In issue 8/2021 of "GRUR-Prax - Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht", BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt discusses a judgement of the Berlin Administrative Court of 23.02.2021 (VG 4 86.19, BeckRS 2021, 4332) on the mandatory indication of a basic price also for pre-packaged dry powders.
The court found that the indication of a basic price was in principle dependent on the fact that a product was offered by weight, volume, length or surface. However, it was not only the goods (in the sense of the dry mass) that mattered, but also labelling obligations due to other statutory requirement.
Accordingly, not only the dry mass was to be taken into account, but also the volume of the ready-to-eat preparation or the mass of the liquid required for preparation according to s. 20 II FPackV. Based on these values, a basic price had to be indicated.
The article by Dr. Böckenholt is available in German in the printed edition of GRUR-Prax 8/2021 of 21.04.2021 on page 242 or for subscribers of Beck-Online under the reference GRUR 2021, 242.
In his recent article "General Court confirms invalidity of EUTM on ground of bad faith due to prior contractual relationship" on the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr. Florian Schwab discusses a decision of the General Court of the European Union in case T-853/19 of 17 March 2021, Reza Hossein Khan Tehrani v. European Union Intellectual Property Office (EUIPO).
The General Court upheld the judgment of the Board of Appeal of the EUIPO on the cancellation of the EU trade mark registration EARNEST SEWN on the grounds of bad faith. This judgment contributes to this legal concept, which is difficult to categorise and which is often decided on a case by case basis by the EU Courts. It discusses the relevance of prior contractual relationships between the trade mark proprietor and the cancellation applicant for the assessment of bad faith filing.
Registered users of WTR Daily can access the full article in English online here!
The wonder weapon of every patent holder was injunctive relief. Even large companies were willing to take a seat at the negotiating table when threatened with an injunction against their allegedly patent-infringing products by small patent holders.
Now the new German Patent Act will contain a clause in § 139 that allows exceptions from automatic injunctive relief in a few individual cases, e.g. if the consequences for the infringer would be unreasonably severe.
BOEHMERT & BOEHMERT partner and patent attorney Dr. Ute Kilger discusses this amendment and its impact on legal certainty and willingness to invest in innovations in her article "Modernisation of patent law - boon or bane for patentees?" published in the Spring 2021 issue of the trade journal "European Technology", Volume 20.
The full article is available online here.
"Internationale Durchsetzung von Schutzrechten” (International Enforcement of Intellectual Property Rights) is the title of the jubilee publication with contributions by Germany’s most renown judges, lawyers and attorneys published by C.H.Beck Verlag in 2021 on the occasion of the 70th birthday of Germany’s “grande dame of patent law” Dr. Sabine Rojahn. Among the contributors is also BOEHMERT & BOEHMERT patent attorney Nils T.F. Schmid.
In his contribution entitled "(K)eine Frage des Alters - Patentverletzung infolge betriebsgemäßer Abnutzung" (A question of age? - patent infringement due to wear and tear), Nils T.F. Schmid discusses two patent litigation cases which provide particular insight into the influence of wear and tear on the interpretation and definition of technical property rights. He specifically analyses the current state of case law with regard to legal questions of infringement (§§ 9, 10 German Patent Act), novelty (§ 3 German Patent Act) and inventive step (§ 4 German Patent Act), points out implications for the definition of scopes of protection and derives possible conclusions for the future.
In his conclusion, Nils T.F. Schmid emphasizes the necessity of including wear and tear effects of products and devices in the formulation and interpretation of patent claims - not only for the assessment of infringement, but also within the application process, especially the definition of the scope of protection. A catalogue of criteria for the examination for calculable wear and tear tries to increase legal certainty for registered and examined intellectual property in respective technical fields.
"Internationale Durchsetzung von Schutzrechten" can be ordered at C.H.Beck Verlag under ISBN 938 3 406 75240 7.
In the journal of the Institute of Professional Representatives before the European Patent Office, BOEHMERT & BOEHMERT German and European Patent Attorneys Dr. Daniel Herrmann and Felix Hermann discuss under the title "G 1/19 released: The Enlarged Board of Appeal decides on the Patenting of Computer-implemented Simulations and Designs" a recent decision of the Enlarged Board of Appeal of the EPO on the patenting of computer-implemented simulations and designs.
The Enlarged Board of Appeal concludes that computer-implemented numerical simulations and designs of a system or process are not to be treated differently from other computer-implemented inventions, thereby rejecting "extreme positions" such as in the reference decision T 0489/14.
In their final assessment of the EPO decision, the authors point out that it will be even more difficult in future for patent applicants to claim and protect a simulation or design process independently of a particular and specific technical input or output or an implied use of the results of the simulation or design process.
Read the full article by Dr. Daniel Herrmann and Felix Hermann here!
Progressive digitalization - combined with artificial intelligence (AI) as well as growing computer capacities - is changing our lives permanently and is without doubt the central challenge for industries in the years to come.
However, what on the one hand offers a great opportunity for the protection and commercialization of intellectual property, on the other hand also poses the considerable risk of circumvention of IP rights and thus for undesired imitation. Furthermore, the question arises as to whether and how a distinction can be drawn between works of art or inventions generated by artificial intelligence and those created by humans. This question is of central importance for German law and prosecution, as the German idea of intellectual property is based on the idea of an author or inventor, and more strictly so than in any other country.
BOEHMERT & BOEHMERT patent attorney Nils T. F. Schmid addresses these issues in his article "Digitalization and Intellectual Property" in the information brochure of the Innovation Commission of the Federal Association for Economic Development and Foreign Trade (Bundesverband für Wirtschaftsförderung und Außenwirtschaft BWA) on the topic of "Artificial Intelligence".
Using the example of 3D printing, Mr Schmid looks at how 3D printing could influence intellectual property protection strategies and which legal issues will come to the fore as a result.
In the second part of the article, Nils T. F. Schmid deals in detail with the demarcation of AI-generated inventions against human-created works as well as with the resulting questions regarding patent protection for AI inventions and their ownership.
The article "Digitalization and Intellectual Property", which appeared in the aforementioned BWA brochure "Innovation", may be accessed here as a PDF in German.
On the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr. Florian Schwab discusses a decision of the General Court (Fifth Chamber) in Case T-261/19 20 January 2021, Stada Arzneimittel AG v. European Union Intellectual Property Office (EUIPO).
In this judgment, the Court upholds the decision of the First Board of Appeal of EUIPO that there is no likelihood of confusion between the EU figurative mark sign OPTIMAR and the earlier word mark MAR. For the latter, the evidence of genuine use was limited to "medical nasal sprays".
With regard to the identically covered element MAR, the Court considered a below-average distinctive character in view of the recognisably descriptive reference to "sea" for medical nasal sprays.
In the current edition of "GRUR - Zeitschrift der Deutschen Vereinigung für gewerblichen Rechtsschutz und Urheberrecht" (German Association for the Protection of Intellectual Property), BOEHMERT & BOEHMERT patent attorney Prof. Dr. Heinz Goddar devotes himself to the specific challenges for the patent system in the age of artificial intelligence (AI).
In his article with the original title "Patent System Solutions for AI and IoT Inventions", Prof. Dr. Goddar not only deals in detail with problems such as the patentability of AI-related inventions or the use of standard essential patents of competitors under FRAND conditions. He also warns of the consequences that a predictable multiplication of patent portfolios would mean for new developments based on AI and IoT and recommends using already existing conflict solution mechanisms of the patent system also with regard to AI and IoT.
The article was published on the occasion of Prof. Dr. Peter Meier-Beck's 65th birthday as a commemorative article in the 2/2021 issue of GRUR. Subscribers to Beck-Online can access it under GRUR 2021, 196.
If advertising material that was originally used for a patent-infringing product continues to be used as such, this may constitute an independent patent infringement. And this even if the advertised product has been technically modified in a way that a patent infringement is excluded.
BOEHMERT & BOEHMERT attorneys Dr. Michael Rüberg and Lars Eggersdorfer report on this judgement as well as a subsequent decision in a penalty payment proceeding of the Higher Regional Court of Düsseldorf in their article for the Indian trade journal "Legal Era" - combined with useful tips on how to deal with this problem in practice.
The full article in English entitled "Higher Regional Court of Dusseldorf decides on further use of advertising after product modification" is available online here.
In view of the large range of similar products, packaging is becoming increasingly important in the context of the purchase decision. The competition for new packaging formats and designs is correspondingly fierce. So it seems likely to protect not only the product but also its packaging under trademark law.
But under what conditions is it possible to register packaging as a trademark? When does trademark protection make sense at all? And which parts of a packaging can be protected as a trademark?
In an interview with Elisabeth Skoda from the online platform "Packaging Europe", BOEHMERT & BOEHMERT attorney Dr. Eckhard Ratjen answers these and other questions, explains practical examples and gives useful tips on the protection of product packaging under trademark law.
The interview is available as a podcast here!
In the December 2020 edition of "les Nouvelles Online", the trade journal of the Licensing Executives Society International, BOEHMERT & BOEHMERT attorney Dr. Rudolf Böckenholt provides detailed information about a decision of the German Constitutional Court in summer 2020 to strengthen the "equality of arms" of all parties in the injunction proceedings.
The background to this is the common practice for decades, according to which the defendant was only heard in the oral hearing upon objection, i.e. after the preliminary injunction had already been issued and was to be observed.
The German Constitutional Court is again putting paid to this procedure with its ruling in June and July of this year, after having already strengthened the rights of the defendant in September 2018.
According to the decision of the German Constitutional Court, the opponent must be given a legal hearing before a decision is made, and this must be on the specific subject matter in dispute. Both parties must be equally involved in the legal proceedings.
Subscribers of the LESI Magazine can download the detailed article by Dr. Böckenholt here!
In the 12/2020 issue of the journal "GRUR - Zeitschrift der Deutschen Vereinigung für gewerblichen Rechtsschutz und Urheberrecht" (GRUR is the German Association for the Protection of Intellectual Property, the largest and oldest association in Germany that is dedicated to the protection of intellectual property), on the occasion of two judgements of the German Federal Court of Justice, BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer analyses the current practice, in Germany, of basing commercial business models on exceptions and limitations of German copyright law that in their majority had been created for non-commercial use only.
Under the title „The Digital Private Copy in the Age of Exception Based Business Models”, Dr. Schaefer calls for such business models to be examined more closely than so far regarding their compatibility with the requirements of EU law.
The article is available in German only either in print or to subscribers on the Beck-Online platform under: GRUR 2020, 1248.
There is a growing recognition that for the market for copyrighted content to work, metadata is the grease that keeps the engine running. So far, all projects for centralized databases have failed. The reason lies in the instability of metadata. Is there a solution to the problem?
BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer examines this question in his blog article "Why metadata is important for the future of copyright" and describes as a possible approach a "metadata search engine" as a decentralised, non-commercial open source tool for research and enrichment of metadata. This blog post was published in English in the well-known Kluwer Copyright Blog under the title "Why Metadata Matter for the Future of Copyright" and is available here in full length.
About the Kluwer Copyright Blog
The Kluwer Copyright Blog is a publication of Kluwer Law International with information and news about European copyright law. It is compiled by a group of leading experts, consisting of practicing lawyers and academics, to report on the latest developments.
At what point in time may it be reasonable to start filing a patent application? Is there enough information in the application to make or perform the invention? And is the invention as defined in the claims sufficiently supported by the description as provided by the application, in order to work the invention across its full scope?
BOEHMERT & BOEHMERT patent attorneys Dr. Jan Krauß and Dr. David Kuttenkeuler answer these and other questions in their article in the January 2021 issue of the scientific journal "New Biotechnology". In addition, researchers are provided with information on the current status of disclosure requirements in the context of patenting in the field of life sciences.
The article in English is available here until 9 December 2020 without registration.
On the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr Florian Schwab reports on a decision of the Court of Justice of the European Union according to which the EU part of the international registration of the word/figurative mark "achtung!" was refused protection.
The CJEU thereby confirmed the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO), which had already rejected international protection of the trademark "achtung!" in 2019 due to a lack of distinctive character.
