Newsletter June 2014

News

Munich office expands the IP team . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Hamburg office moves to new location . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Intellectual Property

“Collagenase I and II” (GRUR 2014, 461 + 462) and “Colour delivery system” – Pharmaceutical applications and expertise in the case of inventive steps. . . . . . . . . . . . . . . .

Discussion regarding the remuneration for assistance by patent attorneys before the Unified Patent Court. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

The new block exemption regulation on technology transfer agreements . . . . . . . . . . . . . . . .

Handbook of “Pharmaceutical Law” published. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Very often less is more – when for example waiving protection in the case of equivalence. . .

OTTO – New findings on the similarity between goods and services . . . . . . . . . . . . . . . . . . .

“Urgency in the case of infringements in foreign countries” . . . . . . . . . . . . . . . . . . . . . . . . . . .

Preu Bohlig & Partner in the Rankings of the ‘IAM Strategy 300 2014’ and ‘IAM Patent 1000 2014’ . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Forgotten by the Internet - The ECJ in the Google and Google Spain case. . . . . . . . . . . . . . .

Extensive changes in distance selling regulations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Preu Bohlig & Partner listed by Best Lawyers 2014 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Business Breakfast with law firm Alérion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Events

Current lectures and seminars . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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Alexander Harguth will be joining us from the Munich office of law firm McDermott Will & Emery, where over the last few years he has made a name for himself as a member of the German practi-ce group for industrial property rights, especially in consultancy and case management in patent law. He began his career as a lawyer with the Bardehle Pagen-berg practice where he - later as a partner - gained extensive experience in handling and coor-dinating complex, and especially international, patent infringement proceedings. A further focus of his activity has been employee inventions and design patent law, as well as the protection of com-mercial confidentiality.

Alexander Harguth has also been admitted to the French bar in Paris, and has published works on various aspects of industrial property rights. He is the author of the work “Patents in Germany and Europe”, published in 2011 by Wolters Kluwer.

At Preu Bohlig & Partner, Ale-xander Harguth will principally contribute his experience and client contacts in patent law. “I am looking forward to joining such a well-known and profes-sional company as Preu Bohlig & Partner, which is both highly specialised and provides broad coverage in the IP area, and so offers me superb opportunities to further expand my IP client list,” said Alexander Harguth about his new role.

The Munich offices of Preu Bohlig & Partner has traditi-onally had a strong focus on industrial property rights and associated case management. The office specialises especially in nati-onal and internati-onal patent infrin-gement disputes in all technical areas. Partner Dr Ludwig

von Zumbusch: “The addition of Dr Harguth to our team under-lines our strategy to continue expanding internationally as well. Dr Harguth‘s strong client relati-onships especially in the US, as well as France, are a real gain for us, not least against the backdrop of the upcoming unified patent court.”

Contact (from 1th of July 2014):Dr. Alexander HarguthPreu Bohlig & PartnerLeopoldstraße 11a80802 Munich Tel.: +49 (0)89 383870-0Fax.: +49 (0)89 383870-22eMail: axh@preubohlig.de

Munich office expands the IP team

Lawyer Dr Alexander Harguth will join the Munich office of Preu Bohlig & Partner as a partner on 01 July 2014.

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The office building was comple-ted in 2013 to a design by the well-known architectural practi-ce Gerkan, Marg and Partner (gmp) and mee ts the mos t s t r ingent energy s tandards . The new office area on the 6th floor combines a pleasant wor-king environment with the latest equipment.

“We had significantly outgrown the capaci ty in our previous offices. So we were delighted to find such nice premises so c lose by, which wi l l a lso be able to handle the growth we expect,” Dr Detlef von Schultz, partner in the Hamburg office, explains the relocation.

Since 23 June 2014, the new address to contact the Hamburg office is now:

Preu Bohlig & PartnerTesdorpfstraße 820148 Hamburg.

Phone and fax numbers and email addresses all remain un-changed:

Tel.: +49 (0)40 - 41 42 99 - 0Fax.: +49 (0)40 - 41 42 99 - 22eMail: hamburg@preubohlig.de

The main legal focus of the Hamburg office of Preu Bohlig & Partner is intellectual property protection and associated case management. The partners Dr Detlef von Schultz and Sebas-tian Eble, LL.M. are specialised especially in national and inter-national trade mark procedures. Partner Dr Oliver Scherenberg is an expert not only in intellectual property protection, but is recog-nised as an expert in the area of press and media rights.

The Hamburg office looks for-ward to welcoming you at our new offices.

Hamburg office moves to new location

The Hamburg office of Preu Bohlig & Partner moved on 23 June 2014 to new and more spacious offices. The new premises are in Tesdorpfstrasse, close by the pre-vious location, near the Dammtor station.

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The decisions “Collagena-se I and II”

In the two decisions of 25.02.2014, the Federal Court of Justice spe-cified the scope of application of Section 3, para. 4 of the Patent Act [PatG] and Art. 54, para. 5 EPC for further medical applications.

1. The historical background to both decisions is provided by Art. 54, para. 5 EPC 1973 and Section 3, para. 3 Patent Act, which envisage a limited-purpose compound claim for the first-time pharmaceutical use of a familiar substance (keyword: protection of the first indication). On the other hand, another point to be taken into consideration with regard to the protection of the second and any subsequent medical ap-plication under Art. 52 para. 4 EPC 1973 and/or Section 5 para. 2 Patent Act was the fact that application claims are method claims and that thera-peutic methods according to the aforementioned provisions

were not regarded as suscep-tible to industrial application (cf. Gruber/Kroher, GRUR Int. 1984, 201).

2. German case law traditionally granted a use claim (“Use of the chemical substance X to treat illness Y”) for the protection of the second indication (FCJ GRUR 1977, 652 – Benzene sulfonyl urea; GRUR 1982, 548 – Sitosteryl glucoside), the subject matter of which also ex-tended to what is referred to as “obvious preparation”. This also occurred in an industrial context as the Federal Court of Justice held again in its decision “Hyd-ropyridine” (GRUR 1983, 729).

The case law established by the Enlarged Board of Appeal of the European Patent Office went down another path with what is known as the Swiss-type claim (“Use of the substance X for the manufacture of a medicament to treat disease Y”) in order to guarantee industrial applicabi-lity (EPO G 01/83 – ABl. 1985,

60 – Second medical indication/BAYER).

3. With the EPC 2000, a limited-purpose protection for a sub-stance for further “specific ap-plications” was introduced in Art. 54 para. 5 EPC and, in line with this, in Section 3 para. 4 Patent Act. At the same time, a provision in the form of a pa-tenting exclusion was included in Art. 53 c, sentence 1 EPC 2000 and again, correspondin-gly, in Section 2 a, para. 1 no. 2 Patent Act stipulating that pa-tents for therapeutic treatment methods should not be granted; hence, following the change in the law, the question no longer hinged on industrial applicabili-ty (cf. FCJ GRUR 2010, 1081 – Image support during catheter navigation).

4. The term “pharmaceutical appli-cation” was increasingly separa-ted in the case law of the EPO from the treatment of a specific disease (indication). Under EPO case law, the term “spe-

“Collagenase I and II” (GRUR 2014, 461 + 462) and “Colour delivery system” – Pharmaceutical applications and expertise in the case of inventive steps

It may come as a surprise that the decisions “Collagenase I and II” delivered in relation to the scope of application for further pharmaceutical applications are presented together with the decision “Colour delivery system” (judgement of 11.3.2014, case no.: X ZR 139/10). As regards the question of the extent to which expertise should be drawn on when examining the obviousness of inventions, the decisions reveal a new, overarching point of view. This is the reason for dealing with them jointly.

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cific applications” henceforth not only includes a second or a further indication but also treat-ment of the same disease with another dosage or the use of the same medicament for a new group of patients undergoing treatment, a new administration method or another technical ef-fect (G 02/08 – ABl. 2010, 456 – Dosage instructions/ABBOTT RESPIRATORY).

