#wirfahrenmit: climate-friendly and health-promoting on the road with the service bike

We are very proud that a large number of our employees benefit from our digital service bike programme with @DeutscheDienstrad. This adds another important component to our multifaceted portfolio of employee benefits, while at the same time important building block and at the same time promote the health of our team.

With the Deutsche Dienstrad offer, we provide our employees affordable and climate-neutral access to sustainable mobility. Due to the free choice of brands, models and manufacturers, all wishes remain unfulfilled and each employee has the opportunity to individually design his or her dream bike.

With the MobilityHub of Deutsche Dienstrad, every participant decides where and how they choose and receive their service bike.

Together, we are making an active contribution to climate protection and having a positive effect on CO2 emissions of our world, both professionally and privately.

We make Germany move with our #team at @KatherAugenstein.

On today’s launch of the Unified Patent Court (UPC): Christof Augenstein in podcast interview with Emily O’Neill of Deminor Litigation Funding.

In an ongoing podcast series, Emily O’Neill, General Counsel UK and Global Intellectual Property Lead at Deminor Litigation Funding, interviews global experts to understand the implications of the new Unified Patent Court (UPC).

In his latest interview, our Dr. Partner Christof Augenstein provides valuable insights into the upcoming Unified Patent Court (UPC), discusses its overall significance, and outlines his predictions for the early days of the new system and beyond.

You can find the full interview with podcast sequences here

Deminor is the brand name of the Deminor Recovery Services Group, which assists companies and investors with legal claims.

Deminor is a pioneer in its field and has played a leading role in numerous pivotal investor lawsuits around the world. The group operates in 15 jurisdictions and has seven offices in Europe, the UK, the US and Asia.

News in the case of the paprika patent

Staple foods such as fruits and vegetables have been grown and consumed for thousands of years. Meanwhile, however, there are legal, especially patent, requirements to be observed in this regard as well. With its latest decision in the case of the pepper patent, the European Patent Office is now reigniting the debate on ethical and legal aspects of patent law in agriculture. But what is the paprika patent all about and why is it so controversial?

In 2013, the European Patent Office (EPO) approved a patent on an insect-resistant pepper plant (EP2140023) for the Syngenta corporation. The insect resistance of the pepper plant resulted from crossing a wild pepper plant from Jamaica with a commercial pepper plant and subsequent selection of the common offspring. The company learned about the resistance through a freely accessible database. The granted patent covers the pepper plants themselves, their use, their fruits, their seeds and all breeding steps. Syngenta thus claimed both the cultivation and harvesting of the plants.

In the following year, an alliance of various NGOs, breeders, seed initiatives and farmers’ organisations filed an objection against this patent grant. They criticised that the crossing of the pepper plant had been done in the conventional way and with the help of a freely accessible database, and that the insect resistance was thus a naturally occurring genetic trait and not an invention of its own. Patenting naturally occurring gene traits would monopolise biodiversity and endanger access to it.

In February 2023, the patent was again confirmed by the EPO, even though such a patent is actually no longer permissible according to current case law. Since 2017, no patents may be granted for plant varieties that have been created by natural methods such as crossing and selection. Accordingly, only plant varieties that have been genetically engineered are still eligible for patent. Genetic engineering is patented, but genetic diversity and seeds are not. However, Syngenta applied for the pepper patent in 2008, well before the new legislation.

Nevertheless, the current case law continues to create uncertainty, because genetically engineered plants can in many cases also be created by classical crossing with subsequent selection. Whether the genetically engineered plants may nevertheless be patented in these cases is currently a matter of dispute. Whether and to what extent patent law in agriculture will continue to develop will be shown by future patent law decisions.

Does Paypal has too much ‘market power’? German federal cartel office opens proceedings.

Everyone knows about the payment option “PayPal”. For consumers, it seems to be uncomplicated, secure and above anything else, free of charge. But that is not the case for sellers. Because if the buyer chooses the PayPal payment method, fees are charged. This is not a problem. Other providers also charge fees. However, PayPal’s terms of use could be critical. It is precisely these terms of use that are now the subject of proceedings by the Federal Cartel Office. The Bundeskartellamt fears that Paypal has too much market power due to its own terms of use. This could result in the obstruction of competitors and the restriction of price competition.

