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News archive

Update Ed. 2/2017

  • FOR NOW: Stop of Unified Patent Court
  • Grant of compulsory license for HIV drug
  • No "offering" at a domestic trade fair
  • Competitive originality possible for formerly patented products

FOR NOW: Stop of the Unified Patent Court by the German Constitutional Court

The laws for a reform of the EU patent right (unitary patent) and a unified European patent court (Unified Patent Court) are currently on hold in Germany. More ...

Update Ed. 1/2017

  • “Cherry picking” - Federal Court of Justice’s decision “Ventileinrichtung” (valve unit)
  • “Hard Brexit” - Progress of unitary patent
  • No trademark protection for 3D trademarks with exclusively technical features
  • Insurances in connection with Intellectual Property right

„Hard Brexit“ - Progress of the unitary patent

Despite Britain’s announcement to exit the European Union, the United Kingdom surprisingly announced on November 28, 2016 that they intend to ratify the agreement on the Unified Patent Court. Should the UK implement this intention, only Germany would have to follow. More ...

Update Ed. 2/2016

  • Possible effects of the BREXIT on the IP sector
  • Federal Court of Justice (BGH) rules against idle blockage of domain names
  • Protection of an achievement under competitive law for products
  • District Court Düsseldorf confirms an „offering” by the mere exhibition of a patentinfringing product at a domestic trade fair

EGC: The European Union Trademark NEUSCHWANSTEIN remains registered for the Free State of Bavaria

The German Association „Souvenir-Geschenke-Ehrenpreise“ (Souvenirs-Presents-Prizes) filed an invalidity action with the European Union Intellectual Property Office (EUIPO) against the European European Union Trademark NEUSCHWANSTEIN (no. 10144392) of the Free State of Bavaria. The trademark was filed and registered for perfumery, cutlery, jewellery, musical instruments, writing and letter paper, toys and other goods which can be subsumed under souvenirs in the year 2011.  More ...

Consequences for European Union Trademarks, community designs and unitary patent

As in the referendum regarding Britain’s EU membership on June 23, 2016, a slight majority of Great Britain’s population voted for Britain to exit the EU, the question now arises which effect the forthcoming exit of Britain will have on the territorial scope of protection of the European Union trademark, the community design and the unitary patent. More ...

Clarity – a patent requirement nonexistent in German Patent Law

One of the requirements for a patent application according to § 34 (4) of the German Patent Act is that: “In the application, the invention must be disclosed as clearly and completely that it can be carried out by an expert.” This sentence contains the requirement of practicability for a skilled person. In the European Patent Convention Art. 83 EPC contains a corresponding requirement. Art. 84 EPC defines the requirement of clarity. However, there is no equivalent for Art. 84 EPC in German Patent Law.  More ...

Update Ed. 1/2016

  • Priority I – Priorities regarding range specifications
  • Priority II – Transfer of priority rights
  • Danger of liability due to trademark infringements as a result
    of “Google hits”
  • 3D trademark “RANGE ROVER EVOQUE“ not distinctive

Update Ed. 2/2015

  • EPO decided on fee structure for unitary patent
  • Unitary patent and Unified Patent Court
  • Utility model protection – a strong weapon in case of infringements
  • Hague Agreement on designs
  • Nivea Blue registrable?

Italy joins Unitary Patent

Italy has joined the Unitary Patent and forms the 26th member state of the enhanced cooperation on the Unitary Patent protection. More ...

Lindt infringes neither the Goldbear trademarks by Haribo nor does Lindt copy Haribo’s fruit gum products

The company Haribo is known worldwide for its fruit gum products, in particular for the gummy bears. It is the owner of the German word mark “Goldbären” which was applied for in 1976, of the German trademark “Goldbär” applied for in 1999 and the German trademark “Gold-Teddy” applied for in 2011 for confectioneries. More ...

"Skype" and SKY confusable

Meanwhile, the General Court of the European Union has rejected the community trademark application SKYPE for video calls via internet due to the opposition by the British pay tv channel SKY, the owner of the older trademark SKY. More ...

Update Ed. 1/2015

  • Interesting harmonisation efforts
  • Opt-out for classic European patents
  • Equivalent patent infringement
  • Purely descriptive names for apps – “wetter.de”

Update Ed. 2/2014

  • German Patent Office or European Patent Office?
  • Federal Court of Justice confirms infringement of a patent for microtitre plates
  • Standardized Procedure for the Euro-PCT way
  • Comment: Use of a trademark such as to preserve the rights
  • Equipment of the Apple Flagship Store registrable as a 3D mark?

Update Ed. 1/2014

  • The Unitary Patent and the Unified Patent Court in Europe
  • Risk when nationalizing a PCT patent application in Germany
  • Degree of market acceptance – red of the German bank „Sparkasse“
  • ECJ decides on German advertising slogan

24 months deadlines for divisional applications repealed by EPO

(Effects on already pending patent applications)

According to a decision by the administrative council of the European patent organisation, the filing of  a divisional application from every pending patent application after the currently valid 24-months deadline will be possible again from April 1, 2014.  More ...

Apple most valuable trademark of the world

According to the trademark ranking list “Best Global Brands 2013” by the consulting firm Interbrand, the trademark “Apple” is the most valuable trademark of the world with a market value of US$ 98.3 bn. “Apple” thereby displaces the trademark “Coca-Cola” after 12 years from the first rank. Moreover, “Coca-Cola” was overtaken by the trademark “Google”, which is the second most valuable trademark with US§ 93.3 bn. Only on third place does the trademark “Coca-Cola” follow with a market value of US$ 79.2 bn. More...