5. In an ear l ier decis ion (FCJ GRUR 2007, 404 – Carvedilol II), the Federal Court of Justi-ce had still argued that patent protection could not be contem-plated for the dosage recom-mendations per se without the manufacture of the substance. However, the Federal Court of Justice did admit a patent claim which, in contrast, envisaged the preparation of the medica-ment for use with the dosage in question.

6. A change in this case law was already apparent in the two decisions “Memantin” (GRUR 2011, 999) and “Fatty acids” (GRUR 2014, 54): According to these decisions, the subsequent discovery of the biological con-nections underlying the action of a medicinal product does not disclose any new teachings on the technical action provided the substance administered, the indi-cation, the dosage and any other manner in which the substance is used coincide with a use of the substance to treat a disease that has already been described.

7. The decisions delivered by the Federal Court of Justice in the cases “Collagenase I and II” concerned the use of the well-known enzyme collagenase to treat Dupuytren’s disease (X ZB 5/13) and/or Peyronie’s disease (X ZB 6/13), where the use of collagenase to treat these two indications was also known. In both cases, the patent (only) differed from prior art because of the instruction stating that the body parts affected should be immobil ised for several hours immediately after the in-jection of the substance. After the Federal Court Justice held in another context that this was a measure that formed part of the doctor ’s treatment reper-toire, the question that had to be addressed was the extent to which measures prescribed by doctors can be referred to, despite the patenting exclusi-on for therapeutic methods in combination with further cha-racteristics, when it comes to examining patentability. What therefore had to be determined was the scope of the expressi-on “specific application”.

8. After taking into consideration EPO case law (G 2/08, ABl. 2010, 456 margin no. 5.10.7 et seq. – Dosage instructions/Abbott Respiratory), the Fede-ral Court of Justice argues that patenting is possible on one occasion if the only characte-ristics not found in prior art are the dosage instructions (margin no. 19). The Federal Court of

Justice now extends these prin-ciples to those cases (margin no. 21) in which the instructions contained in the patent claim do not concern the dosage but rather the “other modalities of the application in respect of which the claim is made”. This is because, it argues, the spe-cific application of a substance for treatment is not only de-termined by the disease to be treated and the dosage but, in addition and depending on the circumstances, the method of administration, the substance’s consistency or other parame-ters may also be of importance (margin no. 27). In any case, the precondition for patentabi-lity is that the treatment-related instructions are objectively ai-med at influencing the action of the substance, i.e. of the medi-cament (margin no. 31). In view of the patenting prohibition for therapeutic methods (Art. 53 (c) EPC and Section 2a (1) no. 2 Patent Act), treatment-related instructions that are suitable for treating the disease in question, in addition to and regardless of the actions of the substance, could, in particular, not make any contribution to patenta-bility. The interpretation that can be formulated is that there must be a synergistic effect between the treatment-related instructions and the improved efficacy of the substance. Such an effect was admitted in both cases with regard to the im-mobilisation of the body part affected.

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The decision “Colour deli-very system” – Knowledge of a person skilled in the art and obviousness

1. Another fundamental aspect of the decision “Collagenase I” was the question of the condi-tions under which the actions of a person skilled in the art should be taken into account when examining the obvious-ness of the claim. The Federal Court of Justice (margin no. 28) argues as follows: When examining the inventive steps, reference should in fact also be made to any courses of action – i.e. the immobilisation of the body part concerned in this case – which were obvious to a person skilled in the art because they were part of the doctor ’s standard repertoire on the priority date. However, written proof of such measures is not required in any case if it is clear that the person skilled in the art took into account the measure in question on the pri-ority date as a general measure for a large number of applica-tion cases and provided there were no special circumstances suggesting that its application in the particular set of circum-stances to be evaluated was not possible or was inapprop-riate.

Accordingly, the headnote sta-tes that any examination as to whether a specific application of a medicament is based on an inventive step must also

take into account any courses of action that were obvious to a person skilled in the art be-cause they were part of the doctor’s standard repertoire on the priority date.

2. This is where the aforementioned analogy with the decision “Co-lour delivery system” (judgement of 11.3.2014 – X ZR 139/10) ari-ses. There, the Federal Court of Justice states as follows in the headnote:

If an engineering solution belongs to a general type of measure to which reference should be made in a large number of application cases according to the general expertise of the engineer ap-proached, then a reason for referring to it may reside in the mere fact that the use of its functionality is objectively suitable in the context to be evaluated and no special circumstances can be ascer-tained that might suggest to a expert that its application is not possible, associated with difficulties or otherwise inappropriate.

3. Thus, the Federal Court of Justi-ce – in a departure from the decision “Airbag-trigger con-trol” (GRUR 2009, 743) – not only seems to be falling in line with the examination practice of the EPO but also with that of the British Intellectual Property Office: There, the application of general expertise is usually

obvious (cf. Manual of Patent Practice – section 3, para 3.29 + 3.45 and the “Windsurfing/Pozzoli approach”; EPO RiLi G-VII, 6. iii).

Dr. Stephan GruberAttorney at lawMunichTel.: +49 (0)89 383870-0eMail: sgr@preubohlig.deProfile: website link

Konstantin Schallmoser, LL.M.Attorney at lawMunichTel.: +49 (0)89 383870-0eMail: ksc@preubohlig.deProfile: website link

Konstantin Schallmoser, LL.M. (Paris II)

geboren 1976

Rechtsanwalt seit 2006

Fremdsprachen: Französisch, Englisch

Büro München Leopoldstr. 11a 80802 München

Tel.: +49 - (0)89-383870 - 0 Fax: +49 - (0)89-383870 - 22 E-Mail: ksc@preubohlig.de

Konstantin Schallmoser verstärkt seit 2007 das Münchener Team von Preu Bohlig & Partner im Bereich Gewerblicher Rechtsschutz. Er studierte in München Rechtswissenschaften und absolvierte seine praktische Studienzeit bei dem Sportrechtevermarkter UFA Sports in Hamburg (heute: sportfive). Die anschließende Referendarzeit leistete er beim Oberlandesgericht München ab, u.a. mit Stationen in Paris und bei der Deutsch-Marokkanischen Handelskammer in Casablanca. Nach dem Zweiten Staatsexamen 2005 war Konstantin Schallmoser in der Rechtsabteilung der Premiere AG tätig, bevor er 2006/2007 am LL.M-Programm "Droit français, européen et international des affaires" der renommierten Universität Paris II – Panthéon Assas teilnahm. Schwerpunkte des französischen Aufbaustudiums bildeten das Europäische Kartellrecht, die Internationale Schiedsgerichtsbarkeit sowie das Internationale Privatrecht.

Konstantin Schallmoser ist in allen Bereichen des Gewerblichen Rechtsschutzes und insbesondere im Patentrecht tätig. Darüber hinaus vertritt er französischsprachige Mandanten vor deutschen Gerichten sowie Unternehmen, die mit der französischen Gerichtsbarkeit in Berührung kommen. Auch berät er in Fragestellungen des Internationalen Privatrechts und des Internationalen Zivilprozessrechts.

Tätigkeitsbereiche Markenrecht,

Designrecht,

Urheberrecht

Wettbewerbs- und Kartellrecht,

Patente und Gebrauchsmuster,

Arbeitnehmererfinderrecht,

Internationales Privatrecht,

Internationales Zivilprozessrecht

Mitgliedschaften GRUR; VPP; AIPPI; DFJ (Deutsch-Französische Juristenvereinigung)

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Time and time again, Germany has made its approval of the Unified Pa-tent Court conditional on ensuring that the quality of the very successful German system of patent infringe-ment proceedings is guaranteed by the new Unified Patent Court. A cornerstone of this system is, inter alia, representation by lawyers and assisting patent attorneys in patent infringement proceedings. The task of these lawyers, above all, is to prepare the technical subject matter in a way that enables it to be understood by legally qua-lified judges. In the case of the Unified Patent Court, in particular, the local and regional divi-sions also consist of legally qualified judges to whom another technically qualified judge is only assigned if requested or in the event of a nullity decision. The panels at the central divisions consists of two legally qualified judges and one technically qualified judge, Art. 8 (6) Agreement on a Unified Patent Court [EPGÜ] and are always chaired by a legally qualified judge, Art. 8 (8) EPGÜ. Accordingly, nothing will change as regards the need to explain complex technical subject matter to persons with legal training but without any

technical training.

