOEHMERT partner Dr. Florian Schwab discusses a recent trademark law decision of the General Court in (T-198/21) Ancor Group GmbH v. European Union Intellectual Property Office (EUIPO) of February 23, 2022. 

The court set aside the decision of the Board of Appeal of the EUIPO and – upholding the decision of the Opposition Division – finally rejected the opposition based on the word and figurative marks CODY’S against the word mark CODE-X (essentially each claiming beverages in class 42 of the Nice classification). 

In contrast to the Board of Appeal, the European judges found no likelihood of confusion between the marks. They based their decision primarily on the fact that CODY’S and CODE-X are visually and phonetically similar, at most, to an average degree. The hyphen creates a syllabic and visual break, which does not apply to the apostrophe. For goods in the beverage sector, it cannot be assumed that they are primarily ordered orally (for example in a busy and noisy bar where phonetic differences may not be clearly perceived) and, thus, the phonetic comparison is not per se primarily relevant. 

In Dr. Schwab’s opinion, the result reached by the court is convincing. It is worth noting that the overruling of the Board of Appeal is more the exception than the rule in EU trademark matters. 

The full article in English is available online for registered users of WTR here!