NEWS

(August 2010)
The German Federal Supreme Court decides on Trademark Infringement in Internet Search Engines
A company that uses a term (“power ball”) which can be confused with the trademark of a third party (“POWER BALL”) in a product description on its website in a specific line which it knows will be searched by internet search engines is held to be infringing the trademark if the search engine shows the terms together as hits. It suffices to be considered use of the mark if the term used as a search word influences the results of the search engine’s selection process and leads the user to the company’s website.

(July 2010)
The EPO Enlarged Board of Appeal decides on Dosage Regimens (G2/08) and Treatment by Surgery (G1/07)
The two recent decisions of the Enlarged Board of Appeal G2/08 and G1/07 differ largely in terms of their clarity and extent of legal certainty conveyed. While the decision on dosage regimens G2/08 is very clear, well reasoned and consistent, despite its exhaustive length the decision G1/07 on treatments by surgery does not give the practitioner much guidance for future cases; legal certainty remains wishful thinking.
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(July 2010)
European Commission proposes Translation Arrangements for the Future EU Patent
According to a proposal of the EU Commission, the application of a future EU patent at the EPO could be filed in any language before being translated into one of the three official languages of the EPO (English, French or German). The applicant would be required to provide a translation of the claims into the remaining two official EPO languages. Only in the event of a legal dispute and upon request of the alleged infringer it would it be necessary to provide a translation into an official language of the member state in which the alleged infringement took place or the alleged infringer is domiciled. In this way, the EU Commission plans to drastically limit the translation costs of future EU patents.

(July 2010)
EU Court of Justice limits absolute product protection for genes
In its decision C428/08 Monsanto Technology LLC vs. Cefetra BV and others, the EU Court of Justice (EuGH) decided on the scope of protection of a patent, EP 456090 B2, protecting i.a. a DNA sequence for an enzyme involved in developing herbicide resistance in plants. The patentee tried to stop importation of soy meal in which the gene was detectable but no longer performed its function of conferring herbicide resistance. Monsanto claimed absolute product protection for the patented DNA sequence, which was undoubtedly and detectably present in the soy meal. In determining the scope of protection, the court considered i.a. the EU Biotech Directive 98/44. The court came to the conclusion that patents for a DNA sequence must be limited to the function/purpose described in the patent. Such a limitation applies to the genetic information as such as well as to the protection of material which contains the genetic information. Contrary to the protection for chemical substances, this decision does not allow absolute product protection for DNA sequences, and limits the scope of protection of a gene patent to the disclosed function/purpose, thus conferring only purpose-limited product protection. This has far-reaching consequences, for instance with regard to the drafting of patent applications and freedom-to-operate analyses.

(June 2010)
New European Group Exemption Regulation for Vertical Distribution Agreements
On April 20, 2010, the EU Commission published a new Group Exemption Regulation for Vertical Distribution Agreements. The new regulations become effective in June 2010, with a one-year transition phase. The Group Exemption Regulation gives corporations an indication of whether a single distribution agreement is considered to be compliant with anti-trust laws. The regulation only applies to corporations with a market share of up to 30%. This threshold applies not only to producers, but also to the following distribution levels. Fundamental limitations of competition, for example fixed resale prices or restrictions on trade in the internal European market, remain unallowable.

(June 2010)
Valid use of a Community Trademark through use of a domain?
In a decision dated June 14, 2010, the Higher Regional Court of Düsseldorf came to the conclusion that domain names which lead to an active homepage used in commerce have not only an address function, but also the trademark function to designate goods and services. The use of such a domain name therefore generally constitutes valid legal use. This is not the case, however, when the domain is used purely as an address, or when the domain would be understood by the users as a descriptive designation. This is how things appeared to the Higher Regional Court of Düsseldorf with regard to the domain "Zapper," which refers to the musician Frank Zapper.

(May 2010)
The German Federal Supreme Court decides on Protection for Software Patents
In it decision dated April 22, 2010, the German Federal Supreme Court came to the conclusion that a system and method is not excluded from patent protection as a program for a computer when a concrete technical problem is being solved by technical means. In this respect it is sufficient when the operation of a data processing program in order to solve a problem is determined by technical features apart from the data processing equipment or when the solution specifically consists of developing a data processing program in such a way that it relies on the technical features of the data processing equipment (for example, the different properties and capacities of hardware and software components).