Assistance by patent attorneys is laid down in Art. 48 para. 4 of the Ag-reement on a Unified Patent Court. This provision allows assistance by patent attorneys – in the same way

as in infringement proceedings be-fore the German courts.

Our partnership, along with many other companies, law offices and associations, has submitted com-ments on the 15th version of the Rules of Procedure to the Drafting Committee. Amongst other things, we suggested in our statement that as far as the rules on the reimbur-sement of costs are concerned, in particular rule 152.2, it should be clarified that the costs of a patent attorney providing assistance as set out in Art. 48 para. 4 EPGÜ should

normally be regarded as reimbursa-ble. This is in line with the provision in Section 143 para. 3 of the German Patent Act.

However, the Drafting Committee for the Rules of Procedure of the Uni-

fied Patent Court rejected this clarification. And not only that: it even expressly stipulated that there may be cases where assistance is provided in respect of which the patent attorney will not be entitled to claim reimbur-sement of his/her costs. The wording of the observations by Prof. Tilmann, member of the Drafting Committee, on

our recommendation is as follows:

„No change recommended

The use of an assisting patent at-torney may not be reasonable and proportionate under rule 152.1 and article 69 (1).”

In line with Prof. Tilmann’s recom-mendation, the committee rejected any amendment.

Should this view prevail in the subse-quent legislative process, then there will indeed be cases in which the

Discussion regarding the remuneration for assistance by patent attorneys before the Unified Patent Court

The Drafting Committee, in its observations on the 15th version of the Rules of Proce-dure of the Unified Patent Court, in particular Prof. Tilmann, rejected a clarification of the Rules of Procedure, to the effect that the costs of an assisting patent attorney are, generally speaking, reimbursable. This jeopardises the tried-and-tested principle of re-presentation in infringement actions by patent attorneys and lawyers.

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assisting patent attorney will indeed not be entitled to claim anything for his/her services during infringement proceedings. Moreover, any assis-tance will give rise to a discussion as to whether, in the specific case, the assistance was proportionate and reasonable. This cost provision jeopardises the principle of double representation by lawyers and patent attorneys, which is justified precisely in proceedings before the Unified Patent Court. Not only – as has been the case up to now – that legally qua-lified judges should primarily decide in infringement disputes. Above all, the new procedural rules, in respect of whose precise application nobody has any knowledge since a myriad of legal traditions must be combined, make the principle of double repre-

sentation more important than ever. Here, a principle of infringement pro-ceedings under the existing German provisions is available, which should be upheld in line with the legislative intent of Art. 48 (4) EPGÜ.

Dr. Christof AugensteinAttorney at lawDüsseldorfTel.: +49 (0)211 513536-0eMail: cau@preubohlig.deProfile: website link

1, 2 Available on the website of the European Commission under http://ec.europa.eu/competition/antitrust/legislation/transfer.html

The new block exemption regulation on technology transfer agreements

tual property and qual i f ied know-how has an innovative and pro-competi t ive effect: Unnecessary duplication and misallocation of market resour-ces will be avoided. It creates a stimulus to investigate al-

time to adjust the existing contrac-tual regulations to the standards of the new regulation.

1. It is to be recorded from the economic point of departure that the licensing of intellec-

The updated guidelines of the Euro-pean Commission2 comment on the provisions of the new regulation, in particular in its demarcation to its predecessor.

The companies have one year’s

The new block exemption regulation on technology transfer agreements 316/2014/EU1 has been in force since 1 May 2014. The new regulation is linked in its regula-tory framework and mode of operation to the previous regulation, the technology transfer block exemption regulation 772/2004/EC. The possibility of restriction on passive sales in the exclusive territories of other licensees as well as the termina-tion provisions in case of a challenge on simply licensed intellectual property rights have been omitted.

Up-to-date informa-tion on the unitary patent and the Uni-fied Patent Court:

Please visit our website for regular updates on current developments atw w w. p r e u b o h l i g . d e /english/eu_patent.php

You are welcome to contact us via e-mail at eu-patent@preubohlig.de

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ternative technologies and to develop improvements. With it, the licensing strengthens the dissemination of technology in the various markets. The Com-mission shared this starting point also in its new guidelines on the block exemption regu-lation on technology transfer agreements (Gazette C89/3 dated 28.03.2014). Along with this basically positive attitude towards licensing, it has to be taken into consideration that the conditions of the licence has ef-fect in individual cases and can pursue purposes, which could confl ict with this objective. Thus, pricing agreements as well as allocation of customers and territory in particular are in conflict with the antitrust law. Even less apparent restrictions on competition, which reduce the innovation stimulus between companies, raise questions of its antitrust efficacy.

2. The systematics of the TTVO has remained unchanged: If competition-restrictive licence agreements are covered under the cartel ban, they are not ne-cessarily banned. If the prere-quisites of an exemption exist, then the agreement is effective and enforceable in spite of its competition-restrictive effect. The companies have to judge for themselves whether an ex-emption exists (self-assessment and system of legal exception).

The block exemption regulation for technology transfer agree-

ments (referred to in brief as TTVO) should offer companies legal security in the question whether the prerequisites for exemption are fulfilled. If the regulation is applied in the con-text of the licence agreement to be assessed, then it exempts the agreement from the cartel ban.

If the licence agreement should contain one or even several so-called “black causes”, this ex-emption action is negated and it must be verified for the indi-vidual case whether the agree-ment as a whole complies with the antitrust law. If the licence agreement should contain the so-called “grey clauses”, only these clauses are exempt from the regulation, whereas the rest of the agreement conti-nues to fall under the TTVO. Consequently, everything that is not “banned” is exempted in the regulation. In other words: Everything that falls under the “safe harbour” of the TTVO is exempted (so-called “safe har-bour principle”).

3. The requirements for the appli-cation of the new TTVO are basically unchanged from the TTVO 772/2004. The definition of the technology transfer ag-reement in Art. 1 para. 1 letter c) TTVO is broader than before, presumes however as before, that only two companies parti-cipate in the technology trans-fer agreement. The common market share in the relevant

markets may not exceed 20 % between competitors, and in the case of non-competitors the respective market share cannot exceed 30 %.

4. Art. 4 of the TTVO contains the catalogue of black clauses, where the exemption as a who-le does not apply. Paragraph 1 refers to the clauses, where two competing companies cannot benefit by the regulation. Pa-ragraph 2 refers to agreements between non-competing com-panies. The TTVO has become stricter on the whole along with a linguistic and editorial revisi-on of the black clauses:

The possibility of safeguarding a pressing licensee new to the market as opposed to passive sales in their exclusive territo-ries or their exclusive group of customers by other licensees does not apply.

The reverse exception to the ban on the sharing of the custo-mers and the market to restrict passive sale in the exclusive territories of various licensees among each other in the first two years after entry into the market of a new licensee was deleted completely.

5. The most drastic modification in the TTVO is the amended Art. 5 on the grey clauses, which contains the clauses on the obligation for back licen-sing. The differentiation on the basis of the “separable impro-

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8 . The new gu ide l i nes o f f e r additional assistance in inter-pretation for the technology pools (Note 244 et seqq.) and a safe harbour regulation for the establishment and administra-tion of the technology pool as well as the awarding of the li-cence under the prerequisites in Note 261. Settlements (or in the terminology of the guideli-nes: Agreements to resolve the dispute) are addressed in Note 234 et seqq. of the guidelines. In particular, the guidelines give a positive assessment for the non-aggression clauses contai-ned in settlements (Note 242).

