Dr. Andreas Dustmann, LL.M.
Dr. Andreas Dustmann, LL.M.
Attorney at Law (Germany)
Contact
Kurfürstendamm 185
10707 Berlin
Germany
T +49 (30) 23 60 76 70
F +49 (30) 23 60 76 721
Plaza Santisima Faz, 3 -1 / B
03002 Alicante
Spain
T +34 (965) 21 53 99
F +34 (965) 21 39 65
Andreas Dustmann studied law at the University of Heidelberg, Complutense University of Madrid, and University of Cologne. He obtained the degree of Master of Laws (LL.M.) at the University of Edinburgh in 1995. In his doctorate work, Andreas Dustmann was concerned with the liability of internet service providers for online copyright infringement. From 1998 to 1999, he was a research fellow at the Max-Planck Institute for Comparative and International Private Law in Hamburg. In 2001, Andreas Dustmann joined BOEHMERT & BOEHMERT and became a partner in 2007.
Legal areas
Industries
Andreas Dustmann acts on behalf of his clients including domestic and foreign undertakings in a wide range of intellectual property work. He is well known, among other things, for the legal representation of some US film studios in the fight against internet piracy. He has been a legal advisor for the construction of several video-on-demand portals and eCommerce platforms, and provides ongoing counsel to media companies, agencies, and dealers on legal issues of the internet. Another focus of his work is representation in court proceedings. For years he has represented clients in complex legal disputes, especially in the area of unfair competition, copyright, trademark, and design law. He is also increasingly active in patent litigation. Clients appreciate his ability to work towards solutions for cost-effective, amicable settlement.As a specialist in domain law and practice, Andreas Dustmann acts in domain name disputes both before the German courts and in arbitration before the World Intellectual Property Organization (WIPO). Besides his litigation practice, he manages the trademark and design portfolios both for medium-sized and globally operating companies.The JUVE Handbook 2016/2017 has once again selected Andreas Dustmann as one of the specially recommended lawyers for trademark, unfair competition, and media law in the state of Brandenburg. He regularly writes on copyright and internet law topics and has been a lecturer on copyright law at the University of Potsdam since 2010.Andreas Dustmann is a co-author of the Praxishandbuch Geistiges Eigentum im Internet (Practical Handbook on Intellectual Property in the Internet, 2003), the Handbuch Kunstrecht (Handbook on Arts Law, 2nd edition 2012), and the Fromm/Nordemann Commentary on Copyright Law (11th edition, 2014).Since 2007, he has chaired the specialist lawyers’ committee on copyright and media law for the state of Brandenburg, and is a member of the German Association for the Protection of Intellectual Property (GRUR) and of UNION.
Further information about Dr. Andreas Dustmann
Dr. Volker Schmitz-Fohrmann, MJur (Oxford)
Dr. Volker Schmitz-Fohrmann, MJur (Oxford)
Attorney at Law (Germany)
Contact
Pettenkoferstraße 22
80336 Munich
Germany
T +49 (89) 55 96 80
F +49 (89) 55 96 85 090
Volker Schmitz-Fohrmann focuses on clearance searches and strategic advice regarding the development, maintenance, and enforcement of trade mark portfolios. He also has an important litigation practice in trade mark design and unfair competition matters. Furthermore, he handles anti-counterfeiting work for his clients. His clients include German medium-sized companies as well as multinational corporations. He is also the attorney responsible for the BOEHMERT & BOEHMERT office in Paris.
Legal areas
Volker Schmitz-Fohrmann studied law at the University of Munich, at the European Institute of the University of Geneva, and at St. John’s College, Oxford. He worked as a research associate at the Humboldt University of Berlin. As a scholarship holder, he obtained his doctorate working on the effects of the free movement of goods on national unfair competition law.
Volker Schmitz-Fohrmann regularly gives presentations about German trade mark law in Germany and abroad. He is a lecturer at the University of Applied Sciences Munich. He is co-author of the Manual of Intellectual Property of the Internet, Fromm/Nordemann: Commentary on German Copyright Act, as well as Götting/Nordemann: Commentary on German Act against Unfair Competition.
The JUVE Manual 2019/2020 recommends him in the category “Trade Mark & Competition Law.” Legal 500 Germany 2015/2016 counts him among recommended lawyers in Trade Mark Law who often represents his clients before the courts.
In the 2018 edition of WTR 1000 he is praised for his “Tremendous theoretical knowledge,” and in the Who’s Who Legal Trademarks 2018, he is named as “one of the best” trade mark lawyers in Germany.
Volker Schmitz-Fohrmann is member of the German Association for the Protection of Intellectual Property (GRUR), the Association des Praticiens du droit des marques et des modèles (APRAM), and the International Trademark Association (INTA) for which he has served on various committees.