If other payment methods are cheaper for the seller, it is obvious that the seller prefers them. Theoretically, it is possible to influence the buyer in his choice of payment method. But this is exactly what the PayPal terms of use in Germany exclude. Here, “rules on surcharges” and on the “presentation of PayPal” are regulated. According to these rules, sellers are not allowed to offer their goods at a lower price when choosing a payment method other than PayPal. In addition, sellers are not allowed to point out the fees charged by PayPal or otherwise buyers in their choice of payment option. This would be possible, for example, by offering a faster and more convenient contract conclusion. It was precisely these rules in the terms of use that made the Bundeskartellamt suspicious.

The Bundeskartellamt’s proceedings are based on Article 102 TFEU and Section 19 GWB. According to these, there is an antitrust prohibition on the abuse of a dominant position or, according to Section 20 GWB, a position with market power. In addition, according to the Bundeskartellamt, a violation of the prohibition of agreements restricting competition pursuant to Article 101 TFEU and Section 1 GWB is possible. According to the Bundeskartellamt, it will examine what market power PayPal has. In addition, it is to be clarified to what extent sellers on online platforms are dependent on offering PayPal as a payment method.

Because if merchants are prevented from taking into account the different costs that arise from the choice of a payment method and passing them on to the end customer, it could become problematic. In that case, other payment methods can compete only with difficulty or not at all. As a result, the payment services with market power could charge even higher prices for their service. 

In the end, it would be the consumers who would have to pay for this situation. After all, no merchant omits the costs for the payment method from his price calculation, even if, unlike shipping costs, they are not visible on the statement. If no cheaper payment service provider prevails or the prices are even increased, the costs for the payment option remain in the calculation of the seller. And these are simply borne by the buyer. Currently, the costs are between 2.49 and 2.99 per cent of the amount to be paid and an additional 34 to 39 cents per transaction. According to market studies, PayPal is one of the most expensive online payment services on the German market. It remains to be seen whether the Bundeskartellamt will ultimately allow other, cheaper payment service providers to assert themselves on the market.

Managing IP Stars 2023: Miriam Kiefer among the top 250 women in IP

Congratulations to our Managing Partner Miriam Kiefer LL.M., who was recognized for the fourth consecutive year as a leading IP attorney in Managing IP’s international “Top 250 Women in IP” directory in the IP Stars 2023 rankings.

The list honours experienced female IP lawyers and IP litigators who have provided exceptional services to their clients and companies in the past year.

This year’s reference list includes more than 30 areas of law worldwide, for more information and access to the full ranking, click here.

The Legal 500 Germany Ranking 2023: Kather Augenstein again ranked as one of the leading law firms in patent litigation

Kather Augenstein is again honored by The Legal 500 Germany as a “Leading Law Firm” in the field of Intellectual Property – Patent Litigation. The annual award recognizes law firms and individual attorneys worldwide for their outstanding achievements, based on feedback from clients, peers and colleagues.

Some of them describes us as a “highly skilled team that handles cases quietly, competently and with focus in a very human and pleasant manner”, as well as a “very effective and efficient team, both in smaller and larger cases.” Miriam Kiefer is confirmed as having a “trusting, humanly very pleasant, close and very well coordinated cooperation in a number of infringement cases, expert reports and SPC proceedings”.

According to the editorial team, one of the numerous strongest IP boutiques in Germany is the Kather Augenstein team in Düsseldorf, whose broad advisory portfolio in patent law context is reflected in the individual focuses of the central experts.

Partner Dr Christof Augenstein, for example, is more active in the fields of electronics, telecommunications, medicine and automotive, while senior partner Dr Peter Kather sets strong focuses on cross-border proceedings. Managing Partner Miriam Kiefer, who is well-versed in medical technology, heads the team of lawyers, which also includes the Partners Christopher Weber (who focuses on software, electronics, pharmaceuticals, chemicals, mechanics and plastics processing) and Sören Dahm, who is well-versed in technology-related, often cross-border matters. The core team also includes Dr Benjamin Pesch and his focus on computer-implemented inventions, who was been appointed as counsel in July 2022.