Dr Schwab summarizes the judgment as follows:
"The decision of the Court of Justice (ECJ) confirms the view of the previous instances that for the Union trademark part, an international registration of the word/figurative mark Achtung! of a German advertising agency for goods and services in various classes is devoid of distinctive character. The mark will be perceived by the German-speaking public only as an ordinary advertising message and not as an indication of commercial origin. Therefore, the finding of the lower courts that the mark is purely descriptive is in itself incorrect and irrelevant to the decision on the merits. Moreover, earlier conflicting decisions of national offices or even of the EUIPO on the identical sign do not preclude this".
The complete article in English is available here as a PDF document for download!
The Global Legal Group has published a new edition of the "International Comparative Legal Guide" on copyright law. The guide is aimed specifically at corporate lawyers and provides comprehensive information on copyright laws and regulations for 18 countries from Australia to Zimbabwe.
BOEHMERT & BOEHMERT lawyers Silke Freund and Dr. Sebastian Engels have taken over the part for Germany. In their article entitled "Germany: Copyright Laws and Regulations 2021", they provide an insight into the legal situation in Germany and deal in seven chapters with general questions on copyright subsistence, ownership and exploitation of rights, owner and enforcement rights as well as criminal offences and current developments.
Together with his research assistant, Ms. Melanie Müller, Dr. Rudolf Böckenholt takes the opportunity to contribute his expertise in the field of trademark law in the area of real estate business law, as far as the protection of the name of a property or a real estate project is concerned and the possibilities of exploiting this protection. The article is part of an interdisciplinary handbook published by C.H. Beck on all legal aspects of the real estate industry.
The publication of the work is planned for early summer 2021.
In issue 20/2020, Dr. Rudolf Böckenholt explains the decision of the Mannheim District Court (LG Mannheim), according to which the mere infringement of the legal requirements regarding file formats in electronic legal transactions with the courts does not mean that the document is deemed not to have been submitted, provided that the court can actually process the submitted format. The procedural document in DOCX format submitted in the dispute could be used as a representative document in PDF/A format due to the technical capabilities of the court. Dr. Rudolf Böckenholt describes that the litigant concerned was lucky in these proceedings, but that the decision cannot be generalised.
The magazine GRUR-Prax can be obtained from the publisher. Further details can be found here.
How can modern patent systems, in the face of huge portfolios, create freedoms to exploit and develop inventions in the field of AI/IoE? Additionally, how can it be guaranteed that SEPs can be used by competitors under FRAND conditions?
BOEHMERT & BOEHMERT partner and patent attorney Prof. Dr. Heinz Goddar explicates these and other questions - together with co-author Lakshmi Kumaran, Esq., Lakshmikumaran & Sridharan, Delhi, India - in the article "Patent Law Based Concepts For Promoting Creation And Sharing Of Innovations In The Age Of Artificial Intelligence And Internet Of Everything".
The paper, which has been available on the Elsevier portal "Social Science Research Network" (SSRN) since the end of 2019, has now been selected by LES International as article of the month and published on the society's website under "Les Nouvelles September 2020".
You can download the full article here!
The EU Directive on the "Digital Single Market" (DMS) must be transposed into German law by the beginning of June 2021. The subject of the controversial directive is copyright law in the digital single market and thus a whole bundle of legislative issues ranging from text and data mining to the preservation of cultural heritage and copyright contract law.
Special focus is given to Article 17 of the DMS Directive and thus the role of Online Content Sharing Service Providers (OCSSP) - providers of online services for user-generated content such as YouTube, Facebook, Instagram and Co.
For the general public, the Directive is linked to the debate about the so-called "upload filter", which is nothing more than the routine known for many years as "notice and stay-down" and which has been practiced without any problems. But it also raises licensing issues: Who needs a licence in connection with such user-generated content and who does not?
In his blog article "No General Third Party Effect!” on the portal of the company "Copyright Clearance Center" BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer provides answers and refers to old familiar structures which continue to exist unchanged in the new environment.
Read the complete article here!
The Copyright Clearance Center (CCC) is, according to own statements, a world leader in voluntary collective licensing and a promoter of copyright law. For more than 40 years, the company has been setting standards with its products and services for an efficient global market of exploitation rights and licensing solutions.
In the jungle of offers of similar products, not only the brand serves potential customers as orientation, but also the packaging of a product. Consequently, their protection under trademark law is often very important.
But how do you proceed when applying for registration of a packaging as a trademark? Which protection criteria must be fulfilled? And can any product packaging be protected as a trademark?
BOEHMERT & BOEHMERT attorney Dr. Eckhard Ratjen addresses these and other questions as well as prominent case studies in his detailed interview with the trade magazine "Tightly Packed".
Read the complete interview here (temporarily only available in German)!
In the "Summer Edition 2020" of the specialist magazine "European Biotechnology", BOEHMERT & BOEHMERT patent attorney Dr Laura Haas discusses a legal case before the Court of Justice of the EU which resulted in a specific set of rules for patent protection in the case of SPCs (Supplementary Protection Certificates).
In detail, the CJEU ruled that it is in principle possible to grant an SPC, even if the product is not specifically disclosed in the basic patent. However, a person skilled in the art must be able to deduce directly and unequivocally that the product falls within the scope of protection of the basic patent.
As a consequence of this CJEU ruling, Laura Haas, who holds a doctorate in biochemistry, sees the option that an infringement defense can be created based on a later obtained patent which is the result of "independent inventive activity" over a basic patent.
Read the detailed presentation of the ECJ decision here and learn more about the background (only available in English)!
The Global Legal Group has published the first edition of the "International Comparative Legal Guide - Digital Business 2020". The guide is aimed specifically at corporate attorneys and offers a comparative legal analysis of current legal requirements and topics for digital business.
Under the heading "Digital Business Laws and Regulations - Germany", BOEHMERT & BOEHMERT attorneys Silke Freund and Dr. Sebastian Engels provide an insight from a German perspective.
In eleven chapters, they deal with regulations for e-commerce, data protection, cyber security, cultural norms, brand enforcement online, cloud computing and further digital topics.
Every year, the editorial staff of IAM GLOBAL LEADERS talks to the elite of international patent and trademark attorneys about their insights into IP law, politics and practice and their many years of experience in the IP environment.
This year, Professor Dr. Heinz Goddar was also asked for an interview as "IP Hall of Famer", according to the IAM quote, and awarded the Gold Level of the IAM Patent 1000.
In it, Mr. Goddar talks about his professional career, his rewarding work as Professor of IP Law and his commitment to LES International, which culminated in the founding of LES Chinese Taipei and a fruitful cooperation with China.
Other topics include the challenges of managing big portfolios of patents, win-win situations and attorneyorney skills as prerequisites for business success, and new evolvements in the European patent environment.
Read the detailed interview with Prof. Dr. Heinz Goddar here!
Attorney Florian Schwab reports on a legal dispute before the Court of Justice of the European Union (CJEU) on genuine use of a collective mark in the online portal of the trade journal World Trademark Review.
In the case Der Grüne Punkt - Duales System Deutschland GmbH v European Court of First Instance (EUIPO) (C-143/19 P, 12 December 2019), the CJEU, overruling the judgment of the General Court, has given guidance on the genuine use of a collective mark. The court fundamentally strengthened this type of EU trade mark as proof of genuine use of a collective mark concerning a system of collection and recovery of packaging waste was also accepted for countless (every day consumer) goods (such as beverages, foodstuff or clothing) on whose packaging the collective mark was affixed. .
Read the whole article here.
The article was published on 09.01.2020 in WTR Daily (part of the World Trademark Review).
An article by BOEHMERT & BOEHMERT partner Dr Martin Wirtz was published in Issue 1/2020 of the Mitteilungen der deutscher Patentanwälte German patent attorney bulletin (p. 9 ff.), entitled “Aktuelles aus dem Markenrecht” (“Current issues in trademark law”). In this piece, attorney Dr Wirtz addresses a number of recent rulings and new developments in the field of trademark law. Although the author’s article, in his own words, “does not purport to be exhaustive”, he does take a detailed look at new developments within the field in 2019.
The following topics of trademark law are discussed: Registration/cancellation procedures, absolute grounds for refusal, identity protection/risk of confusion/protection based on reputation/protection of geographical origin, usage that preserves rights, infringing usage, proceedings.
The aforementioned article is the author’s 24th consecutive piece to be published. Dr Martin Wirtz has been writing reports about new rulings in the field of trademark law for the Mitteilungen der deutschen Patentanwälte German patent attorney bulletin for twelve years; these articles are published in the bulletin twice a year.
Read the whole article here (only available in German).
This year he would be 250 years old: Ludwig van Beethoven, eternal superstar of classical music and formative composer to the present day. Therefore, the efforts of numerous manufacturers to advertise their own products with "Beethoven" are undiminished. There is Beethoven beer, Beethoven tea, even a computer centre is adorned with the name of the famous composer. The list of entries in the trademark register is long. So the question remains, in what way the name of this unique musician may still be used without committing trademark infringement?
BOEHMERT & BOEHMERT attorney Dr. Sebastian Engels was interviewed on these topics by WirtschaftsWoche in the context of the article "Beethoven Anniversary Year - Who benefits from the Beethoven brand".
Read the complete article here!
Attorney Dr. Florian Schwab reported on the decision of the European Court of Justice in Hesse / EUIPO (TESTA ROSSA) in the online portal of the World Trademark Review (cases T-910/16 and T-911/16). In its decision from April 2019, the ECJ dealt with the procedural requirements for proof of use in the context of an application for revocation with regard to the trademark TESTA ROSSA registered for various goods.
Read the whole article here.
This article appeared on 30.04.2019 in the WTR Daily (part of the World Trademark Review).
In the "Journal of Intellectual Property Law & Practice" (jpz109, 04.09.2019) the article "The myth of the 'small patent for the small inventor'-strategic motives to use second-tier patent systems (utility models) in selected European countries" was published. The authors are all specialists in the field of utility model law, including patent attorney Prof. Dr. Heinz Goddar and attorney Dr. Carl-Richard Haarmann, both BOEHMERT & BOEHMERT.
In this article, the team of five authors explains the strategic use of utility models in the European context and possible adaptations: "There are at least six major parameters of first-tier patent systems that can be changed to create a UM-system. While this makes national UM systems highly heterogeneous, we found that changing certain parameters (like lowering the maximum term of protection compared to first-tier patents) may be in practice less problematic than changing others (like lowering the inventive step threshold)."
The whole article can be read via this link.
Writing in the online portal of the World Trademark Review, attorney Dr. Florian Schwab reports on the brand conflict of the eponymous motor vehicle manufacturer MAN regarding the Union trademark application MANDO. The European Court of Justice essentially held that there was no likelihood of confusion between the EU word mark MANDO and the higher ranking marks(Case T-698/17, 12 July 2019).
This article appeared on 08.08.2019 in the WTR Daily (part of the World Trademark Review).
As in the previous editions, BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer commented on recording company law in the German Copyright Act in the revised 5th edition of the now published "Practical Commentary on Copyright" by Wandtke/Bullinger (ed.).
The Wandtke/Bullinger commentary is regarded as a distinguished commentary by practitioners due to its strongly application-oriented approach.
The publication can be obtained from Beck Verlag.
Wandtke/Bullinger (ed.), Praxiskommentar zum Urheberrecht, 5th edition, Munich 2019, 5th, newly edited and extended edition 2019. ISBN 978-3-406-71159-6
Der Beitrag diskutiert die neuen Prüfungsrichtlinien des Europäischen Patentamts sowie die neuere Rechtsprechung der Beschwerdekammern und des Bundesgerichtshofes zur Frage, wann Anspruchsmerkmale, die auf mathematische Mehoden gerichtet sind, technischen Charakter haben und relevant für die Prüfung der erfinderischen Tätigkeit sind. Dies ist relevant für die Patentierung von Software für Simulationen, Designs, Model und KI. Ferner werden mögliche Effekte der aktuellen Vorlagefrage an die große Beschwerdekammer (G 1/19) auf die Praxis bei Patentanmeldungen auf diesen Gebieten diskutiert.
