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Germany > Intellectual property > Trade marks and unfair competition > Law firm and leading lawyer rankings

Editorial

Index of tables

  1. Intellectual property: trade marks and unfair competition
  2. Design law
  3. Leading individuals
  4. Next generation lawyers

Leading individuals

  1. 1

Next generation lawyers

  1. 1
    • Rudolf Böckenholt - Boehmert & Boehmert
    • Arne Lambrecht - Harte-Bavendamm Rechtsanwälte

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Bird & Bird continues to focus on contentious proceedings with trade mark and competition law aspects, but also increasingly advises strategically on international trade mark and design portfolios, which involve coordination across multiple jurisdictions, such as giving comprehensive advice to eos (Evolution of Smooth). Recent highlights in the trademark area include Uwe Lüken’s representation of Anson’s Herrenhaus as plaintiff in a dispute with ASOS and the representation of Deutsche Sparkassen- und Giroverband (the German Savings Banks Association) in cancellation proceedings at the German Federal Court. In the area of competition law Joseph Fesenmair acted for AUDI in various disputes with the German environmental and consumer protection NGO Deutsche Umwelthilfe for the implementation of the German energy labelling ordinance for cars; notably AUDI also sought the firm’s advice on design matters, such as the development of cooperation agreements, design development contracts and the defence of design rights against imitators at several higher regional courts. In another highlight Richard Dissmann represented L’Oréal in a series of disputes, such as on advertisement statements and special claims on product packaging. Adidas and Deutsche Telekom are also clients. The practice is led by Christian Harmsen and bolstered its competition law expertise with the arrival of Niels Lutzhöft from Gleiss Lutz. Jana Bogatz was promoted to counsel.

Boehmert & Boehmert’s ‘exceptionally high quality of advice’ on trade mark and competition law is not only due to the team’s ‘innovative thinking’ and ‘exceptionally strategic advice’, but also its ‘quick response times and very good availability’. It focuses on strategically advising clients regarding the establishment and management of trade mark portfolios and stands out for its strong synergies with the copyright law practice. The firm’s strength in trade mark registration is unwavering, especially with regards to EU trade marks. Product piracy matters and border seizure cases constitute further pillars of the practice. In the contentious area the team recently acted for the Bavarian broadcasting organisation Bayerische Rundfunk in a dispute with ProSiebenSat.1 TV Deutschland regarding the title of a dating show, and also advised ASOS in a global dispute surrounding the trade mark ASOS in the fashion and retail area. Other clients include Coty, Metro-Goldwyn-Mayer Studios and the brewery Staatliche Hofbräuhaus in Munich.Anke Nordemann-Schiffel and Axel Nordemann are noted for their ‘very high industry expertise and excellent knowledge of trade mark and fair trading law’;Rudolf Böckenholt ‘always gives concise advice’ and ‘achieves constantly excellent solutions’; Martin Wirtz and Philipp Johannes Henrichs in Düsseldorf and Silke Freund, Christian Meyer and Carl-Richard Haarmann in Munich are also recommended.

With eight offices across Germany CMS is one of the domestic heavyweights in trade mark and competition law and well positioned both for giving strategic advice and handling portfolio management and representing clients in contentious matters. The IP practice led by Thomas Manderla and Jörn Witt regularly acts for numerous clients, such as 1. FC Köln, in trade mark and competition law matters, but also has broad expertise in design law. Recently the team advised the symphony orchestra Gewandhaus zu Leipzig on the drafting of sponsoring contracts and the redesign of the brand identity and handled design matters and framework supply agreements for Tredy Handels GmbH. It also represents Eyeo in six principal proceedings and several injunction proceedings around the permissibility of online ad blocking; and assisted the Melitta, a German company selling coffee and coffee-making appliances, with competition law proceedings. Another area of expertise lies in domain law matters, such as successfully concluding a dispute for Apologistics with an Austrian internet company, and in connection with press, freedom of speech and copyright law. The firm is a founding member of the European Legal Technology Association, which was established in autumn 2016. Heike Blank is ‘quick’, ‘engaged’ and ‘competent’ and renowned Gordian Hasselblatt is also recommended.