As last year, we are pleased that our Senior Partner Dr. Peter Kather has been inducted into the Hall of Fame category again and that our partners Christof Augenstein and Christopher Weber have been recognised as Leading Names for the second time.

About The Legal 500

The Legal 500 has been published for the past 36 years and is widely recognised as the world’s most comprehensive legal handbook. Over 300,000 in-house lawyers worldwide are surveyed and interviewed each year.

Adidas and its stripes

Adidas is known for its trademark lawsuits. The German sports giant is always on its guard when it comes to the designs of its competitors. In January, another exciting judgement was made on the famous three stripes.

The facts of the case date back to 2007. At that time, Adidas complained about Thom Browne’s three-stripe design. The latter showed understanding and changed to the four-stripe design. A few years later, it was clear that this was not enough for the German sportswear manufacturer. However, the dissatisfaction only came to a head when Thom Browne began to achieve great success and establish itself in the sportswear business. In June 2021, Adidas sued Thom Browne, seeking to prohibit him from using stripes and to obtain a payment of more than $7.8 million. The judgement was handed down in January 2023.

Adidas’ complaint: Thom Browne’s design was too similar to the brand’s own three-stripe design and therefore constituted an infringement of its own trademark rights. In fact, Tom Browne usually uses four stripes in his creations that enclose an item of clothing. The stripes border socks, for example. The designer demonstratively wore such socks to the court hearing. According to Adidas, Thom Browne uses the four stripes to draw attention to the sportswear he designs. In this way, he exploited Adidas’s fame. This has led to cooperations with athletes, such as Lionel Messi. Lionel Messi had previously been an Adidas ambassador. Thom Browne defended himself with the argument that stripes are a common design element for clothing. He also served the luxury goods market, so there was no direct competition between the two companies.

The jury concluded that Adidas could not prove that Thom Browne had infringed the sports giant’s trademark. The reason given for this was the different number of stripes – four stripes instead of three, which ruled out a likelihood of confusion.

This result was not to be foreseen. The case law, which has often dealt with the three stripes, decides depending on the individual case. In 2016, the European Court of Justice (ECJ) affirmed a likelihood of confusion in the case of a trade mark that used two stripes instead of three. However, in 2019, with the same opposing party, the ECJ ruled that the three stripes was rightly cancelled from the register as an EU trade mark. It may be surprising at first that the judgments are different in what at first sight appear to be the same case. According to the court, the small but subtle difference lay in the arrangement of the stripes, i.e. the design decision.

The first case concerned three diagonal stripes on trainers. Here, the court recognised a likelihood of confusion for consumers, because Adidas used diagonal stripes typical of the brand, especially on trainers, an iconic recognition value. The second case involved three vertical black stripes on a white background. According to the court, consumers do not necessarily associate this with Adidas. It was simply a decorative element that was not associated with any brand. According to the court, Adidas could not prove the opposite.

Adidas shows great disappointed after the current ruling and indicates that it will not hesitate to take legal action. The company is very concerned about defending its own intellectual property. Past decisions have shown the finer points that can matter.

Heitec vs. Heitech Kather Augenstein succeeds with landmark decision in trade mark law before the Federal Court of Justice (BGH)

In the trademark infringement proceedings between HEITEC AG and HEITECH Promotion GmbH, the European Court of Justice has confirmed our legal views in its judgement of 19 May 2022.

The Federal Court of Justice has now also ruled in favor of our client, Heitech Promotion GmbH, in the specific case, so that the action brought by Heitec AG has been dismissed with final effect.