Den gesamten Artikel finden Sie hier.
Im Edward Elgar Verlag ist die zweite, komplett überarbeitete Auflage des Werkes „Copyright in the Information Society – A Guide to National Implementation of the European Directive“ von Brigitte Lindner/ Ted Shapiro (Hrsg.) erschienen. Das Werk beschreibt den Status quo der Umsetzung der Richtlinie zur Harmonisierung bestimmter Aspekte des Urheberrechts und der verwandten Schutzrechte in der Informationsgesellschaft in Europa.
In dieser überarbeiteten Auflage hat BOEHMERT & BOEHMERT-Rechtsanwalt Dr. Martin Schaefer zusammen mit Brigitte Lindner den Länderartikel "Germany" verfasst und auf den aktuellen Stand gebracht. „Providing a snapshot of the status quo of copyright protection in the member states, this book is an indispensable tool for the national implementation of the newly adopted Directive on Copyright in the Digital Single Market”, so der Verlag.
Das Werk kann über den Onlineshop des Elgar Verlages hier bezogen werden.
“Germany” in: “Copyright in the Information Society – A Guide to National Implementation of the European Directive, 2. Auflage, Cheltenham UK/ Northampton MA USA 2019, S. 367-410. ISBN: 978 1 78643 919 2
BOEHMERT & BOEHMERT Patent Attorney Dr Jan B. Krauß has contributed an article entitled "Current Developments in Biotechnology: Supplementary Protection Certificates on Fixed-Dose Combination Drugs “Combine: No clarity in sight!”" to the German-language publication "Mitteilungen der deutschen Patentanwälte" (2/2019, page 52 et seq). The article discusses recent case law from the ECJ on the question of when combinations of active substances are protected by a basic patent, as well as the possible impact of this jurisprudence to the practice of pharmaceutical patent registration.
"Mitteilungen der deutschen Patentanwälte" can be subscribed to here.
BOEHMERT & BOEHMERT Partner Dr Jan B. Krauss is co-author of the “Research Handbook on Patent Law and Theory” published in April 2019. The handbook provides a comprehensive comparative analysis and a current overview of pharma patent law in the US and European legal systems. The handbook, published in English, can be ordered as hardback (512 pages, Edward Elgar Publishing Ltd; 2nd Revised edition (26 April 2019), ISBN 978-1785364112).
C.H.Beck Verlag Munich has published the completely new 7th edition of the "Manual for the Music Industry" by Moser/Scheuermann/Drücke (ed.). BOEHMERT & BOEHMERT lawyer Dr. Martin Schaefer has written the article "Collective rights management in an international context" for this work. The manual is regarded as the standard work of the music industry; a total of 80 well-known authors provide an overview of all areas of the German music industry and its market participants as well as industry-specific legal issues and contract types.
The publication can be obtained from Beck Verlag.
Collective Rights Management in an International Context, In: Moser/Scheuermann/Drücke (Ed.), Handbook for the Music Industry, 7th ed. Munich 2018, pp. 228-246. ISBN 978-3-406-72028-4
The English-language edition of the commentary on the EU Portability Regulation (2017/1128) has just been published. The authors, Prof. Dr. Jan Bernd Nordemann and Dr. Sebastian Engels, are attorneys at BOEHMERT & BOEHMERT. They already contributed the German-language commentary for the 12th edition 2018 of the renowned Fromm/Nordemann Copyright Commentary.
The freely accessibly online magazine Journal of Intellectual Property, Information Technology and E-Commerce Law (JIPITEC) has now published the English-language commentary. Like every article in the JIPITEC, this is also freely accessible.
The comment can be accessed here; a pdf of the article can be found at the end of the page.
The 12th edition of the renowned commentary has now been published by Prof. Dr. Axel Nordemann, Prof. Dr. Jan Bernd Nordemann and Prof. Dr. Christian Czychowski and (with the exception of the section on copyright crime) has been revised exclusively by BOEHMERT & BOEHMERT lawyers.
This standard commentary for copyright practice includes all statutory innovations - including the Knowledge Society Copyright Act (UrhWissG) enacted on 30 June 2017 - as well as current German and European jurisprudence. The Publishing Act (VerlG) is also commented as is the Portability Ordinance, the first EU regulation in the field of copyright law. New additions include comments on Open Source Software as well as on plagiarism.
Editors from BOEHMERT & BOEHMERT:
Dr. Thomas W. Boddien
Prof. Dr. Christian Czychowski
Dr. Andreas Dustmann, LL.M.
Dr. Sebastian Engels
Prof. Dr. Axel Nordemann
Prof. Dr. Jan Bernd Nordemann, LL.M.
Dr. Anke Nordemann-Schiffel
Dr. Martin Schaefer
Dr. Volker Schmitz-Fohrmann, M. Jur.
Dr. Julian Waiblinger
Dr. Martin Wirtz
You can read an interview about the needs for the revision after just four years on the Beck Verlag website here.
Dr Florian Schwab reports on the complex trademark decision of the European Court of Justice from 20 February 2018 T-118/16) in the online magazine World Trademark Review.
The Court rejected the likelihood of confusion with the common element POST and rejected the claim brought by Deutsche Post AG.
In a detailed discussions, in particular regarding similarity of word elements, the Court found that the mark overall was sufficiently different due to the preceding word element BE and that the union trademark registration was valid.
In Edition 5/2018 (p. 134), Dr Rudolf Böckenholt explains the decision of the Saarland Higher Regional Court which held that, in accordance with §8(3)(2) UWG, associations must set out their active legitimation as regards member structure without giving rise to an actual presumption from previous actions against third parties.
The magazine GRUR-Prax can be accessed from the publisher. More details can be found at.
Commenting on the online portal of the World Trademark Review, solicitor Dr Florian Schwab explains two recent decisions of the Federal Supreme Court on the protection of 3D marks in the case of the square packaging used by Ritter Sport chocolate and Dextro Energy glucose.
The Federal Supreme Court reversed the restrictive approach applied by the Federal Patent Court and confirmed the liberal approach as regards the patentability of three-dimensional marks. Corresponding judgements with reasoning are still awaited. The Federal Supreme Court has up to now only released a press statements.
This article was published on 05.01.2018 in WTR Daily (component of World Trademark Review).
Dr. Markus Engelhard and Dr. Dennis Kretschmann offer their thoughts on the subject of “IP: Brexit and patents” in an article for online English-language magazine ‘European Biotechnology. Life Science and Industry Magazine’.
Is the unitary European patent on its way? How will Brexit affect the European patent system? The two experts explore this and other interesting questions in their article.
The article “Patent Proceedings in the US - Patent Holders can no longer choose their Court” by solicitor Dr Michael Rüberg and patent attorney Dr Dennis Kretschmann has now appeared in the December edition of ICC Germany Magazine by the International Chamber of Commerce (page 48, 05/2017).
The background: The US Supreme Court has limited the free choice of jurisdiction regarding patent claims. Companies domiciled or with branch in the US can no longer choose the place of jurisdiction. In their article, the authors explain the impact on German and American companies. They draw the following conclusion: “The patent landscape in the US has been subject to significant change for years. This has meant that it has become much more difficult to obtain patents in the US, to defend them against infringements and to enforce against parties in breach. The decision is a reaction against the abuse of the US system by patent trolls. On the other hand, many of the measures also impair the efficient response to patent infringements from legitimate patent holders.” The entire article as well and the ICC edition can be downloaded here.
Patent Attorneys Dr Jan B. Krauss and Dr David Kuttenkeuler have contributed the article "Intellectual property rights derived from academic research and their role in the modern bioeconomy - A guide for scientists" in the international specialist magazine "New Biotechnology". In the article, the authors show how Intellectual Property (IP) represents the currency of the biotechnology industry and how a basic knowledge of IP can help scientists to exploit their research findings. "New Biotechnology" is published by the European Federation of Biotechnology (EFB) and appears every two months. It covers subjects from the field of biotechnology as well as associated aspects in politics, finance and industry. The article can be purchased online and downloaded here.
The two BOEHMERT & BOEHMERT Patent Attorneys Dr Jan B. Krauss and Dr David Kuttenkeuler have contributed an article entitled "Current Developments in Biotechnology" to the German-language publication "Mitteilungen der deutschen Patentanwälte" (7-8/2017, page 306 et seq): Suspension of EPA proceedings which affect plants (or animals), which are essentially included in biological proceedings". In the artical, the authors point out that the grant clearly exceeds the authority of the President as Executive Organ of the European Patent Agreement (EPA) as well as the applicable legal situation. They also explain possibilities with which those affected can and should resist such a suspension. "Mitteilungen der deutschen Patentanwälte" can be subscribed here.
BOEHMERT & BOEHMERT lawyer and trade mark law expert Dr Florian Schwab has published the article "No protection for EXHAUST-GARD" in the online portal of the specialist magazine World Trademark Review on 2 June 2017.
The article discusses the recently delivered decision of the European Court of Justice from 27 April 2017 (T-622/15). In its judgement, the Court rejects the possibility of protecting the mark EXHAUST-GARD for diesel emission fluid in class 01. As both courts at lower instances found, the Court held that it was of purely descriptive character. In particular, English speakers with necessary knowledge would immediately connect the word mark (which is comprise of the word "exhaust" and "g(u)ard") with protection from dangerous emissions produced from combustion in diesel motors, in particular with the reduction of nitrous oxide content in these emissions. "The decision of the European Court of Justice is therefore less surprising than the vehement defence of the registration over three instances," Dr Florian Schwab comments. Those subscribing to the WTR Daily can see the entire article here.
The internationally renowned specialist magazine World Trademark Review has published its "Anti-Counterfeiting Guide 2017", which is compiled in collaboration with the World Customs Organisation and INTERPOL. This year too, BOEHMERT & BOEHMERT trademark law experts Dr Rudolf T. Böckenholt, Dr Volker Schmitz-Fohrmann and Dr Florian Schwab contributed an article, this year entitled "Border seizure measures in the European Union" and included in the May 2017 edition of the guide. The article looks at problems in the fight against product piracy and border seizure measures in the European Union. The article can be viewed here as pdf: (Note: “This article first appeared in Anti-counterfeiting: A Global Guide 2017, a supplement to WTR, published by Globe Business Media Group - IP Division. To view the guide in full, please go to“: WorldTrademarkReview)
In the online portal of the specialist magazine World Trademark Review from 31 March 2017, BOEHMERT & BOEHMERT lawyer and trademark law expert Dr Florian Schwab published the article "General Court: no likelihood of confusion between figurative 'e' marks for certain energy-related goods and services" The article explains the recently published decision of the European Court of Justice from 14 March 2017 (T-276/15 - Edison SpA v. EUIPO) in a case involving two letter marks. The case centred on the often difficult to determine protective scope of a mark which was comprised of a single letter "e" with basic graphical elements compared to an older mark, also comprised of a single letter "e". In each case the marks were registered for various goods and services in the field of wind energy.
Dr F. Schwab has for many years made regular contributions to WTR Daily. Those subscribing to the WTR Daily can see the entire article here.
In June 2015, the Association Littéraire et Artistique Internationale (ALAI) held an international conference in Bonn on "Remuneration for the use of works: Exclusivity vs. other approaches". Walter de Gruyter Verlag has now published the conference transcript, which contains contributions to the two conference days on 18.06. and 19.06.2015 and which illustrates issues from an international perspective. Here, Dr Martin Schafer publishes his contribution on "Possible roles for CMOs in new business models" in which he sets out and analyses various functions of collection companies in novel business models. Dr Martin Schaefer is a Member of the Board of ALAI Germany; the rights of collection companies and collection agencies are among his special fields of interest.
Conference transcript "Remuneration for the use of works". Silke von Lewinski (publisher). Walter de Gruyter GmbH & Co KG, 2016. 475 pages (print edition). ISBN 978-3110450019.