Clients refer to Gleiss Lutz particularly for ‘very complex trade mark law cases’ and note the firm’s ‘very good service level’ and ‘practical advice’. The team led by Stefan Weidert, which ‘caters well for clients’ needs’, assists clients both with the development and implementation of international trade mark strategies, and the settling of international contentious trade mark cases. Additional expertise lies in the transaction-related trade mark matters; clients include the Taiwanese automotive supplier Enterex International regarding trade mark aspects of the takeover of the AVA group by Haugg-Kühlerfabrik and Ströer regarding trade mark and patent law and cosmetic regulations in the context of the acquisition of a majority share in the BHI group. The team, however, also stands out for its work in competition law and recently successfully represented Blizzard Entertainment in proceedings at the German Federal Court around the use of bot programs for the computer game World of Warcraft. It also acted for Euroleague Basketball in a dispute with FIBA and FIBA Europe regarding the question who is permitted to host the European club competitions in basketball. Other clients include Carl Zeiss, Daimler and Phillip Morris. The ‘experienced high-calibre’ Stefan Völker is a ‘proven expert in trade mark law’. Niels Lutzhöft joined Bird & Bird.

Hamburg-based boutique Harmsen Utescher is known for its ‘excellent legal expertise’ and ‘very good industry knowledge’ and ‘gets to the heart of the matter’ with its ‘solution-oriented, pragmatic working methods’. The team advises on strategic considerations and portfolio management, but also is also assertive in contentious matters, such as acting for METRO in proceedings at the ECJ around the registration of an EU trade mark. The firm also advised the client in the context of the spin-off of the Media-Saturn group regarding the finding of a new group name, which involved trade mark law reviews across multiple jurisdictions. Another client is Intersnack concerning the representation at the Court of First Instance in trade mark cancellation proceedings and other highlights included acting for Adler Modemärkte in domestic and international trade mark disputes and data protection matters and representing Amazon in proceedings around trade mark infringements due to incorrectly reproduced AdWords ads. Advising Sky Deutschland on competition and trade mark law matters also kept the team busy. Christoph Schumannalways has a sensible proposed solution’ and is ‘always responsive’; Till Lampel, Henrik Dirksmeier and Jan Peter Heidenreich are also recommended. Til Quadflieg left for boesling IP.

Harte-Bavendamm Rechtsanwälte doubtlessly belongs to the ‘leading IP firms in Germany’ and is an ‘imperative recommendation’ for the ‘best possible advice in a practice area without overhead’. The continuously expanding team ‘both at partner and associate level always serves clients’ interests and advises at the highest level’; it makes clients feel like a ‘chess player, who is always one step ahead of the opponent’ and is not only noted for the ‘legal expertise of individual partners, but also their advisory capabilities and the penetration of legal disputes down to the last fibre. Recent highlight matters include assisting Gruner+Jahr with the management of its international market portfolio, its daily business and contentious matters in the prosecution and litigation area. The team also successfully defended the registration of the arcuate trade mark at the German Federal Court for Levi Strauss. In the area of competition law the firm’s representation of Procter & Gamble in several proceedings against various large competitors around misleading consumers and unfair competition particularly stands out. The ‘brilliant’ Frederik Thiering is considered an ‘outstanding strategist who packs a punch’ and Marion Jacob is a ‘magnificant lawyer who advises at the highest level’. Both are noted for their ‘impressive knowledge and experience in trade mark law’, while Arne Lambrecht is ‘thorough’ and Michael Goldmann a ‘competition law doyen’. Sigrid Cobet-Nüse was promoted to counsel.

Hogan Lovells International LLPleaves nothing to be desired’. The team is well versed both in portfolio management and dispute resolution and has longstanding expertise in drafting demarcation agreements. The coordination of complex court proceedings, such as for Hard Rock Café International around the café of the same name but without a licence in Heidelberg, forms part the firm’s portfolio, as does advice on special forms of trade marks and product piracy. The practice expanded its work for Mars and continued to represent Peek & Cloppenburg Hamburg in several proceedings against Peek & Cloppenburg Düsseldorf regarding trade mark registrations. In competition law areas of expertise include protection against imitation, marketing and advertisement campaigns and as supplementary segment know-how protection and protection of trade secrets. Matthias Koch left for the German Federal Court and Anthonia Ghalamkarizadeh, who focuses on IP enforcement and in particular the pursuit of infringement actions on the internet, was promoted to counsel. Morten Petersenn and Andreas Bothe head the practice.