Trade mark owners must therefore follow up on infringements within five years at the latest, otherwise their claims are forfeited, including secondary claims such as damages or recall. In particular, out-of-court measures do not extend this time limit if the trade mark owner does not go to court within a reasonable period of time. Detailed information on the facts of the case and the reasons for the decision can be read again here and in our blog post.Both decisions are expected to shape case law in the coming years on the issue of forfeiture in trade mark law, as decisions of the highest courts, in particular involving the ECJ, are extremely rare.

“We are pleased that the Federal Supreme Court has now also followed our view and that we were able to bring this legal case to a successful close after almost nine years,” said Dr Christof Augenstein. “It shows that Kather Augenstein is also a first address for complex trade mark disputes.”

An Amazon for pharmaceuticals is not lawfully

In its judgement (decision of 8.12.2022 – 13 O 17/22 KfH), the Regional Court of Karlsruhe ruled that the provision of an online platform for pharmacies is not permitted, if the marketplace operator charges pharmacies a basic fee or a transaction fee. The court granted the pharmacy association, acting as plaintiff, the right to prohibit the operation of such an online marketplace.

Online marketplaces are convenient. And thus also very popular. Hardly anyone can claim never to have bought a product via Amazon or E-Bay. Therefore, the idea – to provide online marketplaces offering health products and services as well – seems quite obvious. Especially in view of the gradual introduction of the e-prescription in Germany, which has already been initiated on 1 September 2022, providing an online marketplace for pharmacies sounds more like a necessity than an innovation.

However, this should not be done on any terms, according to the Karlsruhe Regional Court. In the present case, the plaintiff intended to charge a monthly basic fee for use of its platform as well as 10 % of the net sales price for products that were not purchased on a prescription. The Chamber of Pharmacies had issued a warning to the plaintiff and demanded that it cease and desist from this construct.

The Karlsruhe Regional Court gave the Chamber of Pharmacies the right to demand that the marketplace operator cease and desist. The decision is based on §§ 8, 3a UWG in conjunction with § 11 para. § 11 para 1a ApoG. The judges ruled that the marketplace operator acted unfairly because it brokered prescriptions to pharmacies and accepted or was promised an advantage in return.

According to the judges, the decisive factor is that the online marketplace operator can display the products and services in a self-selected order to a buyer who enters a search term. Through this, the marketplace operator would “broker prescriptions”. For this service, the marketplace operators contractually insured the payment of the basic fee, which violates Section 11 (1a) ApoG.

The court’s decision was supported by the protective purpose of the provision. In this context, the judges referred to the legal justification of Section 11 (1a) ApoG and explained that the primary purpose was to protect the “general interest in ensuring a proper supply of pharmaceuticals to the public”. 1a ApoG und erläutern, dass es primär darum ginge, das „Allgemeininteresse an der Sicherstellung einer ordnungsgemäßen Versorgung der Bevölkerung mit Arzneimitteln“ zu schützen. For this purpose, a network of pharmacies close to the place of residence is necessary. This network could also be endangered if the established pharmacies were under pressure to offer the products for sale in an online marketplace. This could potentially threaten local sales.

On the other hand, paying 10% of the net purchase price of the products to the marketplace operator violates § 8 ApoG. In the second sentence of the provision, it is stated, among other things, that rental agreements based on turnover or profit sharing are not permitted. This is exactly what the court saw in the 10% agreement. According to the court, a classical rental agreement is not necessary to violate the provision. Rather, it was sufficient that the contract concluded resembled a tenancy agreement. In the contract between the pharmacies and the online marketplace operator, the judges saw a contract with elements of a rental agreement, because a digital sales space was made available. And for this, money had to be paid, which is prohibited by the norm.

MIP Ranking: Dr Benjamin Pesch is awarded “Rising Star 2021” by leading specialist guide Managing Intellectual Property

We are pleased to announce that Dr Benjamin Pesch has been recognized as a “Rising Star 2021” in Gerrmany in the recently published edition of Managing IP.

This publicationfeatures the best up-and-coming IP practitioners in the field of patent litigation who have contributed to the success of their firms and their clients. We congratulate Benjamin on this award!

Managing Intellectual Property has already named the following Kather Augenstein IP practioners asIP Stars 2021 in Germanythis year.