BOEHMERT & BOEHMERT partner Dr. Martin Schaefer’s article “Who has a share in the exploitation of music on the internet? Copyright as an expression of ‘attribution of gain’” has been published in the journal “Musik & Ästhetik” (issue 81, January 2017, pages 100 et seq.). In his article, Dr. Schaefer uses the EU’s current draft directive on copyright in the digital single market as an opportunity to discuss the fact that platforms such as YouTube are used at two levels: “at user level by uploading and at platform level by marketing of the aggregated contents. There is still some work to do before the EU draft directive makes good on the promise of its heading for Article 13 ‘Certain uses of protected content by online services’”, writes Schaefer.
The technical journal “Musik & Ästhetik” is published by the Klett Cotta Verlag and examines the ranges of topics that make up “music” from technical, artistic, philosophical, cultural and political viewpoints. This issue and individual articles can be obtained from here.
The two BOEHMERT & BOEHMERT partners Dr Rudolf Böckenholt and Dr Michael Rüberg have contributed an article to the newspaper "Medien und Recht International" (MR-Int, 3/2016, p. 95) entitled "Brexit and the consequences in IP". The two specialist layers for industrial property protection focus on "Brexit", the result of the referendum held in the United Kingdom to leave the European Union and the anticipated consequences in the field of IP Law. To this end, they highligh initial developments and recommend strategic approaches to secure IP rights. They also explain the possible consequences for patents/SPCs, possible consequences for trade market, designs and other rights. "Of course, irrespective of the type of IP right affected, rightholders cannot accept gaps in protection and cannot wait to see how things develop for an indefinite period. Even if Brexit doesn't mean effective departure, rightholders should now check their options and take advice on how to proceed," is the recommendation of the two authors. The entire edition of MR Int can be ordered here.
The online portal of the specialist magazine World Trademark Review from 21.11.2016 contained an article by BOEHMERT & BOEHMERT partner and trade mark law expert Dr Florian Schwab entitled "General Court finds likelihood of confusion in P signs“ on the recently published decision of the European Court of Justice from 11 October 2016 (T-350/15) on the question of the risk of confusion for one-letter brands. In the concrete case at hand, the Court looked at the likelihood of confusion between brands which differed only in the graphic style of the letter P for identically protected clothing. The decision strengthens the position of proprietors of one-letter brands. Dr F. Schwab has for many years made regular contributions to WTR Daily.
BOEHMERT & BOEHMERT patent lawyer Dr. Daniel Herrmann has authored the manual "Goal-oriented Methods to Pass the European Qualifying Examination (EQE)" which will soon be published by Beck Verlag. The bilingual work is geared to those taking the European Qualifying Examination and includes both targeted approaches as well as patent law foundations for parts A, B, C and D of the EQE. The author places special emphasis on useful and well-structured methodological support and preparation for the examination. The manual offers step-for-step approaches, time specifications per work step, details on scoring, examination schemes for questions on patent law. formulation suggestions and entire text passages, tables as work aids and many other practical tips for the examination. The methodology takes account of amendments to the EQE 2017. Patent law foundations are also explained. References are also given to relevant statutes, case law and examination guidelines. The author is a Patent Lawyer and European Patent and Trademark Attorney at the Munich office of BOEHMERT & BOEHMERT. The manual will be published by Beck Verlag and has around 300 pages. C.H.BECK ISBN 978-3-406-70789-6. Pre-orders can be submitted immediately, the release is beginning of 2017.
BOEHMERT & BOEHMERT partner Dr Martin Schaefer has made a contribution to the English language journal European Intellectual Property Review (10/2016, p. 633-638) entitled "ISP Liability for Blocking Access to Third-Party Infringing Content" . In the article, Dr Schaefer gives an overview of developments and the current state of jurisprudence in relation to the blocking of websites by internet service providers (ISP) on grounds of contents which infringe third-party copyright. In Germany, the "Goldesel" case (Liability for Interference of Access Provider) decided by the Federal Supreme Court on 26 November 2015 is the lead case here. Dr Schaefer comments here: „The Goldesel decision of the German BHG has paved the way to a sensible website blocking possibility in accordance with art.8(3) Info Directive, using the concept of Störerhaftung as a basis.“ Dr Martin Schaefer fought the case at first instance.
The online-Portal of the specialist magazine World Trademark Review on 14.10.2016 contained an article by BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab entitled "General Court confirms genuine use of earlier mark and likelihood of confusion" on the recently published decision of the Court of the European Union (T-204/14 VICTOR ./. VICTORIA) from 7 September 2016. In its decision, the Court confirmed a risk of confusion between the older Spanish registered mark VICTORIA and the more recently registered Community mark VICTOR, amongst other things in relation to shoes. The decision shows the classic assessment of questions of right-preserving use, the distinction of previous market and the similarity of goods. Dr F. Schwab has for many years commented on judgement for the WTR Daily. Those subscribing to the WTR Daily can see the entire article here.
BOEHMERT & BOEHMERT partner and patent attorney Nils T. F. Schmid has written an article, “Protection of Innovations”, which has been published (page 22 et seq.) in the specialist brochure “Innovation – Werttreiber der Wirtschaft” [“Innovation – Value Driver of the Economy”], a special publication of the Federal Association for Economic Development and Foreign Trade [Bundesverband für Wirtschaftsförderung und Außenwirtschaft e.V.] (BWA). “It would seem that numerous barriers to innovation, particularly in small and medium-sized enterprises, are resulting in the (existing) innovative strength not being utilized. (...) The uncertainty about economic success is causing fewer resources to flow into innovations. Even if innovation/know-how is created, dealing with this remains a challenge for the entrepreneur,” explains Niels T.F. Schmid. In his article Schmid provides an overview of strategies for dealing with know-how and also draws up a comparison of the various strategies in order “if necessary, to deduce economic instructions.” The entire article as well as the BWA’s specialist brochure can be downloaded here.
BOEHMERT & BOEHMERT partner Dr. Martin Schaefer has contributed the article "The curtain closed and many open questions?" in the specialist magazine musikmarkt (07/2016). Dr Schaefer provides an overview of the current state and future direction of law following two court judgements which are of greatest relevance for copyright lawyers in the music industry: The court judgements in question are Martin Vogels vs. VG Wort by the Federal Supreme Court and the judgement of the Federal Constitutional Court in "Metall auf Metall". Dr Schaefer explains both judgements and lists possible consequences. The entire - most recent edition - of the specialist magazine can be accessed here.
The reference work "Competition and Patent Law in the Pharmaceutical Sector. An International Perspective" has now been published in the Kluwe Law International range (publisher: G. Muscolo, G. Pitruzzella). Here, BOEHMERT & BOEHMERT partners Prof Heinz Goddar, Prof Jan Bernd Nordemann and Dr. Julian Waiblinger contributed in Chapter 3 "The Perspective from Europe" the article "Germany: Patent Settlements and Drug Discount Agreements in Light of European and German Antitrust Law". The work focuses in particular on the interplay between Intellectual Property (IP) on the one hand and Competition Law on the other, in particular in the pharmaceuticals sector. The work can be ordered online at Wolters Kluwer, ISBN: 9789041159274 544 pages.
On the online portal of specialist publication World Trademark Review dated 18 May 2016, BOEHMERT & BOEHMERT partner and expert in trademark law Dr Florian Schwab reported on the recently published opinion of the Advocate General (C-280/15 Irina Nikolajeva ./. OÜ Multi Project) dated 21 April 2016 in the article “Reasonable compensation for published EU trademark”. In relation to the referral by the Harju District Court in Estonia, Advocate General Wathelet recommended to the European Court of Justice that the publication date be applied in the calculation of compensation. He also explains what it is to be considered appropriate compensation in this situation. Dr F. Schwab has been a regular commentator for WTR Daily for many years.
The internationally renowned specialist magazine World Trademark Review has published its renowned "Anti-Conterfeiting Guide 2016", which is compiled in collaboration with the World Customs Organisation and INTERPOL. This year too, BOEHMERT & BOEHMERT partners and trademark law experts Dr Rudolf T. Böckenholt, Dr Volker Schmitz-Fohrmann and Dr Florian Schwab contributed the article"Border seizure measures in the European Union" to the May 2016 edition. The article looks at problems in the fight against product piracy and border seizure measures in the European Union. The article can be viewed here as pdf: (Note: “This article first appeared in “Anti-Counterfeiting 2016“ – A Global Guide, a supplement to World Trademark Review, published by Globe Business Media Group - IP Division.
The “Vertragshandbuch Pharma und Life Sciences - Mit bewährten Gestaltungsvorschlägen aus der Praxis” [“Contract Manual for Pharmaceuticals and Life Sciences – With proven design proposals from practice”] was published by C.H. Beck Verlag in autumn 2015. BOEHMERT & BOEHMERT partner Dr. Michael Rüberg co-wrote the “General Section with Basic Contract Models” with editor Marco Stief. A review by Dr. Wolfgang A. Rehmann who praised the work has now been published in the specialist journal “Arzneimittel und Recht” [“Pharmaceuticals and Law”] (01/2016, p. 31 et seq.). Rehmann commented on the “General Section with Basic Contract Models”: “The authors responsible for this chapter, Stief and Rüberg, have made every effort and taken particular care to illustrate design alternatives which occur in practice and, at the same time, make the background of individual provisions clearer to the user through a detailed commentary.” His conclusion on the entire contract manual is: “All in all, the editors and their authors should be shown respect. They have created a valuable aid for precisely the target group the work has in its sights, namely lawyers, pharmacists, traders and engineers operating in the pharmaceuticals and life sciences industry or working for them.” The manual can be obtained directly from Beck Verlag, priced approx.: €198.00. Stief/Bromm (editor), C.H. Beck, 2015. ISBN 978-3-406-65042-0.
BOEHMERT & BOEHMERT partner Dr. Martin Schaefer has contributed the article "Copyright Policy in a Crisis Era" in the specialist magazine musikmarkt (01/2016). Lots is in motion in the field of copyright, both in terms of legislation and in the case law. Dr Schaefer provides an overview of pending judgements in the fields of remuneration (Reprobel case), copyright contract law, provider liability as well as on copyright initiatives of the EU ("portability"). Dr Schaefer expects large copyright challenges for the coming months, primarily in the field of music. "It remains to be hoped," Schaefer says, "that the German government and MPs keep an open ear to the arguments of the creative economy as already it is foreseeable that in 2016 the wider public will be more concerned with other issues than those of music authors, artists, music publishers and sound media producers." The entire article can be downloaded by subscribers at.
BOEHMERT & BOEHMERT-Partner Dr Jan B. Krauss is co-author of the book "Patent Enforcement in the US, Germany and Japan", which was released in December 2015. The authors Prof Toshiko Takenaka, Christoph Rademacher, Dr Jan B. Krauss and Jochen Pagenberg (and others) provide here a comprehensive comparative analysis and current overview of the enforcement of patent rights in the legal systems of the United States, Germany and Japan. The English-language publication is available as hardcover (528 pages, 2015, Oxford University Press, ISBN 978-0-19-967920-1) or as ebook.
BOEHMERT & BOEHMERT partner Dr Martin Schaefer has submitted an article to the specialist magazine "Kommunikation & Recht" (12/2015, S. 761 ff) entitled "The new Collection Company Act - a guide to the bill". The background is the bill put forward by the Federal Ministry of Justice and Consumer Protection on the implementation of the EU Directive 2014/26/EU on the collective management of copyright and related rights. In his article, Dr Schaefer explains the background to the proposals and makes an initial assessment of the bill. The specialist magazine "Kommunikation & Recht (K&R)" appears monthly and focuses on all national and international legal issues relating to media.
BOEHMERT & BOEHMERT partner Dr.Martin Schaefer has made a contribution to the specialist magazine musikmarkt (11/2015) entitled "Reduced Sight in One Eye?". In the article, he comments on the new bill on copyright contract law put forward in October. Dr Schaefer shows to what extent the bill excludes the interests of publishing houses and producers and notes here: "If the bill is to become law, it is already clear that it would weaken domestic producers and publishing houses - in favour of largely foreign service and platform operators." The entire article can be accessed by subscribers at.
