Patent Law Page

1. German Federal Supreme Court: On the interpretation of the scope of protection of a patent claim and the role of the court expert (Decision of February 12, 2008, Case X ZR 153/05 – “Mehrgangnabe”/ “Multi-gear hub”)
Reported by Dr. Tilman Müller-Stoy

2. European Patent Office (Technical Board of Appeal 3.3.04): Protection of further medical uses – Swiss type claims under the EPC 2000 – technical effect underlying a known therapeutic use does not establish novelty (Decision of January 16, 2008 – Case T 406/06 – “Stimulation of beta cell proliferation”)
Reported by Dr. Rudolf Teschemacher

3. European Patent Office (Enlarged Board of Appeal): Petition for review of a decision of a Board of Appeal pursuant to Article 112a EPC 2000 – First case settled by the Enlarged Board of Appeal (Decision of July 15, 2008 – Case R 1/08 – “Injectable solutions containing paracetamol”)
Reported by Dr. Rudolf Teschemacher

Trademark Law

4. European Court of Justice: Likelihood of confusion when two Community trade marks are involved – Likelihood of confusion in a part of the Community sufficient – NOMAFOAM precludes registration of ARMAFOAM – (Judgment of September 18, 2008, Case C-514/06 P– Armacell Enterprises GmbH v. OHIM – nmc SA)
Reported by Dr. Alexander von Mühlendahl

5. OHIM permits substitution of an opponent’s Community trademark by national mark resulting from conversion in opposition proceedings (Decision of the Grand Board of Appeal of July 15, 2008, Case R 1313/2006-G – Cardiva S.L. v. Cardima, Inc., CARDIMA/CARDIVA)
Reported by Dr. Alexander von Mühlendahl

6. German Federal Supreme Court: On the scope of information to be rendered by an infringer of IP rights (Decision of February 14, 2008 – Case I ZR 55/05 – “Hollister”)
Reported by Dr. Stefan Abel

7. German Federal Supreme Court rules again on the scope of protection of 3-D trademarks and related protection under national “passing off” law (Decision of April 30, 2008 – Case I ZR 123/05 – “Rillenkoffer”/“suitcase”)
Reported by Dr. Henning Hartwig

8. German Federal Supreme Court: Competitors using the designation “Post” for postal services are not infringing the trademark “POST” of Deutsche Post AG (Decision of June 5, 2008 – Case I ZR 108/05 – “City Post” and Case I ZR 169/05 – “POST”)
Reported by Philipe Kutschke

Copyright Law

9. German Federal Supreme Court: On licensing stage performances of songs taken from musicals (Decision of July 3, 2008 – Case I ZR 204/05 – “Musical-Starlights”)
Reported by Dr. Stefan Abel

Enforcement Directive

10. September 1, 2009: Enforcement Directive implemented in Germany
Reported by Dr. Tilman Müller-Stoy

Published on
October 2008
Author
Tilman Müller-Stoy
Attorney-at-Law, Certified IP lawyer, Commercial Mediator (MuCDR), Partner
Rudolf Teschemacher
Senior Consultant
Henning Hartwig
Attorney-at-Law, Partner
Philipe Kutschke
Attorney-at-Law, Certified IP Lawyer, Commercial Mediator (MuCDR), Partner
Dr. Stefan Abel