Both in trade mark and design law and competition law Klaka Rechtsanwälte provides an ‘outstanding service’. The ‘excellent trade mark and design lawyer’ Ralf Hackbarth, who is ‘strong particularly in cross-border matters’, leads the longstanding advice to BMW against Italian manufacturers and German buyers of wheel rim replicas, which requires the coordination of design law proceedings in several European jurisdictions. In another highlight the team advised Longchamp in proceedings around the relevance of traffic surveys and the purview of judicial expertise in the assessment of competitive originality and the danger of deception of origin. It also acted for the client in proceedings around the prohibition of sales of counterfeit goods permitted in non-EU countries. Carola Onken represents Comité Interprofessionnel du Vin de Champagne in an action for an injunction now at the ECJ surrounding the distribution of a Champagne-containing product. Villeroy & Boch is a client in labelling and licence law matters and another regular client in court proceedings is the Zentrale zur Bekämpfung unlauteren Wettbewerbs, the German association for combatting unfair competition. The boutique’s expertise in domain disputes was sought after by UBS, among others.

Outstanding’ Munich-based boutique Lorenz Seidler Gossel provides a ‘high level of professionalism’ and is mainly known due to its renowned work in the area of trade mark infringements, but also advises its cross-industry client base on strategic questions and on prosecution. Numerous prominent clients sought the firm’s advice on trade mark matters, such as Fred Perry, Otto and the Otto group, and ProSiebenSat.1 Media in infringement proceedings. Telefónica Germany was a client in trade mark and competition law matters in and out of court. Other highlights included the representation of a large brewery group in a dispute around geographical origin and the representation of a large Germn retail company in proceedings against a German sporting goods manufacturer regarding a figurative trade mark for sports shoes. The continued significance of portfolio management for the practice is evident in the high number of portfolio management matters: The firm not only expanded its advice on the trade mark portfolios of a TV presenter and a market leading company in the area of climate technology, but also took over the trade mark portfolio by E-Plus. Philipp Neuwald is ‘highly qualified and very level-headed advisor in all disputes’ and Siegfried Jackermeier stands out for his ‘outstanding expertise and precise advice’.

Lubberger Lehment’s trade mark and competition law practice focuses primarily on companies in the luxury cosmetics industry, but the team around the renowned firm founders Andreas Lubberger and Cornelis Lehment also assists clients in the furniture, food and publishing industries and automotive and rail sectors and also advises FinTech companies and sporting goods manufacturers. The boutique’s main office is in Berlin and is known for its handling of numerous proceedings at the German Federal Court and ECJ and provides comprehensive advice on trade mark law, from strategic advice on trade mark portfolios and the drafting of licence and operating agreements supported by the firm’s expertise in antitrust and compliance to the fight against product piracy, especially in the online retail area. The team also acts in the context of transactions and the preparation of due diligence reports and risk assessments. Benjamin Koch joined the Munich office from Baker McKenzie, while Ulrich Hildebrandt left for SKW Schwarz Rechtsanwälte.

Taylor Wessing stands out for its ‘excellent practical advice’ and ‘outstanding service’. The firm focuses on trade mark administration and associated disputes, design and domain law and competition law. A noteworthy highlight in the portfolio management area was the takeover of the trade mark portfolio by American Airlines; the EMEA-wide management is now handled via the Düsseldorf office. Wiebke Baars acted for Scotch Whisky Association in trade mark disputes around the absolute grounds for refusal of registration and indications of geographic origin, particularly also in ECJ proceedings on the regulation of spirit drinks. German fine writing instrument company Staedtler Mars sought the firm’s advice on the development of a global online shop and benefitted not only from the team’s trade mark but also its IT expertise. Another client was CHECK24 in numerous competition law disputes with competitors and consumer associates and with the firm’s design law expertise it also advised Nintendo and Alois Dallmayr Kaffee; the latter also received advice on domain law matters. The ‘very good’ team around the frequently recommended Düsseldorf-based practice head Olaf Gillert saw four partner promotions in 2017: Verena Ahmann, who is noted for her ‘skills, thoroughness and punctuality’; Stefan Fröhlich; Henry Richard Lauf and Jan Schumacher.