Further information about Dr. Volker Schmitz-Fohrmann
Malte Nentwig, LL.M.
Malte Nentwig, LL.M.
Attorney at Law (Germany)
Certified IP Lawyer
Contact
Hollerallee 32
28209 Bremen
Germany
T +49 (421) 340 90
F +49 (421) 349 17 68
Malte Nentwig provides advice in trade mark law. This includes, in particular, strategic advice on how to develop suitable trade mark portfolios. He has a strong focus on German as well as international trade mark searches. For his German and international clients, he is responsible for the filing of trade marks at the German Patent and Trade Mark Office, the European Intellectual Property Office, and the World Intellectual Property Office, as well the coordination of worldwide applications abroad.
Legal areas
Malte Nentwig has longstanding experience in the maintenance of international trade mark portfolios, including watching services for the detection of potential infringement. He advises on how to protect, strengthen, and enforce trade marks. For his clients, he files opposition against infringing third parties and he acts as a litigator in trade mark infringement procedures.In matters of design patent law, he advises clients on how to obtain protection and how to enforce design patents. In competition law matters, he advises clients in relation to their planned marketing as well as product campaigns, and is also acting as a litigator in court procedures, including requests for preliminary injunctions.Malte Nentwig studied law at the University of Kiel and the University of Munich, Germany, as well as the University of Queensland, Australia (LL.M.). Malte Nentwig joined BOEHMERT & BOEHMERT in 2004 and made a secondment with an international blue chip company. As a German lawyer, he was awarded “Fachanwalt für den Gewerblichen Rechtschutz” (Specialist in IP Law).Malte Nentwig is the co-author of the chapter on patent law in the practitioners guide “Achenbach/Ransiek/Rönnau Handbuch Wirtschaftsstrafrecht,” as well as co-author (with Prof. Heinz Goddar) of the German chapter in “Manual IP, Kluver Law International”.Malte Nentwig serves on the expert IP-Committee for the Bar Association Hanseatische Rechtsanwaltskammer Bremen. He is a member of the Design Committee at the International Trademark Association (INTA) and an Overseas Member of Chartered Institute of Trade Mark Attorneys (CITMA) as well as of the Intellectual Property Society of Australia and New Zealand (IPSANZ).Since 2018, Malte Nentwig has been listed as a recommended lawyer in the practice area of intellectual property law for Germany by Best Lawyers.
Further Information about Malte Nentwig
Dr. Sebastian Engels
Dr. Sebastian Engels
Attorney at Law (Germany)
Contact
Kurfürstendamm 185
10707 Berlin
Germany
T +49 (30) 23 60 76 70
F +49 (30) 23 60 76 721
Sebastian Engels advises clients in all aspects of trade mark, copyright, and unfair competition law. He works with German and international clients to develop IP strategies both in Germany and abroad. As a special focus of his expertise he is advising and representing E-Commerce and IT-providers amongst others with regard to consumer protection regulations, transactional matters, data protection law, and domain name law. Sebastian Engels represents clients in all types of intellectual property disputes, including trade mark, trade dress, copyright, and unfair competition matters.
Legal areas
Industries
He has successfully handled cases throughout the litigation process before courts, the European Intellectual Property Office (EUIPO) and the German Patent and Trade Mark Office (GPTO).
Sebastian Engels studied law at the University of Constance (Germany) and the University of Cork (Ireland), specializing in competition law and intellectual property. During his legal clerkship in Berlin he gained practical experience working for the competition department of the German Federal Ministry of Economics and a major German film production company. His doctoral thesis focused on the admissibility of territorial IP licensing within the European Single Market.
Since joining BOEHMERT & BOEHMERT in 2011, Sebastian Engels handles all aspects of intellectual property and unfair competition law.
He is a member of the German Association for the Protection of Intellectual Property (GRUR).
Further information about Dr. Sebastian Engels
Peter Gross, LL.M. (Aberdeen)
Peter Gross, LL.M. (Aberdeen)
Attorney at Law (Germany)
Certified IP Lawyer
Contact
Pettenkoferstraße 22
80336 Munich
Germany
T +49 (89) 55 96 80
F +49 (89) 55 96 85 090
Peter Gross has focused his activities on the development of trade mark strategies, and he is very experienced in the defense and enforcement of intellectual property rights within Germany and abroad.The owners of large trade mark portfolios as well as companies who are at the early stages of setting up their trade mark and IP rights find him to be a competent legal advisor.
Legal areas
Industries
Furthermore, he conducts infringement proceedings in patent, trade mark, competition and design law matters. He also has a great deal of experience in the field of sales and distribution of me-too products.
His clients value the fact that he not only focuses on the legal issues, but that he also focuses on developing a clear and practical approach with regard to how legal problems can be settled as quickly and as cost-effectively as possible. He never loses sight of the economic consequences of a proposed solution in infringement proceedings, so it is not uncommon that preference is given to a pragmatic approach instead of a lengthy judicial dispute.