Dr. Stephan GruberAttorney at lawMunichTel.: +49 (0)89 383870-0eMail: sgr@preubohlig.deProfile: website link

Hannes JacobsenAttorney at lawMunichTel.: +49 (0)89 383870-0eMail: hja@preubohlig.deProfile: website link

vements” within the framework of the exclusive back licensing obligations of the licensee does not apply. All exclusive back li-censing obligations of the licen-see for his own improvements and new applications are now no longer exempted.

6 . The second mod i f i ca t i on refers to the non-aggression clauses in the licences. These are pursuant to Art. 5 para. 1b) TTVO still not exempted. In deviation, the termination pro-visions are no longer exempted on the whole in the case of the challenge to the licensed pro-perty rights:

The regulation alone exempts the provision to withdraw from the technology transfer agree-ment in the case of a challenge to one or several licensed in-tellectual property rights in the context of exclusive licences. This exemption does not apply to simple licence agreements. It is not to be expected, accor-ding to the detailed assessment of such clauses in the regula-tion, - namely the exception to the exemption - that a termina-tion provision in simple licence agreements would fulf i l the prerequisites of an individual exemption. Even the guidelines express this (Note 136 to 139 as well on (pure) know-how-licences Note 140). The back-ground to this amendment was the knowledge of the Commis-sion that corresponding termi-nation provisions often have the

same effect as the agreement of a non-aggression obligation. The non-aggression obligation is not compatible with the public interest to liberate the market from unauthorized intellectual property rights. The termination clause which has the same ef-fect is likewise not.

Time will show in practice how to deal with this changed eva-luation and regulation. It will be interesting to observe how courts assess those cases in which the licensee directly af-ter obtaining the simple licence begins to challenge the intel-lectual property right and pays the licence fee only under the condition that the licensed right proves to be constant.

7. Art. 10 of the TTVO sets the company a transition period of one year to adjust existing contracts to the provisions of the new regulation. This refers in particular to long-term sim-ple licence agreements, which provide for a termination clause in case of a challenge to the licence right, with the excep-tion of protection of licensees amongst themselves for pas-sive sales in exclusive territo-ries in the first two years after its launch in the market. Thus, here, it is also to be seen how the market – with or without adjustment of the existing con-tracts - will react to the nullity of the termination provisions which come into force on 1 May 2015.

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Handbook of “Pharmaceutical Law” published

This newly published handbook offers a systematic introduction to Pharmaceutical Law (published by C.H. Beck in the NJW Praxis series). The content is not limited solely to the law relating to medicines, medical products and accessories, it also looks at the many links to the statutory sickness insurance funds. Focal points of the book are also the questions of tendering medical studies and approval and the bringing to market of medicines. Questions of European law, for example relating to the approval of medicines are also addressed. The work also covers the 16th update to the AMG from 2012.

Content• Principles of Pharmaceutical Law• Medicines• Medical Products• The Approval of Medicines and Medical Products• Medicines and Medical Products and sickness insurance• Competitive Selective Contracts for Medicines and Medical

Products

Benefits at a glance• systematic introduction to the legal area• includes the interconnections to the law relating to sickness

insurance funds• includes a large section on tendering and approvals

The authorsLawyer and expert in pharmaceutical law Peter von Czettritz wrote the handbook jointly with lawyers Dr Alexander Meier, Prof. Marcel Kaufmann and Dr Marc Gabriel. Peter von Czettritz is a partner in the law firm Preu Bohlig & Partner in Munich and co-publisher of the journal Pharma Recht. Together with his team, lawyer and qualified biologist Tanja Strelow and lawyer Dr Stephanie Thewes, he is the author of the 3rd part “Medical Products” and of the 4th part “Approval of Medicines and Medi-cal Products”.

Target readershipLawyers and legal experts working in the field of pharmaceutical law in pharmaceutical companies and sickness insurance funds.

Link to the Beck ShopFor additional current publications, please visit our website at www.preubohlig.de

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1. As is known, in its decision GRUR 2011, 701 – Occlusion device, the Federal Court of Justice, alongside a literal patent infringement, also rejec-ted an equivalent infringement. An embodiment shown in the description was not admitted in the patent claim – unambiguous, per se, from the Federal Court of Justice’s point of view. Accordingly, the Federal Court of Justice denied the existence of equivalence.

2. For equivalence to hold true, the expert considerations on the equiva-lent effect and on the discoverability must be so closely based on the meaning of the patented teaching that a person skilled in the art would consider the different embodiment with its altered means to be an equi-valent solution.

3. It argued that this is usually not the case if the description discloses several possibilities of attaining a specific technical effect but the holder of the patent has only incorporated one of these possibilities in the pa-tent claim. Since if this is the case, the patent claim makes a choice [sic] between various possibilities, which must be consistent with the

expert considerations on possible modifications.

4. This gives rise to the follow-up question as to when a description discloses an alternative, on the basis of which a person skilled in the art is entitled to assume the existence of a choice. The answer to this question is in a state of flux. According to the OLG Düsseldorf, it must be illustrated by referring to three decisions.

5. In a decision that was also of im-portance for filing practice from the point of view of patent attorneys, the OLG Düsseldorf also referred to the recognized state of the art (I-2 U 22/10 - Umbrella). According to one of the characteristics of the rather extensive claim 1, a spring element on an arrest is designed to be displaced longitudinally. In the contested embodiment, the corre-sponding element had a rotational movement. When considering the state of the art, the disputed patent dealt with an embodiment in a pu-blication that was cited. The OLG concluded that the disputed patent was therefore referring to claim 1 of the document cited. This claim envisaged – in the same way as

the disputed patent – a longitudinal displacement.

6. After examining the documentcited more closely, the OLG found that its secondary claim, claim 2, envisaged a rotational movement which, however, was not even mentioned in the disputed patent in the short description of the state of the art. The fact that the disputed patent did not include the rotatio-nal solution meant that there was a choice between the alternative solutions disclosed alongside one another in the document cited. This means that the decision to waive the other solution excludes equivalence. Here, the particular importance of the case resides in the fact that the OLG Düsseldorf did not limit itself to reading the short description of the state of the art referred to but went beyond this and read the entire document as such and drew on claim 2 contained therein.

7. The decision I-2 U 23/13 – Drospi-renone concerned a chemical ma-nufacturing method in which water is split off through the addition of p-Toluenesulfonic acid. The defendant, instead, used an alkaline mixture of

Very often less is more – when for example waiving protection in the case of equivalence

Equivalence under patent law has been decisively modified by case law over the last few ye-ars. This has consequences for filing practice and when it comes to processing infringement cases. The first step was taken by the Federal Court of Justice with the decision “Occlusion device”. According to this decision, equivalence protection must be denied if the applicant wa-ives protection of the embodiment. Based on this decision of general principle, the following article sets out to illustrate the evolution of this notion of waiving protection in the case law established by the OLG [Higher Regional Court] Düsseldorf by referring to three decisions.

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pyridine and water. The OLG also denied the existence of equivalence in this case. It justified its decision with the supporting argument that the disputed patent was limited in the opposition proceedings from acid/Lewis acid to p-Toluenesulfonic acid. Primarily, however, it based its decision on the consideration that the equivalence of a replacement medium must be denied if a person skilled in the art – upon using it – undertakes the opposite of what the patent claim – either objectively and rightly or wrongly – teaches; if the disputed patent requires a symmetric configuration, then an asymmetric configuration is not equivalent [item 53].

8. In view of the fact that a person skilled in the art is certain that acids and bases are two superordinate categories of substances that comprehensively cover the group of potential catalysers, the OLG rejected equivalence. This is be-cause the claim was based on the “substance class” acid [item 55] and had therefore made a choice.