BOEHMERT & BOEHMERT partner Prof Heinz Goddar (Patent Attorney) and Dr Carl-Richard Haarmann (Solicitor) have contributed the article "Best Strategies for Patent Protection in Europe in the Advent of the Unified Patent System - The Status in Late 2015" to "China Intellectual Property Magazine" (9/10-2015). In the article, the authors explain the current procedure in Europe for attaining a patent. They also explain the changes set to come in the next few years as a result of the European Unified Patent System as well as the pros and cons of the EU patent. They note: "Presently, (...) it is unclear whether and when UPS/UPC will come into force - probably not earlier than 2018/2019. Nevertheless, national routes alone are no longer recommendable, because then no option for an EU Patent would be possible." The article can be accessed here by subscribers.
German patent attorneys and lawyers discuss both the current developments in patent law and the possible repercussions of the planned establishment of a Unified Patent Court (UPC) in the “Germany Roundtable” section of the specialist magazine Intellectual Asset Manager IAM (Nov./Dec. 2015, P. 73ff) under the heading “Europe´s Litigation Powerhouse”. BOEHMERT & BOEHMERT partner and patent attorney Dr. Markus Engelhard and lawyer Dr. Michael Rüberg were part of this panel of experts and commented on various aspects of the subject. The entire article can be viewed here.
This article first appeared in Intellectual Asset Management issue 74, published by Globe Business Media Group - IP Division’. To view the issue in full, please go to www.IAM-media.com.
In the online magazine World Trademark Review Daily from 15/10/2015, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-382/14 - Bernhard Rintisch vs. OHIM) from 24 September 2015. The decision concerns the reversal of the decision of the Board of the Appeal in opposition proceedings on account of inadequate reasoning. The focus was the consideration given to documents submitted by Bernhard Rintisch (owners of the leading German PROTI marks) on the the German PROTI mark. Rintisch impugned the Community mark PROTICURD in the field of pharmaceutical products and protein drinks. Those subscribing to WTR Daily can see the entire article here.
BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab has published a contribution in the specialist magazine Markenartikel (09/2015, p. 64) on abstract colour marks. In the article, he explains the legal implications for the establishment and defence of corporate colours and provides an insight on the current state of the law on abstract and contourless colour brands. Litigation concerning Nivea blue has recently brought this issue into focus. "Abstract colour marks are very popular and reveal numerous legal pitfalls. Recent high court judgements have brought clarity with respect to enforcement and have also made clear that there is no fixed or indeed level of enforcement is to be expected for colour marks than for other categories," Dr Schwab comments. The entire article is available for subscribers or as an individual booklet (and as app).
C.H. Beck Verlag has released a celebratory publication marking the 50th anniversary of the German Copyright Act. The "Celebratory Publication 50 Years of the Copyright Act - From the audio tape to social media" is dedicated to the German Copyright Act. The contributions contained in the publication, made by renowned legal experts, look at whether and in how far the framework of the Copyright Act are adequate to meet the challenges of the coming decades. Four BOEHMERT & BOEHMERT partners and solicitors Prof C. Czychowski, Prof A. Nordemann, Prof J. B. Nordemann and Dr M. Schaefer contribute the article "The Copyright Act in normal operation: case low". The article looks at the jurisprudence surrounding the Copyright Act from its entry into force in 1966 to today. The publication can be obtained from Beck Verlag: Verlag C.H.BECK, 2015 (Hrsg. Th. Dreier und R. Hilty). ISBN 978-3-406-68519-4.
The European Commission has published the "Study on the economic impact of the utility model legislation in selected EU Member States". The study is available in the EU Book Shop. The two BOEHMERT & BOEHMERT partners, Patent Lawyer Prof Heinz Goddar and Solicitor Dr Carl-Richard Haarmann acted as consultants to the EU Commission on this study and worked together with the Technopolis Group Austria on behalf of the Commission.
The study looks at the different legislative practices on utility patents within the EU. The study also looks at the question as to whether and how utility patents are used as components of the system of technical protection within the individual member states. The study finds that in the various member states, utility patents are used very differently. The study also finds, a well-functioning utility patent system used comprehensively by both industry and the legal profession exists only in Germany. In most other states, utility patents play a much lesser role and their use is often not known.
The study concludes that a harmonised utility patent system would make a sensible addition to existing patent law. After all, it is conceivable over the medium term that a uniform utility patent is introduced alongside the uniform patent so that the system of technical protections is fully complemented across the whole of the EU," the two BOEHMERT & BOEHMERT partners conclude. The study (ISBN: 978-92-79-46477-5) can be downloaded here free of charge (in English)
BOEHMERT & BOEHMERT partner and solicitor Dr Carl-Richard Haarmann and solicitor Jan Rether have made a contribution to the "China Intellectual Property Magazine" (7/8-2015) entitled "Recent Developments in European Union Trademark Law". In the article, the authors explain the comprehensive changes which EU brand law will see over the coming months and years. They have also collected together and comment on recent judgements of the European Court of Justice. The article can be downloaded by subscribers or ordered in print form from.
In the 02/2015 edition of the online specialist magazine "IntellectualProperty", BOEHMERT & BOEHMERT partner Dr Björn Bahlmann submitted the article "Not everything clarified? - New uncertainty in the use of foreign brands as Google keywords". Here he explains in how far it's permissible to used foreign brands as Google keywords. Dr Bahlmann points out here that the Higher Regional Court of Hamburg has recently issued a judgement which devates from the liberal line taken by the BGH and which could pose stricter requirements for the permissiblity of the use of foreign brands. "IntellectualProperty" is a joint publication by Frankfurt Business Media GmbH - The F.A.Z publisher, a company of the F.A.Z publishing group, and the legal publishers German Law Publishers. The article can be downloaded from 16 September 2015.
In September 2015, the C.H. Beck Verlag published the "Contract Manual Pharma and Life Sciences - with tried and trusted framework suggestions from practice". BOEHMERT & BOEHMERT partner Dr Michael Rüberg contributed here as co-author. The manual offers a comprehensive collection of commented contract frameworks for all standard areas of regulation in Pharma and Life Sciences and follows the life cycle of a product. Peculiarities of the legal situation in other selected countries are also included in the comment. The manual can be ordered directly from Beck Verlag at a price of: € 198.00 Stief / Bromm (Hrsg.), C.H. Beck, 2015. ISBN 978-3-406-65042-0.
BOEHMERT & BOEHMERT partners Dr Stefan Schohe and Dr Michael Rüberg have contributed the article "Foreign companies beware - German courts are closing safe harbors abroad" to Patent Lawyer Magazine (June 2015, p. 47 et seq) In the article, patent lawyer Dr Schohe and solicitor Dr Rüberg explain the "Audio Signal Coding" decision of the Federal Supreme Court (official reference X ZR 69/13), which holds that there can be a patent infringement as a result of actions taken abroad. The authors identify a trend in German case law to make foreign firms which use domestic distribution partners responsible for patent infringements in Germany from the point of view of participation in a domestic patent infringement. As a result, this means that firms which operate exclusively outside Germany can be made liable for patent infringements in Germany both for direct as well as for indirect patent infringement. Correspondingly, the authors conclude, foreign firms must increasingly look into legal protection in Germany, even in cases where the articles they supply are not patent protected but merely represent a means which can be used in connection with patent infringement in Germany. The entire article can be read here.
In the online magazine World Trademark Review Daily from 22/07/2015, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-436/12 Deutsche Rockwool Mineralwoll GmbH ./. OHIM) from 08 July 2015. The decision relates to the risk of confusion between the community trademark registration ROCK&ROCK and the older German trademark MASTERROCK; FLEXIROCK for identical goods in the field of construction materials. The focus of the decision is the distinctiveness of the common element ROCK as well as the question of similarity of the word elements. Those subscribing to WTR Daily can see the entire article here.
BOEHMERT & BOEHMERT partner Dr Jan B. Krauss has contributed an article entitled "Current news from Biotechnology - On the decisions "Broccoli II" (G2/13) and "Tomato II" (G2/12) of the Enlarged Board of Appeal of the European Patent Office" in the June edition of the specialist magazine "Mitteilungen der deutschen Patentanwälte" (Announcements by German patent lawyers (MdP). In the article, he analyses the decisions of the EPO with regards to the patentability of claims relating to plants when these plants are essentially created by technical biological procedures. Krauss, a patent lawyer and life sciences specialist, explains in how far "these decisions stand in contradiction to the patent exclusions applicable in a number of European Patent Convention member states, e.g. Germany and Netherlands". This is available here for subscribers or for individual purchase.
BOEHMERT & BOEHMERT partner Dr.Martin Schaefer has made a contribution to the specialist magazine musikmarkt (06/2015) entitled "Four misunderstanding on copyright contract law". In the article, he explains for what reasons the idea of a "copyright minimum wage based on copyright contract law" is, on closer inspection, not suitable as a general solution for the creative economy. Dr Schaefer says here: "The idea of copyright for authors is not that of a suitable wage, but of a suitable participation. Copyright grants the author a participation right in the possible success." The entire article can be accessed by subscribers here.
The internationally renowned specialist magazine World Trademark Review has published the renowned "Anti-Counterfeiting Guide 2015" which is compiled in cooperation with the World Customs Organization and INTERPOL. In the May 2015 edition of the guide, BOEHMERT & BOEHMERT partner and trade mark law experts Dr Rudolf T. Böckenholt, Dr Volker Schmitz-Fohrmann and Dr Florian Schwab contributed the article "Border seizure measures in the European Union". The article looks at issues in relation to product piracy and borders seizures in the EU. In particular, new rules applying to border seizures after the entry into force of the new Boarder Seizures Ordinance such as the new small volumes procedure are set out clearly. The entire article can be downloaded as pdf here (note: “This article first appeared in “Anti-Counterfeiting 2015“ – A Global Guide, a supplement to World Trademark Review, published by Globe Business Media Group - IP Division. To view the guide in full, please go to www.worldtrademarkreview.com): WTR_ACG_RegionalFocus_EuropeanUnion.pdf
The respected Handbuch Wirtschaftsstrafrecht (HWSt) (Manual of Commercial Criminal Law) published by Prof Hans Achenbach, Prof Andreas Ransiek and Prof Thomas Rönnau has now been released in a new 4th edition (2015) by C. F. Müller Verlag, Heidelberg. Three BOEHMERT & BOEHMERT partners have authored contributions for the chapters on copyright and industrial property rights. Dr Florian Schwab is responsible for the subject of "Product Piracy". Further contributions are made by Prof Axel Nordemann (Copyright Criminal Law) and Malte Nentwig (Patent and Utility Patent Criminal Law). The respected manual offers a compact summary of key fields of commercial criminal law including administrative offences and has its focus in the representation of relative practical aspects. Manual of Commercial Criminal Law. Series: Recht in der Praxis. C. F. Müller Verlag, Heidelberg. 2015 978-3-8114-6019-5. The manual can be obtained as hardcover or as e-book from the publisher.
In the specialist magazine Neue Juristische Wochenschrift (18/2015, p. 1265 et seq.), three BOEHMERT & BOEHMERT partnera Prof. Dr. Jan Bernd Nordemann, Dr. Michael Rüberg and Dr. Martin Schaefer contributed the article "3D Printing as Challenge for Intangible Property Rights". In the article, the three specialist lawyers for industrial property rights explain how rightholders can protect against unauthorised 3D printing and who is liable in the case of infringement of right. The team of authors conclude that the law as it stands is well equipped to meet the challenges within the framework of "Product Piracy 2.0" (using 3D printers). Copyright law often grants the broadest protection. The lawyers also describe how a protection strategy in private, commercial or industrial fields can be systematically developed and how far intangible property rights (copyright, design, brand and patent rights) are linked here. Subscribers can access the complete article under.