(May 2010)
The German Federal Supreme Court decides on Omissions in German Translations of European Patents
In a decision dated March 18, 2010 the German Federal Supreme Court came to the conclusion that a patent holder enjoys patent protection in the Federal Republic of Germany even if there are omissions in the timely filed German translation of the respective European Patent. In such cases a corrected translation can be submitted at a later date, as can already be done in the case of inaccurate translations.

(May 2010)
Opinion from the Enlarged Board of Appeal of the European Patent Office on the Patentability of Computer Programs (G 3/08)
In October 2008, the President of the EPO had referred a number of questions related to the patentability of computer-implemented inventions to the Enlarged Board of Appeal. Now, the Enlarged Board of Appeal has issued its Opinion in relation to this referral. The Enlarged Board concluded that there is no divergence in the case law which would make the referral admissible. Rather, the Enlarged Board found the existing case law to be based on a legitimate development. Accordingly, the current case law will continue to apply to patentability of computer-implemented inventions.

(April 2010)
German Federal Supreme Court confirms the validity of Microsoft patent EP 618 540 relating to FAT/VFAT
In its decision dated April 20, 2010 the German Federal Supreme Court (BGH) confirmed the validity of the German part of European patent EP 618 540. The patent had been revoked in its entirety by the Federal Patent Court in October 2006. In view of the importance of the patent in the field of file management, the BGH issued a special press release on the decision. Microsoft was represented before the German Federal Supreme Court by Grünecker, Kinkeldey, Stockmair & Schwanhäusser.

(April 2010)
Regional Court of Hamburg limits the liability of access providers
In the opinion of the Regional Court of Hamburg, cease and desist claims cannot be brought against an access provider if external internet sites provide links to further websites where copyright-infringing music is available to download. The criteria for "disturbance liability" (Störerhaftung) are not met, and the access provider cannot be held liable either as offender or participant.

(April 2010)
German Federal Supreme Court decides on the disclosure of a feature in a figure
A feature derived from the description of a patent must clearly belong to the teaching of the invention. In the same way, drawings are a part of the disclosure and are to be considered to have the same value as the claims and the description in the application. A solution depicted in the drawings is sufficient to constitute a possible embodiment of the invention. In this respect it is not detrimental if no particular effect regarding the figure is explicitly mentioned in the description.

(March 2010)
The Higher Regional Court of Cologne decides on data protection on social networking sites
In the opinion of the Higher Regional Court of Cologne, by uploading a photo onto a social networking site like Facebook, consent is also given for access to the photo through other media via search engines. This applies unless the user explicitly protects his data from access by third parties.

(March 2010)
The German Federal Supreme Court decides on the enabling disclosure requirement regarding an invention containing a feature defined by a range without an upper or lower limit
The German Federal Supreme Court came to the conclusion that an invention is not enablingly disclosed when the patent claims contain generalized formulas which universalize the patent-protected area beyond the area available to the person skilled in the art through the teaching of the patent. This applies at least in a case where a feature defined by a range without upper or lower limit is made more definite through two parameters working to counteract one another without the restraints created by the joint effect of the parameters becoming clear.

(February 2010)
The German Federal Supreme Court decides on Online Sales
In a recent decision, the German Federal Supreme Court found the sales model of a US producer of online games permissible. When a traditional book or DVD is purchased in a store, it can be re-sold at will. E-Books, computer programs, and online music, in contrast, are often bound to one account of an individual user and cannot be transferred to another user. The German Federal Supreme Court considered this restriction permissible.

(February 2010)
The German Federal Supreme Court decides on the likelihood of confusion between the marks AIDA and AIDU
The German Federal Supreme Court held that a likelihood of confusion between the trademarks AIDA and AIDU may not be given. Despite the oral and visual similarity of the two marks, the disputed mark AIDA has a meaning in the eyes of the public which the mark AIDU lacks: the title of the opera from Giuseppe Verdi. The case was remitted to the Higher Regional Court.