9. Both decisions widen the scope of application of the notion of choice. In the wake of the second judgement, it would even be possible to envisage that classic cases of equivalence, such as kinematic reversibility, would also be regarded as no longer co-vered. However, the first corrections are already apparent.

10. Thus, Kühnen, in the paper GRUR 2013, 1086 et seqq., deni-ed the existence of any decision to forgo protection if the replacement

medium, not mentioned in the patent description, was to a large extent obvious. He illustrated this with an example of a case that was based on the judgement; instead of a base, the replacement medium was an acid. In so doing, he excluded the aspect of the corresponding substance class. In addition, the case based on the acid is resolved by Kühnen inasmuch as he denies any waiver because he argues that merely remaining silent (regarding the possible use of other acids) does not argue in favour of waiving protection for an embodiment [GRUR 2013, 1086, 1089].

11. The OLG has also admittedequivalence in a more recent decision GRUR-RR 2014, 185 – Damping de-vice. The disputed patent envisaged, inter alia, a blind bore for receiving the hinge pin of an adapter piece. The infringing embodiment had a stepped bore. The stepped bore was end-to-end but had an annu-lar shoulder on its inner side, which meant that the hinge pin was unable to fully penetrate the bore. In view of the interpretation of a blind bore by the OLG to the effect that the blind bore did not completely penetrate the component part, the court denied the existence of a literal infringement. The court did however accept equi-valence even though the description disclosed different types of bore. This was because these other bore types were not mentioned in relation to the adapter piece and therefore there was no decision to waive protection for an embodiment.

12. Overall, the three decisions bythe OLG Düsseldorf show that the

case law established by lower in-stance courts is in a state of flux. However, the OLG once again seems to disavow the extremely extensive application of the notion of waiver in relation to Drospirenone. In cont-rast, the umbrella decision may well present challenges for filing practice from the point of view of patent at-torneys. The inclusion of too much information in the description – which, where indicated, is even required in the examination process – brings with it the risk that a court dealing with an infringement may assume the existence of a decision to wa-ive protection for an embodiment. Therefore, it is advisable to search the state of the art cited for alternative solutions and to reflect them in one’s own claim in order to avoid the charge of waiving [protection for possible embodiments].

Alexander HaertelAttorney at lawDüsseldorfTel.: +49 (0)211 513536-0eMail: hae@preubohlig.deProfile: website link

Dipl.-Inf. Alexander RitterAttorney at lawDüsseldorfTel.: +49 (0)211 513536-0eMail: alr@preubohlig.deProfile: website link

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The dispute concerned an action brought by Otto GmbH & Co. KG against a company engaged in the wholesale and retail trade in sports-wear fashion, clothing and footwear. Amongst the products marketed by the defendant were baseball caps, which it sold under the description ‘OTTO CAP’, ‘OTTO Trucker Cap’ and ‘OTTO Camouflage’ and the stylised word ‘OTTO’ on the cap as described below.

The plaintiff’s action sought an injunction, information, the estab-lishment of the obligation to com-pensate, surrender for the purpose of destruction and payment of the warning costs in relation to its trademark ‘OTTO’ (denominative mark description) and, alternatively, in relation to its company symbol and, by way of a further alternative, in relation to misleading claims un-der competition law.

The Federal Court of Justice in-itially accepted the existence of a trademark known domestically, whose familiarity is related to ‘who-lesale and retail services of class

25’. Class 25 mentions items of clothing, footwear and headgear. If the corresponding company sym-bol is also used by the trademark owner in addition to its trademark, then the trademark usually also benefits from the familiarity of the company symbol and vice versa, because the public memory does not differentiate according to the type of symbol.

Insofar as the defendant has dis-puted the details provided by the plaintiff on sales revenues, the number of employees and the number of copies published of its catalogue by way of proof of the awareness of its trademark, the Federal Court of Justice points out that facts from which the aware-ness of a trademark emerges are those with which the public is gene-rally familiar and may therefore be regarded as common knowledge as defined in Section 291 of the Code of Civil Procedure [ZPO]. To this must be added the fact that the trademark appears extensively in the market and vis-à-vis everyone for a long period.

The Federal Court of Justice ac-cepts the high degree of similarity between the plaintiff’s denomina-tive mark description ‘OTTO’ and the defendant’s word mark/symbol ‘OTTO’ with the stylised cap and

with ‘OTTO CAP’. It also finds that there has been unfair use of the di-stinctive character of the contested trademark. It finds that wherever a third party seeks to ride on the coat-tails of a trademark through the use of a symbol that is similar to a well-known trademark, to be-nefit from its attraction, its prestige and its reputation without any fi-nancial consideration in return and without any efforts on its own part or to otherwise partake in the at-tention accorded to the trademark, the assumption, in particular, must be that the distinctive character of the trademark is being exploited. Any subjective element on the part of the third party against which the claim is brought is irrelevant.

Finally, the Federal Court of Justi-ce confirmed a similarity between ‘retail services with goods in class 25’ and the goods in respect of which the defendant had used the challenged trademarks (headgear). The Court of Appeal rejected this. It argued that all that is required to establish a similarity between retail services and the goods re-lated thereto is that the services refer to the corresponding goods and that the section of the public concerned, based on this relati-onship, concludes that the goods and the services come from the same company (margin no. 39). It

OTTO – New findings on the similarity between goods and services

In a recent judgement, the Federal Court of Justice has (once again) delivered a decision concerning the similarity between goods and services (GRUR 2014, 378 – OTTO CAP).

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argued that this assumption should apply to the relationship between the goods ‘items of clothing’ and ‘headgear’ and to the retail servi-ces related thereto because large trading houses in this goods sector often market goods with their own trademarks in addition to selling third-party goods (see also FCJ GRUR 2011, 623 margin no 24 – Peek & Cloppenburg II.). What es-sentially matters is not whether the plaintiff also markets products un-der its own brand in this sector but the prevailing commercial practices in the goods sector and services sector in question that shape the public’s opinion.

This decision is in line with the case law of the European Court of Justice. In its judgement of 14.05.2013 (T-249/11 – Sanco, S.

A./OHIM [Marsalman, S.L.]), the European Court argued in favour of a similarity from the viewpoint of goods/services complementing one another between ‘wholesale and retail trade in all sorts of food-stuffs’ and [the] ‘transport, storage and sale of chickens’ on the one hand and ‘meat, poultry and game as well as live animals’ on the other hand. The appeal lodged by the OHIM was recently dismissed by the European Court of Justice in its judgement of 08.05.2014 (C-411/13 P). The OHIM had been of the opinion that the judgement concerning the similarity between the aforementioned goods and services was flawed within the me-aning of Art. 8 (1) letter b) of the Community Trademark Regulation. This was rejected by the European Court of Justice.

By way of summary, it should be noted that wholesale and retail ser-vices will increasingly be deemed similar to specifically defined goods rather than the goods themselves.

Astrid Gérard, LL.M.Attorney at lawMunichTel.: +49 (0)89 383870-0eMail: asg@preubohlig.deProfile: website link

“Urgency in the case of infringements in foreign countries”

Whoever wishes to obtain an interim injunction on restraint for trademark infringe-ments in Germany has to act quickly. If the holder of the trademark rights has tan-gible evidence of illegal activities, he should not shut himself out, but should pursue them. He has to immediately take the necessary steps in order to enforce the right of prohibition with speed (so-called “urgency”). It is to be presumed otherwise that the pursuit of law is not urgent for him with the result that the courts will not pass an interim injunction. According to consistent case law of a number of courts, the urgency in industrial property law is not apparent, if the applicant does not submit his application for the issue of an interim injunction to the court within one month after he became aware of the infringement.

the possibility to obtain a interim injunction – only if the infringe-ment abroad establishes itself

Federal Republic of Germany. In such cases, there is the (preven-tive) injunctive relief – and thus

If the infringement takes place abroad, there is no danger of a repetition in the territory of the

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as the risk of a first offence for infringements in Germany.