BOEHMERT & BOEHMERT partners Prof Jan Bernd Nordemann and Dr. Michael Rüberg contributed the article "3D-Printing: The Next Digital War?“ to the specialist magazine Markenartikel – Das Magazin für Markenführung (4/2015). In the article, the specialist lawyers for industrial property rights explain how rightholders can protect against unauthorised 3D printing. The increasing popularity and falling cost of 3D printers are causing brand article owners increasing concern. The two lawyers provide both concrete recommendations as well as examples from practice in the article. Jan B. Nordemann points out that "commercial property rights provide no legal protection against private infringement.". Here, copyright law plays a central role in protection from illegal 3D prints. The entire edition 4/2015 of the magazine Markenartikel is dedicated to product piracy. The above article and magazine can be accessed here (for a fee)
In the online magazine World Trademark Review Daily from 18/03/2015, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-366/11 RENV Bial Portela ./. OHIM) from 03 March 2015. In contrast to the decision at lower instances, the Court considered the brands ZEBEXIR and ZEBINIX for identical goods in classes 3 and 5 as capable of being confused, in particular in view of the sufficient visual and phonetic similarity. An initial judgement with similar result was repealed by the European Court of Justice due to the lack of reasoning. Those subscribing to WTR Daily can see the entire article here.
BOEHMERT & BOEHMERT partner Dr Martin Schaefer has made a contribution to the specialist magazine musikmarkt (01/2015) entitled "The Duty to Post Deposit is coming... but how (!?)". In the article, he explains a key aspect of the upcoming reform of German administration legislation. With regard to the implementation of the EU Directive - Collecting Companies Directive, the focus in Germany has been on the "duty to post deposit". Dr Schaefer explains under what circumstances a deposit in respect of compensated owed made with a neutral body may be required and comments thus: "Ultimately. it's a matter of fair distribution of risk for each deposit." Just how this is worked out will be the topic of political discussed over the coming months, Schaefer went on. The full article is available to subscribers at.
In the online magazine World Trademark Review Daily from 06/01/2015, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-298/12 Inter-Union Technohandel GmbH ./. OHIM) from 09 December 2014. In this case, the Court looks at the framework for the proof of right-preserving use. The focus here is on the evidential value of assurances under oath made by a person associated with the owner of the affected trade mark - per se and in connection with further use material. The Court also looks at the evidential value of products which have been the object of a market analysis in the magazine TEST by Stiftung Warentest. Those subscribing to WTR Daily can see the entire article here.
In the online magazine World Trademark Review Daily from 04/11/2014, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-297/13 Junited Autoglas Deutschland GmbH & Co KG ./. OHIM) from 16 October 2014. The Court affirmed a risk of confusion between the older Polish word/picture mark AUTOGLASS and the Community mark UNITED AUTOGLASS in particular for motor vehicles, replacement parts for motor vehicles, windscreens. In terms of understanding the terms "Autoglas" and "united" from the perspective of the relevant Polish public, the Court again has regard to the modest English language ability of consumers in the EU. "Glass" as well as "united" are not part of the basic English vocabulary of the EU consumer, the Court held. Those subscribing to WTR Daily can see the entire article here.
An app for "Fromm/Nordemann Copyright" is now available in Apple and Android app store. The app was developed in collaboration with the Kohlhammer Verlag and Wesemann NewMedia. The app accompanies the new 11th edition of the renowned copyright commentary Fromm/Nordemann which - with the exception of Criminal Copyright Infringement - is exclusively compiled by BOEHMERT & BOEHMERT lawyers. The app includes current legislation on copyright law, thematically ordered legislative materials on copyright, copyright-related EU directives, international conventions on copyright law as well as common remuneration regulations. The app "FN Urheberrecht" is helpful for all practitioners working in copyright. It can be used on smartphones or on the iPad in German.
At the end of August, "Patent Law in Greater China" was published by Stefan Luginbuehl and Peter Ganea. The work provides a comprehensive overview of current developments, processes and standards in various aspects of patent law in China, Taipei, Hong Kong and Macau.
The three BOEHMERT & BOEHMERT partners Prof Christian Czychowski, Prof Heinz Goddar and Prof Jan B. Nordemann co-authored the chapter "Standard-Essential Patents and Injunctive Relief" and also contributed "Comments from the European Perspective". The work (ISBN 978 1 78195 483 6) is available as hardcover and ebook and can be ordered at.
Soeben ist das Buch „Forschen – Patentieren – Verwerten. Ein Praxisbuch für Naturwissenschaftler mit Schwerpunkt Life Sciences” von Dr. Kirstin Schilling im Springer Spektrum Verlag erschienen. BOEHMERT & BOEHMERT-Partner Dr. Jan B. Krauss hat hier den „Beitrag »Hochschulerfindungen und das US-Patentrecht« verfasst. Das Praxisbuch erläutert, wie Forschungsergebnisse von Wissenschaftlern aus Universitäten und Hochschulen patentiert und kommerziell verwertet werden können. Anhand von Beispielen werden wichtige Aspekte des Erfinder- und Patentrechts erläutert. Zudem finden sich praktische Tipps, so z.B. zur Durchführung von Patentrecherchen oder zur Gründung von Spin-off-Unternehmen. Springer Spektrum Verlag 2014. ISBN 978-3-642-54993-9, 313 Seiten. Bestellbar unter anderem über Amazon.
In the online magazine World Trademark Review Daily from 18/07/2014, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (Ref.: C-126/13 P) from 10 July 2014. (Article "ECJ confirms that mark descriptive of component can be descriptive of product itself."). The highest European court confirmed judgements from lower courts by rejecting the trademark registration ECODOOR of BSH Bosch and Siemens Hausgeräte GmbH as community mark at the European Office for Harmonisation. Among other things, the Court viewed the trademark as merely descriptive and therefore not capable of registration. For the descriptive character, the Court found it sufficient that the relevant consumer group would view the presentation of the corresponding appliance with an "environmentally-friendly door as a description of the environmental friendliness of the corresponding product as a whole."
Those subscribing to WTR Daily can see the entire article here.
On 18 July 2014, the 11th edition of the Copyright Commentary Fromm/Nordemann appeared, published by Prof. Axel Nordemann and Prof. Jan Bernd Nordemann. Both are partners at BOEHMERT & BOEHMERT. The authors contributing to the works are - with the exception of Copyright Crime - all from BOEHMERT & BOEHMERT: Dr. Thomas W. Boddien, Prof. Dr. Christian Czychowski, Dr. Andreas Dustmann, Dr. Anke Nordemann-Schiffel, Prof. Dr. Axel Nordemann, Prof. Dr. Jan Bernd Nordemann, Dr. Martin Schaefer, Dr. Volker Schmitz-Fohrmann, Dr. Martin Wirtz. Fromm/Nordemann is the oldest commentary on the Copyright Act from 1965. Since its first edition in 1966, it has become the standard reference work on copyright practice. The 11th edition follows in this tradition. It too is a reference work by practitioners for practitioners. Thanks to its clear and unambiguous language, Fromm/Nordemann is also suitable for non-lawyers.
Since its last edition, copyright law has experienced various changes. In particular, the Term of Protection Act, the Ancillary Copyright Act for Press Publishers, the rules on orphaned and out-of-print works as well as the Act Against Dubious Business Practices and new rules for warnings. All statutory amendments as well as current case law at both European and national level is taken into account by authors and included in the commentary.
Comprehensive commentary is also provided on the Publishing Act in the 11th edition. The Copyright Administration Act and copyright aspects of settlement agreements are also explained. The contents of the website Fromm/Nordemann are now also available as an app for Apple iOS and Android smartphones. Electronic editions of Fromm/Nordemann can also be obtained as eBook from the Kohlhammer-Shop and from juris. (ISBN 978-3-17-023028-6)
BOEHMERT & BOEHMERT partner and lawyer Dr. Rudolf Böckenholt discusses the decision of the European Court of Justice from 15 May 2014 (C-97/12 P - Louis Vuitton Malletier/OHIM) in the specialist magazine GRUR Prax 12/2014. The case concerned the question as to whether in the case of pure picture marks the principles established in case law on the distinction of 3D brands are to be applied and whether this also covers picture marks which only show parts of the product. Official practice of stretching the distinction for specific goods to generic terms or semantically related terms remains under review. The European Court of Justice affirmed all three questions which prevents its restrictive case law on 3D marks from being undermined and gives those registering marks and important aid in the proper construction of their goods and service directory. Dr. Böckenholt is specialist lawyer for industrial property rights and has contributed regularly to GRUR-Prax since 2009. Subscribers can access the entire article from 13 June 2014 here.
BOEHMERT & BOEHMERT partner Dr Martin Schaefer explains the decision of the European Court of Justice on kino.to (UPC Telekabel Wien GmbH) in his contribution to the specialist magazine musikmarkt (18/2014) entitled "Is the ECJ clearing the way for blocking Internet content?" Constantin Film GmbH inter alia (C-314/12)) and its meaning for the German music industry. The full article is available to subscribers at.
To mark the International Conference at the German National Library in Frankfurt am Main from 07-08 April 2014, the celebratory publication "NIG 6.0: crossing borders - the future of access“ for Dr. Elisabeth Niggemann was produced. BOEHMERT & BOEHMERT partner Dr. Martin Schaefer contributed the article "Does copyright hinder the development of digital libraries?" In the article, Schaefer discusses the question as to what would be a fair balance of interest between the interest of libraries, right holders and users. Dr. Elisabeth Niggemann is General Director of the German National Library (DNB) in Frankfurt am Main and Leipzig. Dr. Schaefer is Honorary Chairman of the Music Counsel of the German National Library. Deutschen Nationalbibliothek (public), NIG 6.0 (Festschrift Niggemann), Crossing Borders, Leipzig, Frankfurt am Main 2014, S. 31-34.
BOEHMERT & BOEHMERT partner and lawyer Dr Rudolf Böckenholt comments on the "Real Chips" decision by the Federal Supreme Court from 22 January 2014 in the legal journal GRUR-Prax 06/2014 (p. 126). The contested point here was when and how the risk of first infringement can be eliminated by trade mark registration in Germany. The decision confirms recent case law and is a clear reminder to those registering trade marks that inactivity is insufficient to eliminate the risk of first infringement and that, instead, a clear act is necessary. In the case at hand, the Court discussed the law with respect to Community marks. Dr Böckenholt is specialist lawyer for industrial property rights and has been a regular contributor to GRUR-Prax since 2009. Subscribers can access the entire article here.
In the online magazine World Trademark Review Daily from 28.02.14, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (T-26/13 dm-drogerie markt GmbH & Co KG ./. OHIM) from 12 February 2014. The Court didn't find a risk of confusion between the older word mark BALEA used by dm-drogerie markt and the Community mark CALDEA, mostly used in the field of perfumed goods. The Court referred back to its earlier case law in a parallel trade mark conflict between parties and so rejected the claim made by dm-drogerie. Those subscribing to WTR Daily can see the entire article here.
To mark the 400th anniversary of André Le Nôtres, one of the most famous garden designers of all time, the Palace of Versailles presents the exhibition "André le Nôtre in Perspectives 1613 - 2013" until 23 February 2014. Le Nôtres garden design in Versailles is considered a masterpiece of his century. This and other of his creations set the yardstick for the whole of Europe. BOEHMERT & BOEHMERT partner Dr. Martin Schaefer co-authored the article "The Reception of Le Nôtre and the French Style in the Holy Roman Empire" by Dr. Clemens Alexander Wimmer in the catalogue to the exhibition. This catalogue exists in an English and French version and can be ordered here. Dr. M. Schaefer wrote his doctoral thesis on "Copyright Protection for Garden Design".
BOEHMERT & BOEHMERT partner Dr. Martin Schaefer has made a contribution to the specialist magazine musikmarkt (05/2014) entitled "What's to come?" (Was steht an?) in which he explains open legal and political issues with significance for the music industry. In particular, he looked at the review of rules in EU copyright, data storage, the decision of the ECJ with regard to kino.to and developments with regard to GEMA/YouTube, "Martin Vogel" and the EU directive for collecting companies. "Lots to do in 2014", Dr. M. Schaefer concludes. The entire article can be viewed by subscribers at.
Issue 10/2013 of the “Mitteilungen der deutschen Patentanwälte” includes an article entitled “The requirement for “utility” in the USA following Mayo v. Prometheus – repercussions on the practice of patent applications” written by BOEHMERT & BOEHMERT partner Dr Jan B. Krauss. The article outlines the history of, and reasons for, the Mayo decision and suggests strategies for avoiding problems with patent applications in the USA.