(January 2010)
Article 4 No. 6 German Unfair Competition Act contradicts European Law
In a decision dated January 14, 2010, the European Court of Justice concluded that the German general prohibition against combination of a prize lottery with the purchase of a sales product (Art. 4 Nr. 6 Unfair Competition Act) is too restrictive, and therefore contradicts European Law. In the Court’s opinion, it must remain possible to assess this practice in individual cases.

(January 2010)
Car Manufacturer Loses Dispute about Trademark Infringement by Toy Car
On January 14, 2010 the German Federal Supreme Court decided that a vehicle manufacturer cannot prevent the marketing of toy cars carrying the manufacturer’s trademark logo on the basis of his trademark rights. In the court’s opinion, the consumer will not see the trademark logo on the toy car as an indication of the car’s origin.

(January 2010)
The German Federal Supreme Court restricts Spam Mails
The German Federal Supreme Court has decided that, in light of unfair competition concerns, email advertisements are only allowable with the explicit or implied consent of the recipient. Even in the case of advertisements directed to business owners, presumed consent is not sufficient. Entering an email address on a homepage also does not imply consent to receive email advertisements.

(December 2009)
The Counsel of Ministers of the European Communities intend to bring patent reforms forward
The Counsel of Ministers accepted on December 4, 2009 a regulation regarding the community patent which now will be discussed in the European Parliament. According to this regulation the grant of the patent for an invention shall have immediately effect for the whole European Community. Furthermore, the Counsel of Ministers proposed the installation of a European Patent Court. This European Patent Court shall be based on the national court structures. One Appeal Court shall ensure the uniformity in the application of the law.

(November 2009)
European Patent Office and Japanese Patent Office to pilot "Patent Prosecution Highway"
On January 29, 2010, a test phase of a bilateral Patent Prosecution Highway will begin at the European and Japanese Patent Offices. If a patent application to either office contains at least one allowable claim, the applicant will have the option of requesting that the second office perform a fast track examination of the corresponding claims in the corresponding application. The goal is for each patent office to be able to take advantage of the examination results of the other, thereby both reducing the examination workload and improving patent quality.

(November 2009)
The German Federal Supreme Court refers Biotech Questions to European Court of Justice
The German Federal Supreme Court (BGH) intends to refer several questions relating to Art. 6 of the Biotech Patent Directive to the European Court of Justice (ECJ). At issue is the interpretation of the terms "human embryos" and "commercial purposes". In the opinion of the German Federal Supreme Court, Art. 6 of the Directive is ambiguous in several respects. First, there is the question of how the Directive defines the term "human embryos". It remains to be decided whether a stem cell obtained from a blastocyst (a particular developmental stage of a fertilized egg) is also to be regarded as an embryo in the sense of the Directive, even though it does not have the ability to further develop into a human individual. If necessary, it will also to be decided whether a blastocyst as such is an embryo in the sense of the Directive.

(October 2009)
No trademark protection for exclamation marks
The European Court of First Instance came to the conclusion that an exclamation mark cannot be registered as a Community Trademark. According to the court, an exclamation mark – even if it is displayed in a rectangular frame – lacks the necessary distinctive character. Furthermore, the court did not accept the evidence as being sufficient that the mark has gained a distinctive character through its use in the course of business.

(September 2009)
Thailand becomes PCT Member State
On September 24, 2009, Thailand acceded to the Patent Cooperation Treaty (PCT). Three months after this date, namely on December 24, 2009, the PCT will come into force with regard to Thailand.

(September 2009)
The German Federal Supreme Court decides on the Relevance of False Indications of Trademark Protection
The German Federal Supreme Court came to the conclusion that the user of a mark together with the indication "®", without actually being owner of that mark or a licensee regarding that mark, is misleading in the course of business in a manner which is regularly relevant under unfair competition aspects. The term "misleading" already implies a certain relevance. A further examination as to the relevance under the aspect of Art. 3 Unfair Competition Act is not necessary.

(September 2009)
The German Federal Supreme Court decides on Questions regarding Sublicenses in Copyright Law
In a decision, the German Federal Supreme Court came to the conclusion that in copyright law a simple license which is based and dependent on an exclusive license does not automatically terminate if the exclusive license is revoked due to non-use in accordance with Art. 41 Copyright Act.