Baker McKenzie was able to gain various new mandates in the trade mark area, particularly with regards to portfolio management. Recent prosecution highlights of the practice led by Michael Fammler and Rembert Niebel include the representation of Hasbro for the trade mark MONOPOLY in opposition proceedings at the European Union Intellectual Property Office against the trade mark FAIRNOPOLY and sports shoes manufacturer K-Swiss in high-profile cancellation proceedings against a German figurative mark allegedly registered in bad faith, which shows five parallel stripes on a sports shoe. At the level of strategic advice the team advised several clients in the context of rebrandings and international positionings. Another client was Calvin Klein regarding a new enforcement programme for the combatting of the online distribution of counterfeit products. Also noteworthy is a matter in the technology sector regarding the protection of trade and business secrets. Benjamin Koch left for Lubberger Lehment.

Bardehle Pagenbergdelivers excellent and prompt work also under pressure’ and is noted for ‘the team’s business sense’. Besides key competencies in trade mark and competition law the practice is also strong in design law, as shown by various mandates in that area for prominent companies. Important design law clients include adidas and Nintendo; the team represents the latter in a design dispute, which is now at the ECJ. With the firm’s international orientation, it advised H&M on cross-border trade mark matters together with offices in France and Spain. Another highlight is the regular advice to Coca-Cola on trade mark registrations, in contentious proceedings and border seizure cases and the advice to Campari regarding prosecution, demarcation agreements and warnings. Head of the trade mark, design and competition law practice Claus M. Eckhartt is recommended.

Beiten Burkhardt provides ‘from pragmatic solutions to legal expertise everything that clients’ need’ and the ‘extraordinarily high level of service’ and the ‘very good consideration of economic contexts’ also add to the team’s good reputation. It is led by practice head Matthias W. Stecher and primarily advises clients in the games and sports industries with a clear focus on trade mark law. Tilmann Lührig in Berlin, who is noted for his ‘practical answers’, acts for ERGObaby Europe in several product piracy cases. ‘Experienced litigator’ Holger Weimann is ‘quick and creative in his problem solving’ and ‘confident and structured in conversation and negotiations’; Axel von Walter is an ‘outstanding lawyer and advisor, who solves problems pragmatically’; Tanja Hogh Holub, who has ‘broad experience’, and Angelica von der Decken are also recommended. Claudio G. Chirco and Katharina Mayerbacher were promoted to partner.

CBH Rechtsanwälte Cornelius, Bartenbach, Haesemann & Partner enjoys a good reputation particularly for its trade mark and competition law advice. Ingo Jung represented Victor-Group in damage claims proceedings against Deutsche Umwelthilfe around a campaign against the use of compostable carrier bags. In another highlight the firm acted for Donaldson Filtration at the Court of First Instance and the ECJ in proceedings around the preservation of corporate names and trade marks; Nadja Siebertz led the advice. Another client is cosmetics supplier Zacobi regarding proceedings at the German Federal Court on the question of international responsibility during the sale of infringing goods from stock abroad, which also involves issues around the legal exhaustion effect. Also noteworthy is the team’s work in design law: It represented IronMaxx in a dispute with Fitmart regarding the packaging design of food supplements. With the opening of the new Hamburg and Munich offices Sebastian Eble, Hannes Jacobsen, Philipp von Mettenheim and Detlef von Schultz, all previously at Preu Bohlig & Partner, joined the team. Manfred Hecker is now of counsel.

Grünecker provides ‘excellent quality of work’ and is now also a ‘go-to firm’ in the area of IP litigation. The ‘young but efficient’ team expanded its already strong portfolio practice, such as with the takeover of the German trade mark portfolios by Bulgari and the takeover of the entire portfolio by Fenix Outdoor. Contentious matters included Nicolás Schmitz’s representation of DJO Global in pan-European trade mark infringement proceedings and the team also acted for designer furniture manufacturer moooi in extensive proceedings against trade marks by mooi Deutschland. The client base also consists of numerous other companies in the luxury and fashion sector and the US technology sector. Holger Gauss, who ‘really cares about his clients’ and gives ‘hands-on’ advice ‘at the highest level’, is recommended; he is noted especially for his ‘great experience in anti-counterfeiting matters, such as measures against infringers at trade fairs¬’. Anja Franke ‘promptly solves complex IP matters with very high legal expertise’.

