New Commentary “Ingerl/Rohnke/Nordemann – Markengesetz: MarkenG” 2023 in fourth edition with substantial participation of BOEHMERT & BOEHMERT Attorneys at Law

2. February 2023/in Publications Trade Marks

In the recently published commentary “Ingerl/Rohnke/Nordemann – Markengesetz: MarkenG” in its fourth edition, no less than five BOEHMERT & BOEHMERT partners and attorneys-at-law can be found in the team of 14 authors. In addition to Dr. Andreas Dustmann, LL.M., Dr. Sebastian Engels, Dr. Ludwig Kouker and Dr. Volker-Schmitz-Fohrmann, Dr. Martin Wirtz also comments in the newly revised standard work.

The commentary, which is aimed at lawyers and patent attorneys, as well as companies and courts, sets high quality standards due to its precise and well-founded argumentation. It deals trademark related decisions of national as well as European courts.

The commentary “Ingerl/Rohnke/Nordemann – Markengesetz: MarkenG” is published by C.H. Beck in German language and can be ordered from the online bookstore beck-shop.de.

Fabio Adinolfi discusses ECJ judgment in GRUR-Prax on the use of a 3D trademark preserving rights despite the addition of further elements

11. January 2023/in Publications Trade Marks

In issue 23/2022 of “GRUR-Prax – im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOHEMERT attorney Fabio Adinolfi discusses the judgment T-273/21 of the ECJ of 26.10.2022 on the right-preserving use of a 3D trademark.

With its judgment, the court overturned the previous decisions of the Cancellation Division and the Board of Appeal of the EUIPO. It recognized the registered shape of the used shape of a baby bottle for sweets without deviations. Also, the application of colored word marks and other figurative and word elements on the surface of the bottle did not interfere with the recognizability by consumers of the 3D mark, which was registered in Class 30 in 1999 without color.

Read the full discussion of the ECJ ruling by Fabio Adinolfi in issue 23/2022 of GRUR-Praxis. Registered users of Beck-Online can download the article in German here.

“No overall assessment of unrelated evidence in trademark law” – Dr. Rudolf Böckenholt on the decision of the ECJ in a new GRUR-Prax article

9. December 2022/in Publications Trade Marks

In issue 23/2022 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht” BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt discusses a judgment of the ECJ of 12.10.2022 (T-752/21, GRUR-RS 2022, 26854) on the overall assessment of evidence in the context of proof of use.

The court held that the requirement of genuine use of a mark is not intended to assess commercial success, nor to control the economic strategy of a company. In considering whether use of a mark was genuine within the meaning of the statute, a comprehensive assessment of the concrete and objective evidence on file must be made.

The evidence could be subject to an interaction and be evaluated in an overall view, but only as far as this was objectively and concretely possible without mere probabilities or presumptions.

Evidence that is unrelated to each other cannot be evaluated together.

Dr. Böckenholts articel in German is available in the printed edition of GRUR-Prax 23/2022 or for subscribers of Beck-Online here.

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

31. October 2022/in Publications Trade Marks

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

5. October 2022/in Publications Trade Marks

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”

13. September 2022/in Publications Trade Marks

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. Andreas Dustmann, LL.M.

2. June 2022/in Alicante, Berlin Copyright, Designs, Domains, Licensing, Patent Litigation, Trade Marks, Unfair Competition Creative Industries, Electrical Engineering, Internet, Mechanical Engineering, Physics, Software / IT

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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, 2^nd edition 2012), and the Fromm/Nordemann Commentary on Copyright Law (11^thedition, 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

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Dr. Jin Jeon

2. June 2022/in Munich Designs, Employee Inventions, Licensing, Patent Litigation, Patent Valuation, Patents and Utility Models, Trade Marks Creative Industries, Electrical Engineering, Internet, Mechanical Engineering, Physics, Software / IT

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Dr. Jin Jeon

German Patent Attorney
European Patent Attorney
European Trade Mark and Design Attorney

Contact

Pettenkoferstraße 22
80336 Munich
Germany

T +49 (89) 55 96 80
F +49 (89) 55 96 85 090

Jin Jeon offers expertise in all areas of physics, especially semiconductor physics, optics, microfluidics, satellite communications, mechanics, and plasma physics. In addition, Jin Jeon is specialized in electrical engineering, information and communication technology, materials science, manufacturing engineering, and mechanical engineering. He has several years of experience in interdisciplinary research with experts from medicine, microbiology and chemistry, which makes him an expert also for multidisciplinary technologies.

Jin Jeon assists clients in the preparation and prosecution of intellectual property applications as well as in the enforcement of intellectual property rights in Germany and Europe.

Legal areas

Industries

Jin Jeon studied technical physics at the Technical University of Munich with a focus on energy sciences and plasma physics. His diploma thesis deals with the investigation of the scattering of electromagnetic waves by plasma crystal in high vacuum using ellipsometry.

He received his PhD from the Max Planck Institute for Extraterrestrial Physics in Garching in collaboration with the Ludwig Maximilian University of Munich in the field of plasma medicine, in which cold atmospheric plasmas are used for antimicrobial purposes. During his research, he designed and generated dielectric barrier discharges that were used to interact with various microorganisms. The plasma chemistry was investigated optically under various atmospheric and electronical conditions with respect to antimicrobial activity.

Jin Jeon is bilingual and speaks German and Korean as a native speaker. He speaks business fluent English.

He joined BOEHMERT & BOEHMERT in 2015.

Dr. Eckhard Ratjen, LL.M. (London)

2. June 2022/in Bremen Copyright, Designs, Information Technology, Licensing, Trade Marks, Unfair Competition

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Dr. Eckhard Ratjen, LL.M. (London)

Attorney at Law (Germany)
Certified IP Lawyer

Contact

Hollerallee 32
28209 Bremen
Germany

T +49 (421) 340 90
F +49 (421) 340 17 68

Eckhard Ratjen works in the field of trade mark law and law of unfair competition as well as copyright. His practice concentrates, among other things, on the prosecution of trade mark applications, infringement proceedings, and preliminary injunctions. Eckhard Ratjen advises medium sized and large international and German clients in areas such as media and consumer products. He also enthusiastically assists start-up companies in all areas of intellectual property law.

Legal areas

Eckhard Ratjen studied law at the University of Kiel (Christian-Albrechts-Universität zu Kiel) with special emphasis on intellectual property. In his doctoral thesis, he was concerned with the audiovisual marketing of sporting events with particular regard to film copyright issues. Eckhard Ratjen studied the international law of trade marks and copyright at the renowned King’s College London from 2012 to 2013. There, he obtained a Specialist Master of Laws (LL.M.) in intellectual property law. Stages of his legal clerkship included working for an internationally operating sports marketing company in Frankfurt/Main. He joined BOEHMERT & BOEHMERT in 2013 and qualified as a Certified IP Lawyer in 2019. Eckhard Ratjen is a member of the German Association for the Protection of Intellectual Property (GRUR).

Further information about Dr. Eckard Ratjen

HB_Dtld_Beste_Anwaelte2022_Dr_Eckhard_Ratjen

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Dr. Volker Schmitz-Fohrmann, MJur (Oxford)

2. June 2022/in Munich Designs, Domains, Licensing, Product Piracy, Trade Marks, Unfair Competition

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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

Recent publications

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University lectureships

Munich University of Applied Sciences
Digital Technology Management: Intellectual Property Rights and Legal Environment