(August 2009)
The German Patent Modernization Act comes into force on October 1, 2009
The Patent Modernization Act has been published in the Federal Gazette on August 4, 2009 and will come into force on October 1, 2009. An amendment which is relevant in practice is that employees’ inventions which are announced to the employer after September 30, 2009 are automatically transferred to the employer. This, however, is not applicable if the employer waives his/her claim to the invention within a period of four months. The period starts with the announcement of the invention by the employee.

(August 2009)
The German Federal Supreme Court Decided on Damage Claims against Several Infringers in a Distribution Chain
In a decision, the German Federal Supreme Court concluded that, as a consequence of an intellectual property infringement, the transfer of the infringer’s profit can be claimed against each infringer within a distribution chain. However, if one infringer within the distribution chain compensates the next infringer because of his/her delivery of infringing products, such compensation can lead to a reduction of the infringer’s product.

(July 2009)
The European Court of Justice Decided about the Ownership in a Community Design Patent
Article 14 par.1 of the Community Design Patent Regulation provides that the right to a community design shall vest in the designer or his successor in title, whereas article 14 par.3 gives this right to the employer if a design is developed by an employee in the execution of his duties or following the instruction given by the employer. In a recent judgment, the European Court of Justice came to the conclusion that article 14 par. 3 of the community design patent regulation is only applicable in employment relations and not for community designs which have been developed on a contractual basis by an independent designer. In the latter case the right to the community design belongs to the designer if not transferred by contract to a successor in title.

(July 2009)
The Higher Regional Court Munich Strengthened the Rights of Trademark Owners against Ebay
As the first Higher Regional Court in Germany, the Court in Munich decided that a trademark owner is entitled to interdict a distributer to sell trademark protected goods via Ebay. According to the Court, the restriction of competition resulting from this is justified on the basis of the European Community block exemption for vertical distribution agreements. This block exemption, however, is only applicable for trademark owners with a market share of less than 30%. The free competition prevails if the market share is higher.

(July 2009)
The European Court of Justice Decided about the Preconditions Constituting Bad Faith in a Community Trademark Application
In a recent decision, the European Court of Justices has in a case concerning the application of a three-dimensional European trademark for a chocolate bunny summarized the preconditions of "bad faith". It has to be taken into account: (1) The fact that the applicant knows or must know that a third party is using, in at least one member state, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is thought; (2) The applicant's intention to prevent the other party from continuing to use such a sign; and (3) The degree of legal protection enjoyed by the third parties sign and the sign for which registration is thought.

(July 2009)
The European Court of Justice Decided about Infringement of Well-Known Trademarks by Using Similar Trademarks in a Comparison List
In a recent judgment the European Court of Justice held that the use of a sign similar to a mark with a reputation in a comparison list must be considered as an advantage that has been unfairly taken of the distinctive character or the repute of that mark. According to the European Court of Justice the attempt of a third party is unfair, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and prestige, and to exploit, without paying any financial compensation and without being required to make efforts of its own in that regard, the marketing efforts expended by the proprietor of that mark in order to create and maintain the image of that mark. It is not required that there is likelihood of confusion or likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The European Court of Justice held that in this situation trademark infringement can be in place as well as unfair comparative advertising.

(June 2009)
The German Parliament Decided on June 19, 2009 an Amelioration of International Design Patent Protection
According to the new law which will shortly come into force, an international application for a design patent can be filed either directly at the International Bureau of the World Intellectual Property Organization (WIPO) or with the German Patent and Trademark Office at the free choice of the applicant. Previously, only a direct application at the WIPO was available. The German Patent and Trademark Office will record an application date and transfer the application to the WIPO. The international registration having the Federal Republic of Germany as designated state has the same effect as a design patent which was registered at the German Patent and Trademark Office.

(June 2009)
Patent Modernization Act Passes the German Parliament
The most important amendment concerns the Employees Inventor’s Act and is that in the future, the employer’s claim for a service invention no longer needs to be declared to the employee. Rather, the amendment provides that the employer automatically claims the invention unless he/she does not waive his/her claim to the benefit of the employee within a period of four months by means of a written declaration. Furthermore, according to an amendment of the Patent Act, the patent nullity action to be filed with the German Federal Patent Court in the first instance and the appeal proceedings before the German Federal Supreme Court shall be streamlined. The new law is not yet in force.