Writing in the online specialist newspaper World Trademark Review Daily on 30 October 2013, BOEHMERT & BOEHMERT partner and trademark expert Dr Florian Schwab reported on the recent decision by the European Court of Justice (ECJ) (C-597/12 P Isdin SA ./. HABM) from 17 October 2013.. The decision concerned a very rare case in which a trademark decision of the European Court was reversed. The case involved opposition proceedings against the word mark ZEBINIX, based on the earlier community mark ZEBEXIR for pharmaceuticals. Notable in the decision was the fact that the European Court found a risk of confusion contrary to the two first instance decisions. However, the ECJ didn't have to decide on this point in the proceedings against the decision of the European Court. The reversal of the first instance decision was based solely on the formal aspect of insufficient regard for the risk of confusion for the individual goods covered by the community mark. The entire article can be seen here.
BOEHMERT & BOEHMERT partner and trademark expert Dr. Florian Schwab has reported on the ruling recently issued by the European General Court (EGC) of June 27, 2013 (T-608/11 Beifa Group Co. Ltd. v. HABM) in the online professional journal World Trademark Review Daily of July 26, 2013. The court was dealing with the case in question for the second time. It ordered the cancellation of a Community design featuring a highlighter pen, because of an older 3D trademark belonging to Schwan-Stabilo. In doing so the court appears to have broken new ground, laying important foundations for the intersection of these two types of industrial property right.
BOEHMERT & BOEHMERT lawyer Dr. Guido M. Becker has published a commentary in the GRUR (journal on industrial property and copyright law, 07/2013, pp. 724 - 725) with regard to the ECJ ruling on the matter of C-12/12 (Colloseum Holding AG/Levi Strauss & Co.) of April 18, 2013. The ruling concerns the issue of “genuine use” of a position trademark, namely the positioning of the cloth flag on the back pocket of the well-known Levi’s brand of jeans.
Edward Elgar Publishing Ltd has now published "Intellectual Property in Common Law and Civil Law", edited by Toshiko Takenaka, University of Washington, Seattle, USA. BOEHMERT & BOEHMERT partner Dr Jan B. Krauss contributes the section on "Equitable Doctrines in internal patent laws". The book provides information and analysis on various legal comparative aspects of intellectual property law and procedure. It is aimed at IP specialists of all kinds, patent lawyers and lawyers specialising in IP. T. Takenaka (Editor), Verlag Edward Elgar Publishing Ltd., 2013, 499 pages, ISBN 978 0 85793 436 9. It can be ordered here.
BOEHMERT & BOEHMERT partner and trademark law expert Dr. Florian Schwab reported via the online journal World Trademark Review Daily dated 02.05.2013 about the European Union Court (EuG) decision (T-383/10 Continental Bulldog Club Deutschland eV ./. HABM) dated 17 April 2013. This was mainly focused on the - recently negated - eligibility for registration of the brand CONTINENTAL. The Luxemburg judges saw in this a primarily descriptive, non-registerable content for the claimed services "The keeping and breeding of dogs" on the part of the German applicant. The full article can be viewed here.
On the occasion of the 70th birthday of the Berlin Professor for civil law, industrial property and copyright law, Dr. Artur-Axel Wandtke, selected lawyers and legal scholars have written a commemorative publication in his honour. Six BOEHMERT & BOEHMERT partners contributed to this with various articles. The subjects covered were the following:
Prof. Dr. Wilhelm Nordermann and Prof. Dr. Axel Nordemann: "The time duration of the granting of usage rights in the work relationship"
Dr. Christian Czychowski: "GTB examination of comprehensive usage rights clauses, the so-called assignment limited to purpose principle and the intellectual property rights remuneration law"
Prof. Dr. Jan B. Nordemann: "The termination of intellectual property contracts: automatic reversion of rights?"
Dr. Anke Nordemann-Schiffel: "No licence for unlimited investigation: The right to examine according to § 101a Intellectual Property Act (UrhG) in interim injunction proceedings“
Dr. Martin Schaefer: "Are remuneration rights, in the meaning of § 63a UrhG, transferred in the case of the overall transfer of company-related performance and service rights according to §§ 85 Sect. 2 p.1, § 87 Sect. 2 p. 1 or 94 Sect. 2 p.1 UrhG?“
The commemorative publication was published by Winfried Bullinger, Verlag Walter de Gruyter. 2013. ISBN 978-3-11-028348-4
In edition 3-4/2013 of the highly reputed Chinese journal China Intellectual Property Magazine, the second part of the article written by the two BOEHMERT & BOEHMERT partners Prof. Dr. Heinz Goddar and Dr. Carl-Richard Haarmannby has been published, as announced. In the article "Patent Litigation in Germany - An Introduction (II)”, the authors continue their explanation of on the way in which the German patent protection and litigation system is composed and what proceedings must be initiated in cases of infringement. The first part of the article was published in edition 1-2/2013 of the journal.
In an article published in the 3/2013 edition of Mitteilungen der Deutschen Patentanwälte (page 108 et seq.), BOEHMERT & BOEHMERT partners Dr Christian Czychowski, Prof Jan B. Nordemann and patent lawyer Dr Markus Engelhard explain "MTA agreements and their legal limits in German law". Material Transfer Agreements (MTA agreements) have for some years already been applied for research in the field of biotechnology. These are contracts on the basis of which one institution transfers certain materials to another, e.g. DNA sections, cell lines, proteins or micro-organisms for research purposes or commercial use. The contents and legal requirements contained in such MTA agreements are discussed by the authors in the article. Subscribers can access the article here online.
In the online magazine World Trademark Review Daily from 01.03.13, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision (Ref.: I ZR 217/10 from 13 December 2012) of the Federal Supreme Court which builds on and clarifies case law on keyword advertising. Those subscribing to WTR Daily can see the entire article here.
An article by BOEHMERT & BOEHMERT partners Prof. Dr. Heinz Goddar and Dr. Carl-Richard Haarmann has been published in issue 1-2/2013 of the widely acclaimed Chinese trade journal “China Intellectual Property Magazine”. In the article “Patent Litigation in Germany - An Introduction (I)”, the authors explain how the German patent right system is constructed and what kind of action is to be taken in cases of infringement. The second part of the article will be published in the upcoming issue (3-4/2013) of the journal. Part 1 of the article is available as a PDF in English here.
Edward Elgar Publishing Ltd has now published “Constructing European Intellectual Property”, which was edited by Christophe Geiger, CEIPI, University of Strasbourg. BOEHMERT & BOEHMERT partner Dr. Jan B. Krauss has written the article “Construction of Efficient and Balanced Patent System: Patentability and Patent Scope of Isolated DNA Sequences Under US Patent Act and EU Biotech Directive” with Toshiko Takenaka. The work provides approximately 500 pages of information and analyses on various aspects of intellectual property and its handling in Europe. The handbook is primarily aimed at all kinds of IP specialists. ISBN 978 1 78100 163 9, Edward Elgar Publishing Ltd., 2013. It can be ordered here for example.
Edward Elgar Publishing has now published the “Research Handbook on Intellectual Property Licensing”, which was edited by Jacques de Werra from the University of Geneva. BOEHMERT & BOEHMERT partner Prof. Dr. Heinz Goddar has written an article on the topic “Technology licensing between academic institutions and private companies”. The publication offers approximately 520 pages of information, research tools and international best practice examples on various types of licence agreements. The handbook is aimed at all kinds of IP specialists, patent agents and attorneys dealing with licensing of intellectual property rights. ISBN 978 1 84980 440 0, Edward Elgar Publishing Ltd., 2013. It can be ordered here for example.
The 12th revised and extended edition of the Beck Procedural Form Book (Beck´schen Prozessformularbuch) is now available. BOEHMERT & BOEHMERT partner Dr Catharina Götz has completely revised the chapter on the Unfair Competition Act (Gesetz gegen den unlauteren Wettbewerb (UWG)). The reference work provides practical information on all types of procedure - civil proceedings, arbitration, international civil procedure, enforcement, insolvency, employment tribunal and administrative procedure - on over 2,500 pages. The new edition takes account of all legal reforms since autumn 2009. The work is aimed primarily at judges, lawyers, notaries, auditors, tax consultants and judicial officers. The 12th revised and extended edition 2013 is available as book with CD-ROM, ISBN 978-3-406-62937-2. Beck Shop.
In the online magazine World Trademark Review Daily from 03.12.2012, BOEHMERT & BOEHMERT partner and trademark law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice in the case ATLAS ./. OHIM from 21 November 2012. The case focused primarily on the criteria for determining the similarity of goods. Those subscribing to WTR Daily can access the entire article here.
In the revised and extended 4th edition 2012, published at the end of September 2012, of the reference work "Münchener Anwaltshandbuch Gewerblicher Rechtschutz", BOEHMERT & BOEHMERT partner Dr Rudolf T. Böchenholt has provided a revised version of his chapter "Camouflage of Advertising Measures". The new edition brings the work up to date and takes account of the implementation of the EU Directive 2010/13/EU on audio-visual media services. This is especially relevant for Product Placement. Both case law and the literature have been updated to July 2012. The work is part of the Münchener Anwaltshandbücher range and can be accessed at.
The IP Osgoode Hall law School - York University, Canada, held a conference entitled "European Perspective on Copyright Law in the Information Era" in October 2011. The issue under discussion was: "Can Canada learn anything from Europe?". BOEHMERT & BOEHMERT partner Dr Martin Schaefer was invited to speak on the subject of "Collective Licensing". This speech has now been included in the "Intellectual Property Journal" published by Carlswell Verlag and can be ordered online from the publisher: „Collective Licensing: Promises and Pitfalls“, in: Intellectual Property Journal, Toronto 2012, S. 133-142. Publisher: Giuseppina D'Agostino and David Vaver. ISBN: 0824-7064.
The renowned "EPC Handbook - Guide for Practitioners" has just been published in the 4th edition in Japanese (ISBN 978-4-905443-05-6). This edition too was compiled by BOEHMERT & BOEHMERT partners Prof Heinz Goddar and Christian W. Appelt and translated by the Japanese authors Motohiko Fujimura, S. Nagaoka and Key Konishi. The book can be purchased in Japanese bookshops for JPN 2,940.
The completely revised 2nd edition of the "Art Law Manual" has just been published by C.H. Beck. The two BOEHMERT & BOEHMERT partners Prof Wilhelm Nordemann and Dr Andreas Dustmann are responsible for the "Copyright" section and have updated and expanded this section. The Manual on Art Law aims to cover all legal questions relating to art: from creation, economic exploitation all the way to tax and customs law. The manual includes comprehensive information on looted art, art insurance law, theft/forgeries, exhibition law, artists' social insurance law and copyright. The team of publishers and authors include renowned art law experts. Ebling/Schulze (Publisher.), ISBN 978 3 406 62699 9. Verlag C. H. Beck, 2012.
On 1 June 2012, BOEHMERT & BOEHMERT partner and trademark expert Dr Florian Schwab makes a guest contribution to the magazine LebensmittelZeitung entitled "Only one of many" (Nur einer unter anderen). Here, he looks at the decision of the European Court of Justice (ECJ) in relation to the EU-wide trademark protection for the Lindt chocolate bunny. Registration of the golden bunny with the red ribbon as 3D community mark was rejected by the Court as not capable of registration. Dr Florian Schwab comments: "The judgement shows, generally it is difficult for a product shape as such to find original trademark protection at EU level. The bunny shape cannot claim trademark protection. The judgement of the ECJ is also significant for its restrictive tendency in respect of the community trademark." Those subscribing to LebensmittelZeitung can see the entire article here.
In the online magazine World Trademark Review Daily from 19.04.2012, BOEHMERT & BOEHMERT partner and brand law expert Dr Florian Schwab reports on the recent decision of the European Court of Justice (General Court) in the BEATLE / BEATLES case. In the decision, the Court - different to the Opposition Division - upheld the opposition to various BEATLES brands in connection with the famous British pop group raised against a picture mark BEATLE used mainly for wheelchairs. The Court upheld exploitation of the known BEATLES brand. In so doing, the Court drew protection of reputation very widely so that goods which are not prima facie similar are also included. Those subscribing to WTR Daily can see the entire article here.