FPS provides ‘extremely reliable’ advice with ‘prompt responses and short decision-making paths’. The team led by Christoph Holzbach is known for its ‘excellent industry expertise’ and has particular expertise in portfolio management and contentious matters. It handled product piracy matters, especially border seizure proceedings, for ADURACELL and in competition law it advised Europe-wide leading data centre operator e-shelter facilities regarding the development of a marketing and information platform and the commercialisation of cloud services. Another highlight was advising 3 Sprouts, a Canadian manufacturer of baby and children’s products, in design and copyright matters. Other clients include Innocean Worldwide Europe, MAXON Computer and Urimat Deutschland. Katy Ritzmann and of counsel Hans-Joachim Otto left for GSK Stockmann and Ikze Cho joined Park & Lemke Rechtsanwälte. Jörg Kornbrust arrived from Knauthe Rechtsanwälte Partnerschaft.

Freshfields Bruckhaus Deringer’s practice is strongly oriented towards contractual and competition matters. Andrea Lensing-Kramer led the coordination of the global defence of Volkswagen in numerous competition law proceedings brought by competitors due to the emission of nitrogen oxide by diesel-fuelled vehicles. In trade mark law particularly the firm’s advice to software manufacturer VMWare in a dispute around open source software and the transaction-related trade mark advice to EQT in the context of the sale of BSN Medical to the Swedish company SCA stand out. Other clients include Worldwide Brands regarding the management of the global licence business and ADAC in connection with compliance advice on licence contract matters. Of continued importance is the team’s work for Mars Group in trade mark and competition law matters at and out of court. Since the closure of the Cologne office in December 2016 the practice is based in Düsseldorf.

Since the departure of Florian Geyer to Fresenius Medical Care, Heuking Kühn Lüer Wojtek has managed to re-strengthen its practice with the hire of three senior associates and three associates and at the start of 2018, the firm gained Andreas Schabenberger from Menold Bezler. In a recent highlight practice head Dominik Eickemeier represented APASSIONATA World in a trade mark and competition dispute with a minority shareholder concerning the continuance of trade mark licences, work title rights and competition rules against attempts to transfer parts of the business to another company. The team also advised COMPO Expert on trade mark demarcations of a newly formed company as the result of a demerger and Dunlopillo Deutschland in connection with trade mark takeovers by the Bettzeit group. The firm also acts as a legal emergency service at events at the Frankfurt trade fair. Other clients include Tommy Hilfiger, Viessmann Werke and Cirque du Soleil.

JONAS Rechtsanwaltsgesellschaft mbH’s strength lies in particular in trade mark management: Here a recent client was a luxury food manufacturer, which additionally benefitted from the team’s expertise on border seizure procedures and copyright matters. The firm also handles numerous trade mark infringement proceedings, such as for a surfboard manufacturer, a British tool manufacturer and under the lead of Martin Viefhues for the beeline group, which also sought the firm’s advice on design infringements. In title rights matters Nils Weber acted for a newspaper publisher in proceedings due to likelihood of confusion against a title by a third party and Karl Hamacher regularly assists the agency Saatchi & Saatchi in competition law questions surrounding advertisements for Lexus and Toyota Deutschland, including handling competition law disputes for the latter. Counsel Hanna Karin Held left for ThyssenKrupp Intellectual Property. Markus Robak was promoted to salaried partner.

With a clear focus on competition law Loschelder recently acted not only for Henkel in several summary proceedings in the area of detergents and proceedings around the takeover of product designs and features but also represented a plant manufacturer in proceedings surrounding the infringement of trade secrets. The firm furthermore advised the Federal Office of Justice in landmark proceedings concerning the involvement of litigation funding specialists in the disgorgement of profits from dispersed damages. Another client was the semi-finished goods manufacturer Krüger regarding comprehensive advice in competition and food law. Michael Loschelder, Thomas Schulte-Beckhausen and Stefan Maaßen are the key figures.

bock legal Partnerschaft von Rechtsanwälten predominantly advises clients in the fashion, watchmaking and automotive industries. The firm also represented the German subsidiary of Vodafone in competition disputes with Deutsche Telekom and Telefónica. In addition, the firm advised various well-known clients on design law and trademark law. The Swatch Group, the European Central Bank, Ferrari and Bottega Veneta are also part of the client base. Jan D. Müller-Broich is highly regarded for his ‘long-term experience’. Dominik Weiß joined Bryan Cave LLP.

