Information relating to intellectual property protection (patents, trademarks, designs, copyright, domain names and licences)

IP rights: Intellectual Property rights are exclusive rights, i.e. only the proprietor of IP rights decides who and how advertises a product, who manufactures and distributes it, etc. Typically the owner of IP rights receives a licensing fee for the transfer of his rights. Traditional IP rights include patents, designs, plant varieties, utility models, trademarks, etc.

Know-how: Technical know-how can in principle be protected by means of a patent, which – in some countries, for instance the USA – would also be possible in the case of  business know-how. Since patents or similar protective rights are published and therefore made known to the general public, and since their period of validity is limited, there has always been a need to keep secret certain technical or economic facts, i.e. know-how.

Patents: A patent is a temporary monopoly, granted by the state to the proprietor of an invention, in return for his disclosing his invention to the public through the Patent Office. When a patent is granted, a full description of the invention is made available to the public but the patentee has the sole right to make use of the invention, or to authorise others to make use of it, for as long as he keeps the patent in force. The maximum term of a Patent is 20 years. Several points have to be kept in mind when applying for a patent.

Utility models: which are also referred to as „petty patents“, provide useful alternative to patent protection (swift registration procedure, grace period, etc.). There are, however, some disadvantages of such protection, too (the maximum term of protection is 10 years, it is an unexamined protective right, etc.).

Designs: Since 1st January 2003 and effective as of April 2003, the Community Design Regulation provides for a single Community Design registration, without any separate formalities in each State. In spite of this, national registration has its advantages, too.

Trademarks: The trademarks used by an organisation to identify its goods (services) are one of its most important and valuable assets. It is therefore advisable to register a trademark as early as possible since it guarantees the source and the quality of the organisation's goods (services). A standard trademark registration including protection period of 10 years’, which can be prolonged as many times as you wish, causes costs amounting to € 300.

Copyright: Copyright does not protect "ideas", but only an "expression" thereof; that is, the way in which those ideas are "expressed". When and how does copyright protection arise?

Domain names: A considerate choice of a domain name is inevitable for private, institutional and business purposes. A number of legal aspects has to taken into account. It is also advisable to consider all factors and conditions which can influence your choice, such as a parallel trademark application providing a supporting protective measure.

Technology law: (including computer law, telecommunications law, etc.) is a versatile area of law reflecting sophisticated technical matters and their legal framework.

Agreements: you will find here some sample agreements enabling you to get a general overview, as well as (separate presentation of) some standard clauses.

Licence law: A licence is an agreement by which a right to use intellectual property of a licensor is transferred to a licensee.

Semiconductor topographies: In contrast to a patent, the protection of semiconductor topographies can be obtained more quickly. The protection of semiconductor topographies is similar to design protection. It is not the actual integrated circuit that is protected but merely the “design” of the topography of the chip.

Plant variety rights and seeds: Plant Breeders’ Rights are private protection rights, similar to patent rights, which protect the intellectual property of a plant breeder. Additions to the National List are necessary for commercialisation of agricultural species and vegetables. The Plant Variety Rights Office in Hanover is responsible for both entering new plant varieties, as well as seed and planting stock to the National List.

Media law: Media law is no autonomous area of law in the form of a separate act or merely systematically organised norms

Cartel law: commonly referred to as law on competition or advertising law, it is supposed to protect competition in addition to cartel law. Therefore, “cartel law” is sometimes described as “law on competition”. However, in reality there are only few areas of overlap between these both areas of law: Speaking in simplified terms, cartel law provides for the avoidance of cartels, whereas law on competition attempts at regulating individual publicity negotiations between market participants.

Foodstuffs law - articles of food: substances which are intended to be consumed by human beings in an unprocessed, processed or prepared condition. The delineation between dietary supplements and medicinal products is not clear-cut, and at the same time it decides on the marketability of a product.

Law relating to medical preparations - The Pharmaceutical Act, The Law on the Advertising of Medicaments and the legal regulations for pharmacies are very sensitive areas of law, especially as far as advertising is concerned. They are also of special importance in the light of the reforms of the German health care system.

Telecommunications law: There is no standardised definition of the term „telecommunications”, and therefore the scope of telecommunications law changes according to definition. In any case, it comprises the Telecommunications Act.

Public procurement law: Public procurement law is a part of the law on competition and comprises the Standard Official Contracting Terms for Services, Standard Building Contract Terms, Standard Official Contracting Terms for Independent Professions, European public procurement law, some parts of the Non-Restraint of Trade Act (Cartel Act) and the Fees Ordinance for Architects and Engineers. Public procurement law provides an opportunity for competing enterprises to take action against legally incorrect procurement of public contracts.

Penal law in relation to business offences (white-collar crime): The generic term “penal law in relation to business offences” comprises the application of penal law in economic life. The main emphasis is on the offences listed in the Penal Code but also on the relevant areas of the so-called criminal law statues in addition to those of the Penal Code. We are dealing here with e.g. the Regulatory Offences Act relating to Sanctioning of Enterprises, Penal Law in relation to Competition, Penal Law in relation to Foodstuffs, Penal Law in relation to Medical Preparations, Penal Law in relation to Insolvency and Penal Law in relation to Financial Markets. In the area of penal law in relation to fiscal offences, we are dealing first of all with tax evasion and lesser penalty in case of self-accusation of tax evasion.