After having completed his studies in law at the University of Regensburg, he spent one year at the University of Aberdeen, Scotland, on a postgraduate course as an ERASMUS scholar where he obtained his Masters of Law (LL.M.) degree. In addition, he worked as a research associate from 1998 to 2003 at the University of the German Federal Armed Forces, Munich, at the Institute for Comparative Business Law, Technology Law, and Procurement Law.
Peter Gross began his legal career in 2001 in a patent law firm where he built up and expanded the legal side of the practice. After being partner there for five years, he joined the Munich office of BOEHMERT & BOEHMERT.
He is co-author of the practice handbook “Intellectual Property in the Food Industry”. Peter Gross is recommended in the Managing Intellectual Property IP Stars Handbook 2015 and in “WTR 1000 – The World’s Leading Trademark Professionals 2019”. He is also repeatedly recognized as a “Best Lawyer” 2023 by the trade publisher Best Lawyers.
Peter Gross is a member of the German Association for the Protection of Intellectual Property (GRUR), the International Trademark Association (INTA), the German Bar Association (DAV), the German-Turkish Lawyers Association, and the Munich Bar Association.
Use of trademarks for reseller websites
It is settled case law that the use of a trademark in a domain name can constitute a “use as a trademark”. The Federal Court of Justice has now further defined the legal constraints for a use of such domain names by (re)sellers and thereby strengthened the rights of owners of well-known trademarks.
It is well established that the use of a trademark in a domain name that refers to a website offering goods or services covered by the trademark generally constitutes a trademark infringement.
It has, however, been a matter of dispute whether and to what extent sellers or resellers of branded goods are entitled to use domain names containing the trademark for their websites and online shops. The German Federal Supreme Court has now defined the criteria for the admissibility of such use in relation to well-known trademarks in more detail, thereby strengthening the rights of the owners of well-known trademarks (BGH, judgement of June 28, 2018 – I ZR 236/16 – keine-vorwerk-vertretung).
In the case in question, the proprietor of an online shop for used Vorwerk vacuum cleaners as well as spare parts and accessories for Vorwerk products from various manufacturers had operated an online shop under the domain name keine-vorwerk-vertretung.de. The owner of the well-known trademark Vorwerk took action against this practice based on an alleged trademark infringement. The operator of the online shop referred in the first place to the fact that he was entitled to use the trademark pursuant to the exemption in Section 23 Para. 1 No. 3 German Trade Mark Act, since he used the trademark for the purpose of identifying the goods offered on the website as those of the owner of the trademark or as an indication of the intended purpose of the goods as accessories or spare parts for Vorwerk products. Furthermore, he argued that his right to use the trademark in the domain name followed from Section 24 German Trade Mark Act as the trademark rights of the trademark owner had been exhausted with regard to the used goods offered on the website.
The Federal Court of Justice followed the online shop operator’s line of argument to the extent that it confirmed that the use of a well-known trademark in the domain name of a reseller who – in addition to the trademarked goods – also sells compatible products of other manufacturers, represents an indication of the intended purpose of the goods within the meaning of Section 23 No. 3 German Trade Mark Act. At the same time, however, the court found that there were more adequate alternatives available for the reseller to indicate the compatibility of his products. The use of the trademark in the domain name was furthermore found to be contrary to moral standards because it also serves to draw the attention of potential customers to the range of goods offered under the domain. The trademark was thus used in the domain name for advertising purposes exceeding the incidental advertising effect associated with the necessary indication of the intended use of the products. Accordingly, the use in question was not found to be privileged pursuant to Section 23 para. 2 German Trade Mark Act and constitutes a trademark infringement.
Since the court of appeal had not provided sufficient reasoning in relation to the possible exhaustion of the plaintiff’s rights in the trademark, the case was referred back to the lower instance court. The Federal Court of Justice, however, inidcated that by using a well-known trademark in a domain name, the reseller illegitimately exploits the advertising effect resulting from the trademark’s reputation for promoting his online shop. The owner of the well-known trademark is thus entitled to prohibit the use of the trademark notwithstanding the principle of exhaustion.
Even though the judgment concerns a well-known trademark, it contains general considerations defining legal limitations to the use of trademarks in domain names. According to the considerations of the Federal Court of Justice, the use of a trademark as part of a domain name is more than a mere indication of the compatibility of one’s own products with the trademarked goods. Rather, it has a considerable advertising effect which surpasses the usual advertising effect associated with the necessary indication of the intended use. Though it remains to be seen how this decision will be received by the lower instance courts, resellers will probably find it more difficult in the future to justify the use of a trademark as part of the domain name without a prior permission by the trademark owner.