Combining its ‘good knowledge of the various industries’ with a ‘very high service level’, the IP group at Danckelmann & Kerstnever wanders off the subject, unless necessary’. What is more, the firm is valued because it ‘always handles matters in a swift and meticulous manner’. Accepting mandates from across Germany, the firm has a particularly good reputation for competition law. It recently represented long-term client Deutsche Telekom in proceedings before the Federal Court of Justice regarding the ability according to competition and telecoms law to reject porting requests following the change of supplier. The firm successfully handled another case before the Federal Court of Justice, regarding a misleading advert proclaiming the availability of a particular telecoms service. The group also represented the Wettbewerbszentrale, the German centre for the protection against unfair competition, in several lawsuits against clients in the pharmacy and pharmaceutical areas. Nikolaus Konstantin Rehart is a ‘highly tactical and strategic thinker’ with the ‘ability to capture the essence of a matter, without losing sight of the details’. Jan-Felix Isele and Hans-Jürgen Ruhl are also recommended.

Eisenführ Speiser scores highly thanks to its ‘very good teams’, ‘extremely appropriate legal advice’ and a ‘keen sense of clients’ needs’. In trademark law, the IP boutique extended the legal support of the Asklepios group brands to its entire brand portfolio. For cleaning and care products manufacturer Werner & Mertz, the firm coordinates the product portfolio protection regarding all aspects of design law, a service that is part of the firm’s general legal support to the client, including patent law matters. It also represented furniture manufacturer Asco Möbel in proceedings regarding design law. In addition, the team advises numerous clients in the engineering industry, such as Stiebel Eltron, which the firm successfully represented in infringement proceedings before the European Court of Justice. Sennheiser Electronic retains the firm to cover its complete product portfolio in terms of trade mark and competition law aspects. Julian Eberhardt is recommended.

Friedrich Graf von Westphalen & Partner offers clients an ‘excellent level of service’ as well as ‘the highest level of expert knowledge, reliability, an efficient way of working, and fast implementation of decisions’. With its headquarters located in Freiburg, the team gives wide-ranging advice in trade mark and competition law. However, the group has specialist knowledge in competition law in particular; for example, Morton Douglas, is an expert in medical device and pharmacy law who advises clients on the drafting of licence agreements. In a recent highlight, Norbert Hebeis represented the Wettbewerbszentrale in litigation regarding a misleading presentation and name of a beer. He also represented Wilkinson Sword in a case of misleading advertising and product description. Local partner Eva Kessler is recommended for her ‘negotiating skills and profound knowledge of the market’. Hans-Georg Riegger provided legal representation in numerous competition proceedings.

Hoffmann Eitle advises on the entire spectrum of trademark and competition law. While particularly active in Munich, with a team headed by Wedig von Osten-Sacken and Michaela Ring, the firm also has competition expertise in Dusseldorf. The group is active in the area of prosecution, advising the likes of PETIT BATEAU, as well as in litigation, an area in which Burton Snowboards Europe is a client. In another highlight, the firm advised Italian design company Scab Giardino on an alleged infringement of design law in the furniture sector, which also required the group to coordinate proceedings in Milan. The team is particularly well positioned to advise Anglo-American and Chinese clients.

Hamburg-based boutique firm KNPZ Rechtsanwälte is particularly active handling litigation and contract design in the trademark and competition area, but also advises comprehensively on the drafting of contracts for cooperation agreements and on distribution law issues. The group also advises strategically on building and managing brand portfolios, on due diligences in transactions and matters related to contractual covenants. Clients are mainly German and international corporations, while the firm acts also for medium-sized companies and start-ups. Christian Klawitter is a key figure.

Noerr’s group ‘works perfectly together as a team’ and consists of ‘pragmatic problem solvers and strategy developers’ whose ‘service level is at the highest level’; the practice group co-led by Tobias Dolde, who leads the Alicante office, and Ralph Nack advises ‘honestly and competently’ and has a ‘good overview of relevant competitors’ thanks to its ‘broad industry knowledge’. Recent highlights include assisting Sony Pictures Animation with litigation strategies and with a trade mark licence agreement pertaining to multiple support contracts for the use of the emoji brand portfolio prior to the merchandising programme for The Emoji Movie. The group also acted for BVB Merchandising on brand matters. Christiane Zedelius is now of counsel. Associated partner Sandra Sophia Redeker and senior associate Sascha Pres have announced their departure to SKW Schwarz Rechtsanwälte.