In the 04/2012 edition of GRUR-Prax from 17th February, BOEHMERT & BOEHMERT partner and attorney Dr Rudolf Böckenholt has provided a comment on the decision made by the Federal Court of Justice on 17th August 2011 regarding the “akustilon” case. This high-court decision states that in trade mark cancellation proceedings at the German Patent and Trade Mark Office, it is not a deciding factor whether or not the registered owner is actually also the owner of the trade mark, or whether this still even exists. This is to be assumed in the official procedure, and examined only in any potential action for trade mark cancellation before the ordinary courts (state courts). This question has previously not had a uniform answer in the case law or the literature of industrial property law. The first civil senate of the Federal Court of Justice responsible for trade mark law now draws on general procedural case law. Since 2009, Dr Böckenholt has been a regular contributor to GRUR-Prax. The article can be viewed by subscribers at.
The revised and expanded third edition of the renowned “Handbuch Wirtschaftsstrafrecht“ or Handbook of Commercial Criminal Law – HWSt) edited by Prof. Dr. Hans Achenbach and Prof. Dr. Andreas Ransiek is now available through C.F. Müller Publishers, Heidelberg. The chapters on copyright law and patent law are written in full by lawyers from BOEHMERT & BOEHMERT. The chapter on copyright criminal law was written by Prof. Dr. Axel Nordemann. Malte Nentwig substantially revised the chapter covering “Patent and Utility Model Law”. Dr. Florian Schwab is responsible for the chapter “Countering Product Piracy”. All authors were involved in the production of the previous editions of the handbook. The handbook offers a compact representation of the most important areas of commercial criminal law in 1762 pages and focuses on the explanation of aspects relevant to practice. Handbuch Wirtschaftsstrafrecht (Handbook of Commercial Criminal Law). Series: Recht in der Praxis (Law in Practice). C. F. Müller, Heidelberg, 2012. ISBN 978-3-8114-3721-0.
Writing in the online edition of the World Trademark Review Daily on 2 December 2011, BOEHMERT & BOEHMERT partner and trademark expert Dr Florian Schwab has commented on the decision by the European Court of Justice in the Buffalo Milke Automotive Polishing Products Inc. vs. Office for Harmonization in the Internal Market (OHIM) case. The decision deals with the question of right-preserving usage, a matter very relevant in practice and as yet treated with some irregularity in the case law of the European courts. Here, the case deals with requirements placed on usage documents submitted on appeal.
The online edition of the World Trademark Review Daily of 21.01.2011 includes an article by BOEHMERT & BOEHMERT partner Dr. Florian Schwab. The short contribution entitled “Transliteration of Greek word for ‘colour’ held to be descriptive” deals with the ruling handed down by a court of first instance of the European Communities on 16th December 2010, in which the transliteration of ‘chroma’ was rejected as a marker for sanitary fittings on the grounds that it was purely descriptive. Dr. Schwab is a long-standing and regular contributor on.
In autumn 2009, a symposium was held at the Institute for the Protection of Industrial Property Rights and Copyright of the Humboldt University, Berlin, to mark the 50th anniversary of the Gesellschaft zur Verwertung von Leistungsschutzrechten (GVL), the collective body representing secondary exploitation rights of artists and manufacturers. The contributions made there have now been revised and updated in the publication "50 years of GVP - 50 years of collective assertion of copyright", published by Tilo von Gerlach and Guide Evers. BOEHMERT & BOEHMERT partner Dr Martin Schaefer is represented in the publication with his contribution "Sound Recordings and the GVL". The work is published by Gruyter Verlag and can be ordered from this link.
BOEHMERT & BOEHMERT partner Dr Martin Schaefer contributes the chapter on Germany in the recently published manual "Copyright in the Information Society: A Guide to National Implementation of the European Directive". The manual explains the current state of implementation of the Copyright Directive 2011/29/EC in the various member states of the European Union. The book, by Edgar Elgar Publishing, was published by Brigitte Lindner and Ted Shapiro. The Guide can be purchased online for USD 235 from the publisher. ISBN 978 1 84980 010 5, 2011, 648 pages.
In edition 35/2011 of the specialist magazine "musikmarkt", BOEHMERT & BOEHMERT partner Dr Martin Schaefer explains the background to the continued dispute between GEMA and YouTube and proposes a number of options for its resolution. Both parties have been unable to agree upon an appropriate payment model as yet. As a result, numerous well-known videoclips cannot by accessed on YouTube. The dispute concerns, inter alia, how to measure the value of music. "GEMA views YouTube as a download service and wants to apply the same tariffs as are applied to iTunes," Dr M Schaefer explains. "YouTube, however, views itself as a broadcaster. This is a huge difference," the music law expert goes on. That there is a possibility for agreement is seen from the contracts agreed by YouTube with record labels with or without GEMA sister companies. The full article "Much Ado About Nothing?" can be found at.
The Federal Patent Court will celebrate its 50th anniversary this year. To mark the event, the publication "50 Years of the Federal Patent Court" will appear and will include articles on industrial property rights from around 70 authors on 1184 pages. BOEHMERT & BOEHMERT partner Dr Klaus Dieter Langfinger has contributed the article "Olazapon - A Paradigm Shift" (p 379). The publication is published by presiding judges at the Federal Patent Court Munich, Achim Bender, Klaus Schülke and Dr Volker Winterfeldt and can be ordered from Wolters Kluwer Publishers: ISBN 978-3-452-27526-4.
In the July/August issue of the IP Journal "Mitteilungen der deutschen Patentanwälte", BOEHMERT & BOEHMERT expert Dr. Stefan Schohe comments on the latest decision by the Federal Court of Justice (Bundesgerichtshof) on statutory requirements for the patentability of computer-implemented inventions (decision X ZR 121/09 - Website Display (Webseitenanzeige)). He especially puts this decision in context to the most recent case law of the Federal Court of Justice and of the European Patent Office.
Together with Prof Toshiko Takenaka (University of Washington, Seattle), BOEHMERT & BOEHMERT partner Dr Jan B. Krauss has contributed an article to the Journal of Patent and Trademark Office Society (JPTOS) (edition 02/2011 volume 93, issue 2) entitled "A Special Rule for Compound Protection for DNA-sequences - Impact of the ECJ "Monsanto" decision on Patent Practice".
BOEHMERT & BOEHMERT partner Dr Jan Krauss contributed an article entitled "What are <essentially biological procedures>?" in the current edition 06/2011 of the specialist magazine "Mitteilungen Deutscher Patentanwälte" and comments on the decisions G1/08 and G2/07. These decisions centred on the clarification of the term "essentially biological procedures" used in the European Patent Convention, for example, to exclude procedures for the growing of plants from patentability.
In volume 15/2011 of the music magazine “musikmarkt” BOEHMERT & BOEHMERT partner Dr. Martin Schaefer comments on a key problem for the music industry. Despite increasing legal online music sales, the overall problem is still not solved. In the case of unpermitted music offers which cannot be suppressed at the source, other methods must be employed to ensure they cannot be used, and this with the help of Internet access providers too. To what degree providers can be requested and obliged to help in such suppression is part of the discussion. It is technically feasible in several different ways. Within the scope of the debate about possibilities for cooperation by providers, the term “Netzsperre” or Internet blocking creates confusion with its continuing lack of precise definition. It can refer to the locking of individual user accounts through to blocking of entire domains. One thing is sure however according to Dr. Schaefer: “The political course set regarding the fundamental obligations of providers to participate in the prevention of legal infringements when they have ‘nothing to do with’ these infringements will be a decisive element in the further development of the content industries.
In the online edition of the World Trademark Review Daily (WTR Daily) from 29 March 2011, BOEHMERT & BOEHMERT partner Dr Florian Schwab discusses the decision in Efemy's Holding GmbH v. OHIM, Case T-50/09 of the European Court of Justice (ECJ). Of interest to trade mark lawyers are the statements of the ECJ on the formal requirements for proof of genuine use in the opposition proceedings. The German company Efemy's Holding GmbH responded to the objection of non-use, in keeping with the time limit, by stating that it would submit a fax consisting of 200 pages of usage documentation. The usage documentation was then received by the Office for Harmonisation after expiry of the time limit. Dr Schwab regularly comments in this newspaper.
The famous Amazon “One-click” application was subject matter of a decision of the Canadian Court of Appeal, which dealt in a fundamental manner with the issue of patenting business –related inventions. In the February issue of IP journal “Mitteilungen der deutschen Patentanwälte” (p. 78), BOEHMERT & BOEHMERT expert Dr. Stefan Schohe summarized the essentials of the court’s reasoning and put it in context with recent decisions in the USA (In re Bilski) and in Europe.
The current newsletter 1/2011 of the Association of Industrial Property Experts (VPP) includes an article composed by BOEHMERT & BOEHMERT partner Dr Klaus-Dieter Langfinger on the subject of "Research Privilege and Indirect Patent Infringement". The article is based on a speech given by Dr Langfinger at the VPP Autumn Conference.
In the 02/2011 edition of "Mitteilungen Deutscher Patentanwälte" (Notices from German Patent Lawyers), BOEHMERT & BOEHMERT partner Dr Jan B. Krauss has contributed an article entitled "Welcome to the Privileges of Substance Protection for DNA Sequences - The Monsanto Decision and Information-related Substance Protection" and has commented on this decision.
BOEHMERT & BOEHMERT partner Prof Dr Heinz Goddar and Dr Carl-Richard Haarmann recently published an article in the 11/12-2010 (China IP 11-12/2010,pp 68/72) edition of the much respected Chinese specialist newspaper "China Intellectural Property Magazine"(ISSN 1811-4822). The article entitled "The defence against unjustified attacks based on IPR on the opportunity of trade fairs and exhibitions in Germany" looks at the risks faced by exhibitors committing infringement of industrial property rights in trade fairs taking place in Germany. The authors also explain which strategies can be employed to avoid these risks. The article is available in English at.
or as pdf here
BOEHMERT & BOEHMERT partner Dr. Florian Schwab, discussed the remarkable judgment, in terms of trademark law, of the Federal Supreme Court of 19.11.2009 in the matter of “MIXI” in the online edition of the World Trademark Review Daily of 29.10.2010. The case concerned the independent distinctive role of a composite mark. Dr. Schwab has been a regular contributor to the magazine for many years.
The Japanese version of the 3rd edition of the well-known “EPC Handbook - Guide for Practitioners” was released recently (ISBN 978-4-7693-7180-9). This edition was also co-authored by BOEHMERT & BOEHMERT Partners, Prof. Dr. Heinz Goddar and Christian W. Appelt, and translated into Japanese by the Japanese authors, Motohiko Fujimara, S. Nagaoka and Key Konishi. In particular, the third edition covers the extensive changes to the European Patent Convention (EPC) which came into force on 1st April 2010. Versions of the EPC Handbook are also available in China, Taiwan and India, as well as in Arabic.
In the 30.7.2010 online edition of the World Trademark Review Daily BOEHMERT & BOEHMERT partner Dr. Florian Schwab discussed the ruling of the European Court of Justice in the case of Grain Millers Inc. vs. OHIM concerning proof of use of a company name as part of opposition proceedings. Dr. Schwab is a long-time contributor of regular articles to the journal.
BOEHMERT & BOEHMERT expert Dr. Stefan Schohe provided a contribution on current legal developments in the field of computer-implemented inventions in issue 06/2010 (p. 285) in the professional journal “Mitteilungen der deutschen Patentanwälte”. Dr. Schohe commented on the opinion G 3/08 of the Enlarged Board of Appeal of the European Patent Office, which discusses of the role of the Boards of Appeal of the European Patent Office and the issue of patentability of computer-implemented inventions in a fundamental manner. The opinion was preceded by extensive proceedings, during the course of which about 100 amicus curiae briefs were filed.