The question, whether such a risk of a first offence exists for Germany is seen for example if the respondent presents the infringing products at a foreign trade fair. In a judgement da-ted 24.10.2013 which has been published recently, the Regional Court Hamburg had stated in a patent matter that the risk of a first offence of the offer in the do-mestic market is not established “as a matter of course” by trade fairs held abroad. The information obtained abroad would not lead to the conclusion for the holder of the patent whether – and if yes where – there would be ac-tual infringements of the law in the domestic market (cf. Regional Court Hamburg, GRUR-RR 2014, sentence 137 et seq. – Urgency in the case of the preceding trade fair presentation abroad).

In a judgement dated 28.06.2012 which has not been published till now, the Higher Regional Court Munich (File No.: 29 U 539/12) had rejected an application for the issue of an interim injunction on account of lack of urgency in the following case. The applicant was the sole licensee of a design, which related to a bicycle frame. The respondent distributed a ca-talogue during a trade fair in Zag-reb from 7 to 10.06.2011, in which it introduced its new products for sales throughout Europe for 2012. In this catalogue, the respondent presented among other things a

new bicycle with a frame that vi-olated the design. The applicant acquired knowledge of this ca-talogue on 12.07.2011. The res-pondent exhibited the new bicycle with the frame that infringed the design in Germany for the first time at “EUROBIKE” from 31.08. to 03.09.2011 in Friedrichshafen. After obtaining this knowledge, the applicant applied for an in-terim injunction at the beginning of September 2011. The Higher Regional Court Munich was of the opinion that the applicant should have assumed on 12.07.2011 al-ready that the respondent would also offer the design-infringing product in Germany. The ap-plicant had received information about the respondent’s catalogue with the new products for sales “throughout Europe” on that day. The frame that infringed on the design was also i l lustrated in this catalogue. The deadline for urgency had accordingly begun on 12.07.2011 and lapsed on 12.08.2011. The application for the issue of an interim injunction submitted at the beginning of September 2011 was therefore rejected on account of lack or urgency.

In a decision of 26.03.2014 which was not published, the Regional Court Munich. I had allowed an application for interim injunction in the following facts of a case. The respondent has its registe-red office in Poland and holds a community trademark. At first, the respondent warned the Polish branch of a company located in

Munich about the alleged infringe-ment of the community trademark. It then warned the buyers of the Polish branch located in Poland for alleged infringement of the community trademark. The res-pondent then finally sent a war-ning also to the parent company in Munich. A warning was not sent to the buyers of the German parent company in Germany. The parent company in Munich prayed for a decree of interim injunction against the respondent for unau-thorized warning of intellectual property infringement (compare in particular FCJ, GRUR 2005, p. 882 et seqq. – Unauthorized warning of intellectual property infringement) and stated that the applicant was not infringing on the community trademark of the respondent. There was a risk of a first offence on the basis of the respondent’s behaviour in Poland in that the respondent would, af-ter warning the German parent company, also warn its buyers in Germany. The Regional Court Munich I followed this argumen-tation and passed an interim in-junction. The proceedings have not been concluded as yet.

Conclusion: Infringements ab-road can establish the risk of a first offence within the homeland resulting in the deadline for ur-gency for an application for the issue of an interim injunction in the homeland also commencing at that time. The presentation of an infringing product at a foreign trade fair alone does not establish the risk of a first offence for Ger-

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many. Other circumstances must also be present, for example:

• It is seen from the respondent’s behaviour abroad that it wan-ted to market the in f r ing ing product in Germany as wel l , for example, by distributing a catalogue with new products for sale “throughout” Europe,

• the respondent has i ts re-g is te red o f f i ce in Germany,

• the respondent also offers its pro-ducts on the Internet in German.

Jürgen SchneiderAttorney at lawMunichTel.: +49 (0)89 383870-0eMail: jsc@preubohlig.deProfile: website link

Preu Bohlig & Partner in the Rankings of the ‘IAM Strategy 300 2014’ and ‘IAM Patent 1000 2014’

Preu Bohlig & Partner are once again listed in this year‘s issue of ‘IAM Patent 1000’. The following lawyers at Preu Bohlig & Partner are included in the list of the ‘World‘s Leading Patent Professionals’ for the field of ‘Infringement’:

Firms Infringement: Preu Bohlig & Partner - silver

Individuals Infringement: Dr. Peter Kather (gold), Dr. Stephan Gruber (silver), Dr. Christof Augenstein (silver), Alexander Haertel (bronze), Andreas Haberl (bronze).

New inclusions were Alexander Haertel and Andreas Haberl.

The rankings and our discussion can be found at the following Link

Dr Oliver Scherenberg, lawyer in the Hamburg office of Preu Bohlig & Partner, has again been listed in 2014 in the ‘IAM Strategy 300’ as one of the ‘World’s Leading IP Strategists’. Link

The rankings are created each year by an in-ternal team of editors from broadly based re-search, and are based among other things on hundreds of interviews with competitors and clients worldwide.

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A Spanish c i t izen registered a complaint with Google, and demanded the deletion of links relating to the online publica-tion by the Spanish newspaper “La Vanguardia” in 1998 about the forced sale of a piece of his land because of social security demands. That publication was originally legal, but kept appea-ring until very recently in lists of search results relating to this person in Google Search.

The ECJ has now decided that Google is processing personal data as a Controller in the sense of the Data Protection Directive, and under certain circumstances is required to remove links to internet sites and to informati-on from third parties about this person. This applies even when publication in the source (in this case: La Vanguardia) was legal.

On the question of a duty on the search engine provider to delete such personal data, it was neces-sary to balance the freedom of opinion and information of inter-net users on the one hand, and the protection of the personal

data and the privacy of the per-son affected on the other hand. The ECJ posited a fundamental precedence for the protection of personal data or protection of privacy when striking this balan-ce. People in public life form an exception to this principle. This decision is likely to unleash a

flood of requests to search engi-ne providers, with Google to the fore, to have unpleasant perso-nal data and links deleted from search results lists.

But the judgement is remarkab-le because the court, departing from normal practice, did not fol-low the opinion of the Advocate General in the matter.

The ECJ started by taking the

line that the activities of search engines, meaning searching, indexing, storing and providing data that includes information about identified or identifiable natural persons should be regar-ded as “the processing of perso-nal data” in the sense of Art. 2 b of the Data Protection Directive

(see Margin nos. 25 ff of the jud-gement).

A fu r the r s i g -nif icant aspect of the decision (see margin nos. 42 ff) consisted of the question whether the EU

Data Protection Directive could apply geographically to the acti-vities of Google Search. Google Search is offered via the website “www.google.com” which is run by the US company Google Inc, based in California. Web sites from the entire world are index-ed and contents are temporarily saved on countless servers in unknown locations

The national Google company

Forgotten by the Internet - The ECJ in the Google and Google Spain case

Most people believe that the Internet never forgets. This widespread impression might need to be revised in the future. Because, on 13 May 2014, the European Court of Ju-stice (ECJ) issued a noteworthy judgement in case C-131/12 on the question of the so-called “Right to forget” when presenting personal data stored on the Internet. The background to this was a request for a preliminary ruling by a Spanish court on the interpretation of certain provisions of the (still) current Directive 95/46/EC (Data Protection Directive).