(May 2009)
The European Court of Justice decides on exhaustion of trademark rights in a selective distribution system
In a judgment the ECJ decided that trademark rights can be enforced against a licensee which violates a contractual obligation not to sell goods to a discounter. A precondition, however, is that this violation damages the prestige which gives these goods their air of luxury. In that case, there is no exhaustion of trademark rights.

(May 2009)
San Marino will be the 36th EPC-Member State
With the acceptance procedure completed, the EPC will come into force in San Marino on July 1, 2009. The European Patent Organization has 36 contracting states and nine extension states.

(May 2009)
The German Federal Supreme Court decides about the “compulsory license defense” in a patent infringement suit
According to a decision of the German Federal Supreme Court a patent infringer which is producing in correspondence with a patented industrial standard, can, under fairly narrow conditions rely on a “compulsory license defense” on the basis of anti-trust law. A precondition of this defense is that the patent infringer has asked for a license under reasonable terms. Moreover, the patent owner must, by denying the grant of a license, have violated anti-trust law namely the rule to not hamper another company by discrimination in the absence of reasonable grounds. Moreover, the payment of a reasonable license fee must be secured, e.g. by means of a deposition.

(May 2009)
The German Federal Supreme Court decides about a use right on the basis of an older patent
In a recent judgment the German Federal Supreme Court has decided that a younger patent right can be limited in relation to the owner of an older patent right by the patent claim of the older right. The owner of the older patent may have the right to use. Also, a licensee of the older patent may rely on this use right. The use right, however, only exists to the extent that exclusively the technical teaching of the older patent is used whereas the additional features which are taught by the younger patent are not used.

(April 2009)
The Administrative Council of the European Patent Office Decides about Important Amendments of the Implementing Regulations to the European Patent Convention
As of April 1, 2010, new implementing regulations are applicable. Specifically, divisional applications will undergo far-reaching changes. For a divisional application, the applicant has to take into due account a time limit of 24 months after the first communication in respect to the earliest application. The applicant may file a divisional application related to any pending European patent application, provided that (a) the divisional application is filed before the expiration of a time limit of 24 months from the Examining Division’s first communication in respect to the earliest application, or (b) the divisional application is filed before the expiration of a time limit of 24 months from any communication in which the Examining Division has objected the lack of unity of the invention for the first time. The amended rule is applicable with regard to divisional applications which are filed as of April 1, 2010. As transitional provision, there will be an additional term of six months to file a divisional application.

(April 2009)
New Fees of the Harmonization Office
The OHIM intends to reduce the costs for the registration of community trademarks. The registration fee will be abolished whereas the application fee will be slightly raised. This measures will result in an average cost reduction of about € 700 per application. The new schedule most likely will become effective the first week of May 2009. The abolishment of the registration fee will be applicable for all those community applications which on that date are not yet ready for registration.

(March 2009)
Federal Supreme Court of Germany Changes its Course in its "Olanzapin" Decision to Match Established Case Law of the EPO for Novelty of Chemical Selection Inventions
In a decision, the Federal Supreme Court of Germany (FSC) establishes that the disclosure of a general chemical structural formula in the prior art does not disclose the individual compounds falling thereunder. Rather, the decisive question is whether or not the concrete compound is disclosed. For this, concrete indications are needed in the prior art which enable the skilled person to lay his hands on the chemical compound in question. As already set out in multiple decisions of the EPO, the FSC now also requires that the prior art discloses the compound in question in individualized form. With this decision, the FSC moves toward the case law of the EPO for the novelty of a selection in the field of chemical compound inventions.

(February 2009)
European Patent Office changes the Designation Fees
Starting on April 1, 2009, the designation fee of a European patent application is € 500 independently of how many contracting states have been designated. This regulation concerns European patent applications filed on or after April 1, 2009 as well as international applications entering the regional phase on or after that date. For all previously filed applications, a designation fee of € 85 for each designated contracting state up to a maximum of 7 fees (€ 595) is due. The new regulation therefore leads to a reduction of costs if six or more contracting states are designated. For five or less contracting states, the designation becomes more expensive.

(February 2009)
Montenegro will become EPO Extension State
The European Patent Organization and Montenegro signed an extension agreement. The extension agreement will come into effect later this year and have the consequence that, with a single patent application at the EPO, patent protection can also be obtained in Montenegro and therefore in a total of 39 member states.

