Firm News

Jochen Pagenberg voted for the second time Germany’s leading lawyer for patent and trademark legal expertise, in “The International Who’s Who of Business Lawyers 2008”

Patent Law

1. German Federal Supreme Court on validly claiming the priority for claim with a limiting feature which was not disclosed in the priority documents (Decision of January 30, 2008, Case X ZR 107/04 – “Betonstraßenfertiger”/“Machine for producing concrete roads”)
Reported by Alexander Wunsch

2. European Patent Office: Amendments in opposition proceedings and objections to lack of clarity (Technical Board of Appeal 3.2.03, decision of February 21, 2008, Case T 1459/05, not foreseen for publication)
Reported by Dr. Rudolf Teschemacher

3. Düsseldorf Appeal Court: In a pharmaceutical case, the Court granted a preliminary injunction against the offer and sale of drugs containing the active ingredient “Olanzapine” (Decision of May 29, 2008, Case 2 W 47/07 – “Olanzapine”)
Reported by Clemens Rübel

Trademark Law

4. European Court of Justice on comparative advertising and trademark infringement (Decision of June 12, 2008, Case C-533/06 – O2 Holdings Ltd v Hutchison 3G UK Ltd – “O2”)
Reported by Dr. Alexander von Mühlendahl

5. European Court of Justice on likelihood of confusion, complex trademarks, inherent and increased distinctiveness (Decision of July 17, 2008, Case C-488/06 P – L & D SA v OHIM & Julius Sämann Ltd – “Aire Limpio”)
Reported by Dr. Alexander von Mühlendahl

6. EFTA Court abandons rule of international exhaustion in trademark cases (Decision of July 8, 2008, Joint Cases E-9/07 and E-10/07 – L’Oréal Norge AS & L’Oréal SA v Per Aarskog AS (Case E-9/07), Nille AS (Case E-9/07) and Smart Club AS (Case E-10/07) – “REDKEN”)
Reported by Dr. Alexander von Mühlendahl

7. German Federal Supreme Court holds that genuine use of a service mark requires that the consumer will recognise that the mark does not only identify the company, but also specific services (Decision of October 18, 2007, Case I ZR 162/04 – “AKZENTA”)
Reported by Philipe Kutschke

8. German Federal Supreme Court on “smell-alikes” (Decision of December 6, 2007, Case I ZR 184/05 – “Duftvergleich mit Markenparfum”/“comparative lists of perfumes” and decision of June 6, 2008, Case I ZR 169/05 – “Imitationswerbung”/“Imitative Advertising”)
Reported by Dr. Jochen Pagenberg

9. German Federal Patent Court: The designation “Bio Bär” (“Bio Bear”) for gummy bears serves to designate the kind of goods and is devoid of any distinctive character (Decision of April 2, 2008, Case 28 W [pat] 187/07 – “Bio Bär”/“Bio Bear”)
Reported by Verena Wintergerst

10. German Federal Supreme Court applies agent’s marks rules on business relationship, which goes beyond mere exchange agreements, and clarifies other limits for applying agent’s marks rules (Decision of April 10, 2008, Case I ZR 164/05 – “audison”)
Reported by Peter J. A. Munzinger

11. German Federal Supreme Court: Injunctive relief may be claimed against online-auctioneers if vendors offer forgeries on the internet platform (Decision of April 30, 2008, Case I ZR 73/05 – “Internetversteigerung III”/“online-auctioneering III”)
Reported by Philipe Kutschke

Design Law

12. Alicante Commercial Court on a joint action against Community trademark and Community design infringements (Decision of December 4, 2007, Case 152/2007 – “L’ORÉAL SA v YESENSY ESPAÑA SL and YE EG”)
Reported by Aitor Pomares Caballero

Published on
July 2008
Author
Alexander Wunsch
German and European Patent Attorney, Partner
Rudolf Teschemacher
Senior Consultant
Philipe Kutschke
Attorney-at-Law, Certified IP Lawyer, Commercial Mediator (MuCDR), Partner
Jochen Pagenberg
Attorney-at-Law, Of Counsel
Clemens Rübel
Verena Wintergerst
Aitor Pomares Caballero