News:

Laws:

The new Copyright Act entered into force on 13th December 2003. The law regulating copyright in the information society extends the protection of an author to the exploitation of his work in the Internet, which should lead to the extension of the existing protection of intellectual property. This is true first of all of regulations concerning penalty and administrative fines that have been extended to such an extent that any unauthorised download possibilities could be punished under penalty law.

Issues:

Software patents? - In its first reading the European Parliament accepted with an overwhelming majority the proposed changes to the directive proposal of the European Commission on the patentability of software-related inventions. Although software as such shall remain unpatentable and granting of trivial patents shall be avoided, for instance patents on mere business methods, software-related inventions shall be supported.

Advertising after the revocation of the Discounts Law and the Law on Free Gifts - what is permitted, what has remained forbidden?

Gene patents? Is it possible to patent existing DNA sequences according to European law as it is possible in the USA? If that was the case, “should” the “construction plan” of a cell be monopolised in favour a “inventor”? According to press reports, the European Patent Office is supposed to “accidentally” have affirmed the protectability of a humane genetics “invention” (commentary)..

Court rulings:

JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)  of  13 May 2009  T136/08 - Aurelia: Community trade mark – Community word mark AURELIA – Failure to pay renewal fee – Removal of trade mark from register on expiry of registration – Application for restitutio in integrum.

ECJ (Grand Chamber) of 20 January 2009 C240/07 - Sony vs Falcon:  Article 10(2) of Directive 2006/116 is to be interpreted as meaning that the terms of protection provided for by that directive apply in a situation where the work or subjectmatter at issue was, on 1 July 1995, protected as such in at least one Member State under that Member State’s national legislation on copyright and related rights and where the holder of such rights in respect of that work or subjectmatter, who is a national of a nonMember State, benefited, at that date, from the protection provided for by those national provisions.

According to the Supreme Court ruling of 11th March 2004 ("Rolex") privileged position as to liability under § 11 Sentence 1 of the Teleservices Act does not affect the cease-and-desist claim. The privileged positions as to liability frees the service provider from any responsibility for external information hosted for a user.

The European Court of Justice (EuGH-online pharmacy) held in its ruling of 10th December 2003 that the German prohibition of online pharmacies does not comply with European law as far as prescription-free medicines are concerned.

Deep-linking is permitted according to the ruling of the German Supreme Court  (Paperboy) (case no. I ZR 259/00 of 17th July 2003). Whoever puts publicly accessible articles online has to accept that they may be linked directly (so-called „deep-linking“ or „web-clipping“) while bypassing the entry pages of content providers.

The German Supreme Court (MAXEM.DE, Docket Nr. I ZR 296/00) in contrast to lower courts held in its ruling of 26th June 2003 that the owner of name prevails in the dispute over the internet address MAXEM.DE. The ruling argued mostly on the basis of law relating to names without regarding the peculiarities of the internet.

The dispute concerning the term “BONUS” started in 1988 (BGH, ruling of 28th February 2002 ﾖ case number I ZB 10/99 Federal Patent Tribunal - BONUS II). Now the applicant is trying to register it as a trademark; even though the German Supreme Court had already “obliged” the Federal Patent Tribunal to register the trademark before, it refused to do so again (and again to no avail).

On 22nd November, 2001, the German Supreme Court (case number I ZR 138/99, SHELL.DE) sided with the lower courts which carved out an exception to the „first come first serve“ rule and affirmed the domain name to subsidiary company of the worldwide mineral oil tycoon.

Labour Court in Hanover ruled that terminating an employment agreement without notice with an employee who was surfing in the internet for private purposes (pornography) was justified.

Linking liability - the Regional Appeal Court in Brunswick (ftp-explorer) ruled that § 5 of the Teleservices Act is generally applicable to linking.

On 12th December 2000, the first division of the Supreme Constitutional Court, (case number 1 BvR 1762/95 and 1 BvR 1787/95, Benetton-advertisement) ruled that the press freedom of a magazine publisher can be infringed, when it is banned to publish certain advertisements, for which the advertising party enjoys protection of freedom of thought.

On the 17th May 2001, the German Supreme Court BGH (mitwohnzentrale.de) upheld the ruling of the Regional Appeal Court in Hamburg with the effect that generic terms are now “again” allowed as domain names. The Federal Supreme Court, however, has already sketched an outline of what the criteria of behaviour contrary to fair competition will be.

In its ruling of 4th May 2000, The Regional Court of Appeal (OLG) in Hamburg (Case No. 3 U 197/99) – “Kulturwerbung” held that that an internet domain is principally suitable for representing a company or person that has such a name, even if it contains generic terms.

The ruling of the German Supreme Court - LOGO: it is not possible to exclude a denomination from protection only because it can possibly be ascribed to common language usage.

The German Supreme Courts ruling on digital circuits: delineation between not patentable „software as such“ and patentable „software patents“.