Update Ed. 2/2013

  • Forthcoming fight for first applications between GPTO and EPO?
  • Claims for non-discriminating license conditions
  • Speculative trademarks
  • “Ampelmännchen” of the GDR registrable for printed matters
  • Modernization of the German Design Act

Modernization of the German Design Act

In the following, we would like to introduce the essential changes and innovations of the currently available bill regarding the modernization of the German Design Act. The enforcement of the corresponding changes is to be expected for the beginning of 2014. More ...

European Commission intends to strengthen trademark protection and to facilitate the proceedings

According to a bill by the European Commission, trademark protection in Europe shall become easier and more effective for companies so as to foster innovation and growth. More ...

Partial success for Samsung against Apple in the USA

In the patent litigation between Samsung and Apple, Samsung achieved a partial success in the USA. More...

Federal Court of Justice remands dispute regarding mark with the component “VOLKS” back to Higher Regional Court

The plaintiff in the present case is Volkswagen AG, owner of the community trademark “VOLKSWAGEN”. This trademark is registered for vehicles as well as for their repair and car parts. More...

ECJ dismissed action of Spain and Italy against Unitary Patent

Thanks to the decision by the Council of the European Union regarding the empowerment of a strengthened cooperation, at least 25 of the 27 member states could expedite the creation of a unitary patent protection and could recently, i.e. in February this year, sign the agreement regarding the unified patent court, after the two regulations regarding the unitary patent and the translation requirements were already approved in December last year. Spain and Italy bothered about this and filed a suit before the ECJ for disallowance of the strengthened cooperation. More...

Protection of Pharma Patents in India

On April 1, 2013, the Supreme Court in New Dehli decided as last instance that the main active ingredient of the medicine “Glivec” of the Swiss pharmaceutical company Novartis was not patentable in India. The Supreme Court is of the opinion that only a minor modification regarding the principally well-known active ingredient of the medicine has been made, which does not constitute a significant increase of the therapeutic effectiveness. More...

Costs for Representation in Patent Nullity Procedures – New Decision by Federal Court of Justice

With its decision dated December 18, 2012, the Federal Court of Justice determined the conditions for the enforcement of double representation costs – i.e. the costs for a patent attorney and a lawyer – in patent nullity procedures. Based on the reform of the patent nullity procedure in 2009, the Federal Court of Justice thereby also attempts to organize the cost structure of the nullity procedure in a comprehensible way. In the meantime, these requirements have been confirmed by the Federal Court of Justice with its decision of January 21, 2013. More ...

Word mark beats product – an extraordinary battle!

In a decision in mid-December 2012, the German Regional Court based in Cologne decided in favour of HARIBO GmbH & Co. KG as owner of the well-known word mark “GOLDBÄREN” as plaintiff against the three-dimensional product design of a chocolate bear. More ...

Current Application Figures from 2012 of EPO and GPTO

The number of new applications at the EPO increased by 5.2 % in 2012 compared with the previous year. The technical field with most new applications is medical technology with more than 10,000 new applications. Medical technology is followed by the technical fields of electrical machines as well as of digital communication on places 2 and 3. More...

Update Ed. 1/2013

  • German Patent –another option to the unitary patent (community patent)?
  • European unitary patent to the finishing line – structure and effects
  • Expiration of main license does not affect sublicense; according to German law, it remains in force
  • BMW - The registration of "M" as a word mark
  • Patentability of precursor cells with neuronal/glial characteristics
  • Registrability of the mark „WÜRZKOMPASS“ (German for „seasoning compass“)
  • Exact business address mandatory in leaflets
  • Federal Court of Justice specifies jurisdiction regarding keyword advertising

Update ed. 2/2012 October 2012

  • Patent strategy: The better way towards patents in Europe via EPO or nationally?
  • New EU Patent Court goes to Paris
  • The Melon-Patent
  • DESERTFUEL registrable for fuels (petrol)
  • Trademark use for cigarettes in Australia
  • No copyright for the function of computer programmes (CJEU)
  • Inconsistent development in application figures at the GPTO in 2011

Update ed. 1/2012 March 2012

  • Facilitated measures for preserving evidence and enforcement of patents in Germany and Europe
  • Utility model protection in competition to or in combination with patent protection in Europe
  • National infringement decision regarding CTM regularly extends to entire European Union territory
  • ENERGIEKONTOR (energy kontor) as trademark and company sign
  • Informed user unequal to average person skilled in the art in Patent Law
  • No unfair deception by shortened adwords advertisement

Update ed. 3/2011 October 2011

  • Small chances of success for preliminary injunctions based on German patents in the future?
  • Equivalent infringement and scope of protection of patents
  • Internet advertisement: competitive trademark as the key word for displaying an advertisement
  • Identity in sound of two word/figurative marks but with distinct different image components
  • City name with a preceding "Absolute" not allowable
  • Right of use for commercialization of a work protected by copyright on a storage medium (here DVD) comprises also commercialization on a technically improved storage medium (here Blu‐ray Disc)

Update ed. 2/2011 July 2011

  • IP-strategy for Germany: Utility model in comparison to the patent, sometimes still the better alternative?
  • Community patent and European Court failed once again – a never-ending story?
  • No registrability of the number "1000" as a Community trademark
  • Lindt-Golden Bunny not registrable as a 3D-mark
  • Biological processes for the production of plants not patentable
  • Advertising crossed-out prices at introductory offers

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