(February 2009)
German Federal Patent Court decides on the "Munich White Sausage"
According to a final decision of the German Federal Patent Court, the "Munich White Sausage" does not meet the requirements of European Community law for a registration as a geographical indication. According to the judgment, the "Munich White Sausage" is a "regional, mainly southern Bavarian speciality which is, however, not limited to the region of Munich". For decades, the bigger parts by far have come, however, from other Bavarian regions.

(January 2009)
The German Federal Supreme Court Decides on AdWord/Advertising at Google
On January 22, 2009, the German Federal Supreme Court has decided on three cases concerning adWord advertising at Google. Hereby, a third party trademark or company name is used as a keyword in the frame of a Google search to place an advertisement next to the hit-list. In a first case a third party trademark was used to place advertisement for identical products. The German Federal Supreme Court has referred the question as to whether this constitutes the use "as a trademark" to the European Court of Justice. In a second case the letters "pcb" were used to place advertisement for printed circuit boards. The Supreme Court has denied an infringement of the trademark "PCB-POOL" because “pcb” was only used in a descriptive manner for "printed circuit boards". A third case concerns alleged infringement of a company name which was identically used as an AdWord. The Supreme Court has denied the alleged infringement of a company name right because, according to the court, the internet user knows that the advertisement next to the hit-list does not come from the company he was looking for.

(January 2009)
German Federal Supreme Court Decides on Preconditions for Protection of Non-Registered European Design Patents
The German Federal Supreme Court rendered a landmark decision on the preconditions for protection of a non-registered European design patent. Protection for this non-registered right only comes into existence if the design has been published in the territory of the European Community. A publication outside this territory is not sufficient. On the other hand, publications outside the territory of the European Community can be novelty destroying if the publication could have been noticed by the skilled community of the respective branch in the normal course of business. It is noted that this German Federal Supreme Court decision is not binding courts in other European countries.

(January 2009)
Macedonia the 35th member state of the European Patent Organization
With the beginning of 2009, the former Yugoslav Republic of Macedonia has become the 35th member state of the European Patent Organization. This organization now includes all 27 EU member states plus Croatia, the former Yugoslav Republic of Macedonia, Iceland, Liechtenstein, Monaco, Norway, Switzerland and Turkey. Without being member states, Albania, Bosnia and Herzegovina, and Serbia recognize European Patents. Patent protection, therefore, is now available in up to 38 countries covering a market of about 570.000.000 people.

(December 2008)
EPO Enlarged Board of Appeal decides on patentability of embryonic cells
In a decision, the Enlarged Board of Appeal of the European Patent Office defines criteria when stem cell inventions are not patentable.
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(November 2008)
The German Federal Supreme Court Decides about Parallel Claims of an Intellectual Property Owner and a Licensee against an Infringer
The German Federal Supreme Court decided that an intellectual property owner and an exclusive licensee are regularly in a position to independently claim cease and desist against an infringer. Moreover, both can raise parallel claims regarding a proper accounting as to the extent of infringement and damages. This applies independently to the question of whether damages are calculated on the basis of their own lost profits, infringer’s profits or a reasonable license fee. In order to avoid the possibility that the infringer has to pay more than the “complete damage compensation”, the infringed party shall substantiate, on the basis of its own lost profits, its share and quota of the complete damages. This share or quota is then also to be applied for the damage calculation on the basis of the infringer’s profit or a reasonable license fee.

(October 2008)
Questions about the Patentability of Computer Programs referred to the Enlarged Board of Appeal of the European Patent Office
The EPO President Alison Brimelow has referred a number of questions related to the patentability of computer programs to the Enlarged Board of Appeal. Article 52 (2) and (3) EPC states that programs for computers as such are not to be regarded as inventions and are excluded from patentability. The Enlarged Board of Appeal shall clarify when a claim as a whole falls under this exclusion and under which circumstances individual features relating to programs for computers can contribute to the technical character of a claim, in which case, they are relevant for assessing novelty and inventive step.