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overseas, here Google Spain SL, is involved, according to its company statutes, only in the sale of online advertising to third parties and marketing related to that. This required a review of whether the Google activities being complained about were, as defined in Art. 4 para. 1 a of the Data Protection Directive “carried out in the context of the activities of an establishment of the controller on the territory of the Member State.” Google con-tested this, as the processing of personal data being challenged is carr ied out exclusively by Google Inc. (see margin no. 51 of the judgement). However, the court was of the opinion that the concept of “in the context of the activities of an establishment”, should be interpreted broadly, given the protective intent of the Directive, and therefore given that the marketing activities of the national Google company are on behalf of the search en-gine and its advertising spots there should be an assumption of “processing of personal data car-ried out in the context of the ac-tivities of an establishment” (see margin no. 60 of the judgement). Finally, the revenues of Google Spain SL are primarily earned by inserting advertisements among the search results presented, or in other words, Google Spain SL indirectly earns money from the search engine activity and there-fore is (jointly) responsible for data protection. This very broad interpretation means that proba-bly other companies who act on

the international stage and who have an office or subsidiary in an EU member state for sales pur-poses, need to align themselves to the yardstick of the EU Data Protection Directive for the pro-cessing of personal data in the whole of the EU

The ECJ held that by collecting and aggregating personal data in the listed search engine results, a structured view is offered of the person searched for, and the risk is created of a “substantial infrin-gement” of the fundamental rights of respect for private life and pro-tection of personal data (margin nos. 37, 38). The search engine vendor therefore had to ensure, “within the scope of his powers and abilities” that his activities comply with the requirements of the Data Protection Directive.

The court regards the search engine vendor Google Inc. as the (joint) Controller of the pro-cessing of personal data, in the meaning of Art. 4 para. 1 a and Art. 2 d of the Data Protection Directive. The Attorney General for the case came to the diamet-rically opposite conclusion in his final conclusions dated 25 June 2013, no. 2 of margin no. 138, where he stated that the Internet search engine vendor could not be regarded as the “controller responsible for processing” in relation to personal data, other than in relation to the content of the search engine index, unless they indexed or archived personal data against the instructions or

requests of the copyright-holder of the website. There are several points which argue in favour of the latter view, as the search en-gine vendor technically indexes other parties‘ data and contents from third parties, and given the vast volumes of data other than the use of specific software tools, e.g. for the identification and fil-tering of contents recognisably relevant to criminal activities, it is not reasonable to expect che-cking the contents of listed data from third parties.

According to the ECJ, the search engine vendor must respect Art. 6 and 7 of the Data Protection Directive when processing perso-nal data, and especially Art. 7 f (see also margin nos. 71 ff of the judgement). But there must also be a “... balance struck between the conflicting rights and interests within which the importance of the rights of the affected persons must be considered, which derive from Art. 7 and 8 of the Charter” (see margin no 74).

The search engine vendor needs to strike a suitable balance bet-ween the information interests of Internet users, and the fundamen-tal rights of the affected person (see margin note 81 and else-where). In doing so “in general”, says the ECJ, “... the protected rights of the affected person out-weigh the interests of the Internet user.” The balance, according to the court, may only vary “in ca-ses with special circumstances, [depending] ... on the type of re-

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levant information and its sensi-tivity and the role of the affected person in public life ...”. This is used to support a general prio-rity, not just restricted to specific categories of personal data (Art. 8 para. 1 of the Data Protection Directive - health, religion etc.) for data protection rights (and by implication personality rights) of the affected person over the in-terests of information for Internet users incumbent on the search engine vendor. Critics object to this by saying that a general pri-ority of this kind does not meet the test of the fundamental right under Art. 10 of the Charter to the expression of opinions and freedom of information.

What is notable is also that the search engine vendor, unl ike websi te vendors who spread personal information “for purely journalistic reasons”, see Art. 9 of the Data Protection Directive, cannot rely on any (media) pri-vilege for publications. This me-ans that in cases of unpopular publications on the web, possibly affecting personality rights, just by relying on the Data Protection Directive the original journalistic source, such as e.g. the online presence of many newspaper publishers or media agencies, cannot be closed down. The po-tentially affected person, in the view of the ECJ, can, however, approach the search engine ven-dor, under some circumstances with a request for removal of the relevant content, on the basis of this judgement.

It remains to be seen how the search engine vendors will re-act following this judgement in re lat ion to delet ion requests from private individuals and also companies. To avoid a flood of complaints it is plausible, that in-itially a more generous standard in favour of the applicant may be applied. It can be expected that the limits of “relevancy” defined in the judgement will be refined in a series of class cases. In fact, a fundamental right of the individu-al, to only be presented in public how they want to be cannot be derived from the ECJ judgement. It is based on considerations of data protection law, and relates to personality rights of individuals only where these relate to data protection law. So talking about a general right to being forgotten, as the daily papers often refer to it, would be stretching things rather too far. In addition, the judgement explicitly referred only to private individuals and not to companies. But a fundamental distinction of this kind does not exist in the right to personality. This judgement means that pri-vate individuals are, for example, favoured over the sales peoples acting on behalf of a company. Here too, we can expect that case law needs to develop in favour of companies.

Despite that, it can be expected that some Google results lists will be significantly shorter in future. So far as is known, the new EU Data Protection basic regulation will not affect this outcome at all.

Dr. Christian BreuerAttorney at lawMunichTel.: +49 (0)89 383870-0eMail: cbr@preubohlig.deProfile: website link

Dr. Oliver ScherenbergAttorney at lawHamburgTel.: +49 (0)40 414299-0eMail: ols@preubohlig.deProfile: website link

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We have summarised the most im-portant changes for you below:

1. Intent ion consumer protection

In line with the intention of the European Parliament to organise consumer protection on a uniform basis, the new provisions concern, above all, commercial dealings with consumers. This will involve a redefinition of the term ‘consumer’ (Section 13 of the German Civil Code) In the future, transactions that can be assigned to both the private area of life and to com-mercial activities will be deemed consumer transactions provided the share corresponding to private use is greater. If the customer is able to furnish proof of this, then he/she will be able to exercise consumer rights.

2. Extended duties to in-form and to document

A considerable extension to the duties to inform will apply to both brick-and-mortar commerce and to all companies engaged in distance selling which, if not fulfilled, will mean that the contract will not be formed. These duties to inform will apply to the company itself and to

the specific product. A new aspect, for example, is that a telephone number must be indicated.

The specific scope of these du-ties to inform will not only depend on the type of goods or services offered but also on the means of communication used. Here, the question of which provisions are relevant will have to be examined in any given case.

The duties to make available the information to the customer on a permanent data medium will be closely related to the duties to inform. Here, depending on the circumstances, adjustments will have to be made to the ordering process.

3. Button solution

The ‘button solution’ has already been mandatory since August 2012. Before the customer orders, he/she must be informed through the use of an unambiguous swit-ching point (the ‘button’) about the non-gratuitous nature of the offer. The law requires the but-ton to be marked with the words ‘order with obligation to pay’ or a ‘correspondingly unambiguous formulation’. What ‘correspondin-

gly unambiguous’ actually means is unclear but the first decisions have confirmed the view that the leeway here is small or even non-existent.

The rule continues to exist in a new position in Section 312j para. 2 to 4 of the German Civil Code, new version.

4. New draft ing of the cancellation right

A constant source of conflicts is the legal notice on the right of cancel-lation or return. This has now been decisively simplified. The right of return will be omitted. All that will remain is the uniform drafting of the right of cancellation.

The cancellation period will now be 14 days throughout Europe from the date the goods are received or the services are rendered. The list of exceptions for goods for which there is no right of cancellation will be extended. For example, the right of cancellation will no longer apply in the case of downloads.

In addition, the legislator will make available a uniform legal notice on the right of cancellation which, if used, will accord certain privileges

Extensive changes in distance selling regulations

Distance selling knows no rest. In order to standardise consumer protection, the EU parliament has enacted a number of directives that will have to be transposed by na-tional legislators. The German Bundestag has complied with this obligation and, inter alia, has reorganised the law governing distance sales. The new provisions already entered into force on 13 June 2014 without any transition period.

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to the entrepreneur. It will not be possible to issue any successful warnings to any entrepreneurs that uses this legal notice.

If the entrepreneur fails to inform the consumer about his right of cancellation or does so incorrectly or incompletely, the cancellation period will be extended by an ad-ditional 12 months.

