Firm News

Current Rankings and Comments in International Lawyer Guides

Patent Law

1. German Parliament passes “Act to Modernize the Patent Law”
Reported by Dr. Dieter Stauder

2. German Federal Supreme Court on the patentability of computer-related inventions (Decision of January 20, 2009 – Case X ZB 22/07 – Steuerungseinrichtung für Untersuchungsmodalitäten/Control device for examining modalities)
Reported by Dr. Fritz Teufel

3. German Federal Supreme Court on the interpretation of an unclear feature of a patent claim in the infringement analysis (Decision of March 31, 2009 – Case X ZR 95/05 – Road construction device)
Reported by Dr. Tilman Müller-Stoy

4. German Federal Supreme Court on anti-trust defence in litigation involving standard-essential patents (Decision of May 6, 2009 – Case KZR 39/06 – Orange-Book-Standard)
Reported by Christof Karl, LL.M.

5. European Patent Office: Administrative Council adopts amendments to the Implementing Regulations imposing restrictions for filing divisional applications (Decision of March 25, 2009 – Case CA/D 2/09…).
Reported by Dr. Rudolf Teschemacher

6. Dusseldorf Appeal Court on the consequences of publishing a press release in the US regarding ongoing patent infringement proceedings in Germany (Decision of October 10, 2008 – Case 20 U 189/08 –Presseerklärung/Press release)
Reported by Jörg Wahl

Trademark Law

7. European Court of Justice: Equality of treatment – Consistency of Office decisions – Taking into account prior practice – (Decision [Sixth Chamber] of February 12, 2009 – Joint Cases C-39/08 and C-43/08 – Bild digital GmbH & Co. KG and ZVS Zeitungsvertrieb Stuttgart GmbH v DPMA – Volks.Handy and SCHWABENPOST)
Reported by Dr. Alexander von Mühlendahl, LL.M.

8. European Court of Justice: Taking unfair advantage of a mark with a reputation – Relevant public – Use for goods or services (Decision [First Chamber] of March 12, 2009 – Case C-320/07 P – Antartica Srl v OHIM and The Nasdaq Stock Market, Inc. – NASDAQ/nasdaq)
Reported by Dr. Alexander von Mühlendahl, LL.M.

9. European Court of Justice: Sale of luxury goods via unauthorised channels constitutes breach of quality-related conditions in a license agreement prohibiting such sale – No exhaustion of rights (Decision [First Chamber] of April 23, 2009 – Case C-59/08 – Copad SA v Christian Dior couture SA – Christian Dior)
Reported by Dr. Alexander von Mühlendahl, LL.M.

10. European Court of Justice: Likelihood of confusion – Similarity of goods – Distortion of facts (Decision [Fifth Chamber] of May 7, 2009 – Case C-398/07 P – Waterford Wedgwood plc v OHIM and Assembled Investments [Proprietary] Ltd – WATERFORD/WATERFORD STELLENBOSCH)
Reported by Dr. Alexander von Mühlendahl, LL.M.

11. German Federal Supreme Court: Frankfurt Stock exchange loses against Commerzbank when asserting claims related to “DAX” (Decision of April 30, 2009 – Case I ZR 42/07 – DAX)
Reported by Philipe Kutschke

12. Hamburg Appeal Court determines conditions and extent of eBay’s obligation to monitor and prevent future IP rights infringements, deciding that eBay is liable to right owners as a direct infringer (Decision of July 24, 2008 – Case 3 U 216/06 – Trip Trap)
Reported by Pascal Böhner

13. Hamburg Appeal Court on under which circumstances use of the primary colour blue constitutes “use as a trademark” (Decision of November 19, 2008 – Case 5 U 148/07 – NIVEA-BLAU/NIVEA-Blue)
Reported by Verena Wintergerst, LL.M.

Design Law

14. Invalidity Division (OHIM) on whether the priority claim of a registered Community design is valid when the earlier design is represented in colour and the later design in black & white (Decision of March 19, 2009 – Case ICD 5163 – Jijun Yu v MFB Diffusion SARL)
Reported by Dr. Henning Hartwig

Published on
May 2009
Author
Dieter Schneider
Senior Consultant
Tilman Müller-Stoy
Attorney-at-Law, Certified IP lawyer, Commercial Mediator (MuCDR), Partner
Christof Karl
Attorney-at-Law & German and European Patent Attorney, Partner; Attorney-at-Law admitted to practice in Germany and New York
Rudolf Teschemacher
Senior Consultant
Philipe Kutschke
Attorney-at-Law, Certified IP Lawyer, Commercial Mediator (MuCDR), Partner
Pascal Böhner
Attorney-at-Law, Certified IP Lawyer, Partner
Henning Hartwig
Attorney-at-Law, Partner
Jörg Wahl
Verena Wintergerst, LL.M.