(October 2008)
Draft Presented for Simplification and Modernization of German Patent Law
On October 15, 2008 the German Federal Government presented a draft for simplification and modernization of patent law. The first instance patent nullity proceeding before the German Federal Patent Court shall become more effective: The Court shall inform the parties of the issues to be clarified and set a deadline for the response before the oral hearing. The purpose of the deadline is to protect the Court and the other party from the presentation of surprising and new submissions. The appeal proceedings before the German Federal Supreme Court shall also be streamlined: In the future, the German Federal Supreme Court shall be limited to verifying the correctness of first instance judgments and a court expert shall only be appointed in exceptional cases. Finally, the employees’ inventors’ act shall be simplified. The form requirements for claiming an invention, which in practice have often been the source of mistakes, shall be cancelled. Instead, four months after an invention is announced by an employee, the invention shall be deemed to be claimed by the employer and shall be automatically transferred to the employer if the employer did not free it beforehand.

(September 2008)
The German Federal Supreme Court decides about trademark protection for pictures which show celebrities
In a recent decision the German Federal Supreme Court came to the conclusion that the picture of a deceased or living person can be trademark protected. However, the picture of a celebrity which is known in the public, is not distinctive for such goods and services which, as regards the subject matter, have a connection to the displayed person. In that case the picture is understood by the public only as a hint to the person and not as a hint to the origin of the respective goods or services.

(September 2008)
„Patent Prosecution Highway“ shall be installed between EPO and USPTO
The EPO and USPTO have announced for September 2008 a test run on the “Patent Prosecution Highway”. An applicant who has received a confirmation of the allowability of a patent claim by one of these patent offices shall be entitled to apply for an accelerated patent prosecution of identical claims at the respective other patent office.

(July 2008)
The German implementing law of the European Enforcement Directive (2004/48/EC) comes into force on September 1, 2008
The long awaited law which provides considerable improvements for the holder of intellectual property rights (see our report of April 2008) comes into force on September 1, 2008.

(July 2008)
Italian Torpedo misses its target
The Milan High Court has rejected a declaratory action claiming non-infringement of a European patent in several designated member states. The claim request was directed to a declaration of non-infringement “to the extent that the patent could be valid partially or totally”. The court in Milan was of the opinion that this claim request involved questions regarding the validity of the European Patent for which it was not competent.

(June 2008)
The Enlarged Board of Appeal of the European Patent Office will review a Stem Cell Case
On June 24th and 25th 2008 the Enlarged Board of Appeal of the European Patent Office will review a case concerning a patent application which describes a method by which primate embryonic stem cells derived form an embryo can be maintained in vitro for a long period of time without losing their potential to differentiate into any cell of the body. One of the main reasons for to refuse the application was that the disclosed method of obtaining stem cells used as the starting material a primate - including human - embryo which was destroyed in the process. The Enlarged Board of Appeal now has to clarify open legal points regarding the patentability of human embryonic stem cells under the European Patent Convention.

(June 2008)
The European Court of Justice decides about the use of a trademark in the frame of comparative advertisement
The company "O2" is owner of a trademark showing the logo of light bubbles in a blue fluid. A competitor has used a confusingly similar logo for the same goods and services, however, in the frame of a comparative advertisement. The European Court of Justice (C-533/06) has decided on June 12. 2008 that the proprietor of a registered trademark is not entitled to prevent the use, by a third party, of a sign identical or similar to his mark, in a comparative advertisement which satisfied all the conditions, laid down in art. 3 a (1) of the directive 84/450, under which comparative advertisement is permitted.

(June 2008)
The German Federal Supreme Court denies infringements of the trademark "POST"
In two decisions, the German Federal Supreme Court has rejected actions of "Deutsche Post AG" against competitors. The plaintiff is owner of the trademark "POST" for, between others, the transportation and service of letters and packages. The competitors are using "City Post" and "Die neue Post" as trademark and company name respectively. The German Federal Supreme Court has left the question open as to whether there is a likelihood of confusion between the trademarks and company names. The court concluded that the competitors are using "POST" only in a descriptive manner for their services (Art. 23 No. 2 Trademark Act).

(May 2008)
The German Federal Supreme Court decides about trademark infringements in Internet-Auctions
The German Federal Supreme Court decided that the provider of an Internet platform is liable for trademark infringements committed by offering parties. The trademark owner has to substantiate and to bring the evidence that the infringing products are offered on the internet platform in a commercial manner and not for private purposes. A trademark infringement, however, is given even if it is specifically mentioned in the offer that the product is faked and not an original product.