A new aspect is the statutory model form that the entrepreneur can make available to the custo-mer to enable him to exercise his right of cancellation. However, the customer is not obliged to use the form. Overall, the options available to the customer for cancellation will be expanded under the new legal situation: henceforth, he/she will also be able to do this by telephone or email. What matters is that his/her decision to cancel the agreement is expressed un-ambiguously (see Section 355, para. 1 German Civil Code, new version).

Following the cancellation, if the payments made by the customer have to be refunded then, in prin-ciple, the same means of payment

as those used to make the pay-ment must be used. Exceptions to this rule can be agreed upon subject to special conditions.

5. Costs of dispatching and returning goods

The 40-euro rule that has applied up to now, incomprehensible and often challenged, under which the

return costs may be passed on to the consumer if the value of the goods due to be re tu rned does not exceed 40 euros has been abolished. Now, the entrepreneur, subject to certain condit ions and

provided it communicates this transparently before the agree-ment is concluded, may ask the customer to bear the costs of returning the goods.

6. Further restrictions

The new rules will restrict the entrepreneur’s freedom of action as regards the way in which its commercial dealings with consu-mers are handled.

The application of surcharges for certain payment methods will be rendered much more difficult. A popular free payment method must be made available to the customer at the very least. If surcharges are applied for certain payment me-thods, they may not exceed the

costs incurred by the entrepreneur through the payment method.

In the future, it will no longer be possible to operate hotlines using fee-based value-added services numbers for long-standing cus-tomers, see Section 312 a, para. 5 German Civil Code, new ver-sion.

7. Obligations to act: What does this mean for my company?

The new duties to inform and to document mean that checks must be performed to ascertain whether an enterprise’s own order process complies with the new rules. Any enterprise failing to do this will be exposed to difficulties when asser-ting its rights when dealing with customers in breach of contract or warnings issued by competitors or associations.

The same will apply to the GTCT used. If references are made in the GTCT to standards under the Ger-man Civil Code, these references must be updated and their content then checked to determine whether they are still permitted.

Finally, the legal notices regarding the right of cancellation must be replaced. From 13 June 2014 on-wards anybody continuing to use the old legal notices runs the risk of receiving a warning letter.

Anybody who has not yet imple-mented these changes on their own website should rectify this

Newsletter June 2014 23

situation immediately. The law does not make provision for any transition period. 8. Summary

The reform will give rise to the need for adjustments thus ge-nerating costs. But will anybody actually benefit from it?

The reform has done away with a few improper rules. In addition, certain principles that hitherto have only been established by case law will now be enshrined in law which, in itself, will provide clarity.

The rules, which apply throughout Europe, will promote the uniformi-

This year the US Best Lawyers handbook also includes the following lawyers at Preu Bohlig & Partner under the headings of IP and Health Care:

IP: Dr. Christof Augenstein, Prof. Dr. Chris-tian Donle, Dr. Stephan Gruber, Dr. Peter Kather, Dr. Oliver Scherenberg, Sebastian Eble, LL.M., Dr. Stefan Schweyer

Health Care: Peter von Czettritz

New inclusions were the lawyers Dr Oliver Scherenberg and Sebastian Eble, LL.M. from the Hamburg office, along with Dr Stefan Schweyer from the Munich office in the IP area.

Each year, Best Lawyers carries out a wide-ranging survey within the “peer group” to determine the reputation of individual lawy-ers in the various legal fields. In Germany, the handbook works with the Handelsblatt newspaper which also published the nomi-nations under the headline “Germany‘s best lawyers 2014”. Link

Preu Bohlig & Partner listed by Best Lawyers 2014

ty of the economic area and will create uniform conditions for all competitors.

However, a new wave of warning letters is feared. Any market par-ticipants that have failed to imple-ment the new rules, or implement them properly, run the risk of re-ceiving a warning notice.

On balance, it is hoped that the reform will lead to greater legal certainty and create clear ope-rating conditions for all market actors and their companies. Ne-vertheless, this is almost certainly not the last word on the subject of distance selling.

Christine Grünther, LL.M.Attorney at lawBerlinTel.: +49 (0)30 226922-0eMail: berlin@preubohlig.deProfile: website link

Newsletter June 2014 24

Lawyers Benoît Dehaene and Jérôme Werner from Alérion ex-plained, under the chairmanship of Dr Friedrich Niggemann, the different trends in the two coun-tries, which create some barriers but also open up opportunities.The presentation is available in English from Dr. Friedrich Nig-gemann, lawyer at the Alérion

Business Breakfast with law firm Alérion

On 20 March 2014, the Munich office of Preu Bohlig & Partner played host to the Business Breakfast on the subject of “France near and far - current developments in social, employment and tax law” led by the law firm Alérion from Paris.

From left to right: Rechtsanwälte Sebastian Frhr. von Bechtolsheim (Preu Bohlig & Partner), Dr. Friedrich Niggemann, Jérôme Werner, Benoît Dehaene (Alérion)

law firm (eMail: fniggemann@alerionavocats.com).

In November 2013, the first joint event held with the Alérion law firm took place in its off ices in Paris. Lawyer and partner Sebastian Frhr. von Bechtols-heim from Preu Bohlig & Part-ner spoke together with lawyer

Dr. Christina Mennemeyer on the subject of “Régroupement d’entrepr ises en Al lemagne” [Company combinations in Ger-many].

Preu Bohlig & Partner has had a French Desk (“Notre équi-pe française”) for some time, which offers French companies legal advice and can represent them in Germany. For many years, renowned French com-panies and industrial firms as well as smaller businesses have relied on the legal advice and support of experts from Preu Bohlig & Partner in representing their interests in Germany.

Contakt: Carolin MaluckeMail: cma@preubohlig.deTel +49 (0)89 383870-0

Newsletter June 2014 25

Designschutz durch Marken-, Wettbewerbs- und

Urheberrecht

Link: Veranstaltungsinformationen

Patentverletzung: Angriff und Verteidigung

FORUM Institut für Management GmbH

Ergänzende Schutzzertifikate / SPC

FORUM Seminar

25 August 2014,

HTW Berlin

25 - 26 September 2014,

Düsseldorf

21 November 2014,

9:00-17:00 Uhr

Hilton Munich City

Dr. Thomas Beyer

Andreas Haberl

Peter von Czettritz

tbd

Patentrecht 2014

Akademie Heidelberg

Link: Veranstaltungsprogramm

Supplementary Protection Certificates

FORUM Seminar

Link: Veranstaltungsprogramm

Internationale Aspekte des Nichtigkeits- und

Verletzungsverfahrens vor dem Einheitlichen

Patentgericht

09 - 10 September 2014,

Heidelberg

24 September 2014 (SPC for

Beginners); 25 - 26 Septem-

ber 2014 (Advanced SPC),

Amsterdam

Late autumn 2014,

tbd

Dr. Stephan Gruber

Peter von Czettritz

Current lectures and seminars

Below you find a list of current lectures and papers by our lawyers:

Date, Place Speaker(s)Information on seminar activities

Newsletter June 2014 26

PREU BOHLIG & PARTNERMs Carolin MaluckFax +49 (0) 89 383870-22or cma@preubohlig.de

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Newsletter June 2014 27

Our offices

BerlinGrolmanstraße 36

10623 BerlinTel +49 (0)30 226922-0

Fax +49 (0)30 226922-22berlin@preubohlig.de

DüsseldorfGeorg-Glock-Straße 14

40474 Düsseldorf Tel +49 (0)211 513536-0

Fax +49 (0)211 513536-22duesseldorf@preubohlig.de

HamburgTesdorpfstraße 820148 Hamburg

Tel +49 (0)40 414299-0Fax +49 (0)40 414299-22hamburg@preubohlig.de

MunichLeopoldstraße 11a

80802 München Tel +49 (0)89 383870-0

Fax +49 (0)89 383870-22muenchen@preubohlig.de

www.preubohlig.de

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