(May 2008)
The implementing law of the European Enforcement Directive (2004/48/EC) passes the German Federal Counsel
On May 23, 2008, the law for ameliorating the enforcement of intellectual property rights passed the Federal Counsel. Now the way towards an implementation of the European Enforcement Directive (2004/48/EC) in Germany is free. If the law is executed by the Federal President and pronounced in June, 2008, it can come into force on August 1, 2008.

(April 2008)
Germany is going to implement the European Enforcement Directive (2004/48/EC)
On April 11, 2008, the law concerning the implementation of the Enforcement Directive has passed the German “Bundestag”. It is to be expected that this law will pass the German “Bundesrat” as well and will come into force soon. The following key points are worth noting: The Patent Act, the Utility Model Act, the Semiconductor Protection Act, the Copyright Act, the Design Patent Act and the Plant Varieties Protection Act are in parallel and almost identically adapted to the requirements of the Enforcement Directive. The information rights which an IP owner has against third parties such as internet providers are ameliorated. In case of an infringement which is committed in a commercial manner, the IP owner has a right to be informed about the infringement situation against third parties. If the IP owner can show a sufficient likelihood of infringement, he/she has claims against the infringer which are directed to the inspection of possibly infringing items or the presentation of documents. These claims can be enforced by means of a preliminary injunction and the court can take the measures which are necessary to guarantee confidentiality. Furthermore, provided that the principle of proportionality is respected, the infringer can be obliged to remove infringing goods from the distribution channel. Last but not least, the IP owner has the option that a court ruling against an infringer is being published.

(March 2008)
Change in rules on national search reports for CTMs
A change in the rules covering applications for Community Trade Marks (CTMs) will make national searches optional from 10 March, 2008. National search reports will be produced only on request of the applicant under an all-or-nothing principle, whereby searches will be done for a separate fee in all participating member states of the EU. Community search reports and warning letters will continue to be delivered as before. The request for national searches must be made when the application is filed. For trade marks with a filing date prior to 10 March 2008, the “old” system will apply.

(February 2008)
The London Agreement will enter into force on May 1, 2008
European patents in respect of which the mention of grant was published after May 1, 2008 fall under the London Agreement, having the consequence that the translation requirements are considerably lowered. The translation requirements according to the London Agreement are basically laid down in Article 1 of the Agreement and can be summarized as follows: Any state party to this Agreement – on February 5. 2008: Germany, France, Island, Hungary, Latvija, Liechtenstein, Luxembourg, Monaco, Netherlands, Slovenija, Suisse and the United Kingdom - having an official language in common with one of the official languages of the European Patent Office (English, German, French) shall dispense with the translation requirements provided for in Article 65 (1) of the European Patent Convention. This means in practice that for those contracting states a translation of the specification is no longer required. Contracting states of the London Agreement which have no official language in common with either English, German or French shall dispense with the translation requirements provided for in Article 65 (1) of the European Patent Convention if the European Patent has been granted in the official language of the European Patent Office prescribed by that state or translated into that language and supplied in accordance with Article 65 (1) of the European Patent Convention. In practice, this means that a full translation of the specification in the national language is only required if the patent is not available in the EPO language designated by the country concerned. It is to be expected that many contracting states of the London Agreement having neither English nor German nor French as the official language will designate English. In this case, a translation of the patent in the national language of that country is only necessary if the patent is not available in English. It should be noted that, according to Article 2 of the London Agreement, in case of dispute, an alleged infringer, a court or a quasi-judicial authority can require a full translation into its official language.

(January 2008)
The European Patent Office increases several fees
On December 14, 2007, the Administrative Council of the European Patent Organization decided to increase several fees in two phases: As of April 1, 2008, several fees will be increased. Click here to download a schedule comparing the applicable fees before and after April 1, 2008. The fees concerned are, e.g. the claims fee; for the 16th and each subsequent claim, EUR 200.00 will be due. In a second phase, some of the fees will be modified or increased as of April 1, 2009. For example, an overall designation fee of EUR 500.00 for one or more designated contracting states will be due from that date, the increase of the claims fee concerns the 51st and each subsequent claim for which EUR 500.00 will be due.

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