Despite the departure of Detlef von Schultz, Sebastian Eble, Philipp von Mettenheim and Hannes Jacobsen to CBH Rechtsanwälte Cornelius, Bartenbach, Haesemann & Partner, Preu Bohlig & Partner succeeded in winning several new clients: For example, satirist and television presenter Jan Böhmermann retained the firm in January 2017 for trade mark and competition matters. Another highlight is the regular assistance provided to Fossil Europe with trade mark, design and competition law, with border seizures and distribution law issues particularly important. Other clients in the infringement proceeding area are automotive supplier Rausch & Pausch and textile retailer NKD. Astrid Gérard and Andreas Haberl are the key figures. Oliver Scherenberg left the firm to found the spin-off Scherenberg Legal & Licensing.

SKW Schwarz Rechtsanwälte’s ‘very good’ practice group continues to grow with the addition of associated partner Sandra Sophia Redeker and senior associate Sascha Pres from Noerr in late 2017. Areas of activity include portfolio management as well as infringement proceedings, with border seizure procedures a particular focus. As well as continuing to act for Blackberry in trade mark law and border seizure proceedings, advising football association Bayer 04 Leverkusen on counterfeit jerseys and merchandising articles was another highlight. Ulrich Hildebrandt, who came from Lubberger Lehment in early 2017, advises Coty on strategic trade mark matters. The ‘technically excellent and efficient’ Dorothee Altenburg is recommended along with ‘excellent’ pratice head Magnus Hirsch, who offers ‘exceptionally good advice’.

Hamburg-based boutique firm Schultz - Süchting handles not only trade mark and competition law, but also related pharmaceutical law as well as copyright and media law matters. The client base also includes numerous well-known players in the fields of fashion and cosmetics, publishing and the pharmaceutical industry. Lars Kröner is recommended.

Vossius & Partner advises on prosecution-related trade mark matters with litigation work forming an increasingly significant portion of the practice. Paul Kretschmar assisted MAN Truck & Bus with a brand portfolio analysis and the development of a global brand strategy, along with related prosecution matters, and the co-ordination of a global design protection system for new truck and bus models. In other work, Mathias Kleespies and Simone Schäfer acted for Perrigo Pharma International in a trade mark infringement proceeding against a German manufacturer of e-liquids; the subject matter concerned the differentiation between e-cigarettes and smoking cessation products. Advising the German Federal Association of Sport Article Industry on advertising and sponsorship matters for athletes in preparation for the Olympic Games constituted another highlight.

Dentons was able to strengthen its trade mark and competition law team by adding Stefan Dittmer from DLA Piper, who now jointly heads the team with Constantin Rehaag. With new of counsel Helmut Brandau, the practice also gained expertise in the white-collar crime space. Recent highlights include advising a large pharmaceutical company on trade mark and white-collar crime matters for countering the sale of counterfeit medicine, and assisting a market-leading online retailer with matters pertaining to the distribution of branded products.

In the past year, DLA Piper was able to attract a number of new clients such as Bayer Intellectual Property; the company has been receiving advice on the use of third-party trade marks as part of a product launch in ten different jurisdictions. In other significant work, the team represented Coty in several prosecutions, and advised the publisher Heinrich Bauer on a number of disputes pertaining to labelling requirements and the offer of extra publications. Stefan Engels and Thilo von Bodungen jointly head the team. Competition lawyer Stefan Dittmer moved to Dentons.

Stuttgart-based law firm Lichtenstein, Körner & Partner, which specialises in intellectual property and commercial law, is particularly active in trade mark law: as a highlight, the team represented the Swiss Ethical Coffee Company in a cancellation proceeding against a Nestlé 3D trade mark. In other work, a client received assistance with its national and cross-border co-ordination of trade mark proceedings in Russia and India, while a different client instructed the team to act in design law proceedings pertaining to the design protection of a shoe sole. Kerstin-Gründig Schnelle is recommended.

Rospatt Osten Pross provides full-service trade mark law advice, spanning from providing strategic advice on the development of trade marks and representation in prosecution and litigation proceedings to portfolio administration and licence agreement draftings, while also handling competition and design law matters. Recently, Rüdiger Pansch acted for the pharmaceutical company Almirall in trade mark-related defence proceedings covering parallel imports from medicinal product importers, and Stephan von Petersdorff-Campen represented Paul Green in proceedings before the German Federal Court (BGH) pertaining to the right of prior use of trade marks. In design law, the team acted for Thonet and Lock & Lock; the latter instruction was co-led by Henrik Timmann.

Squire Patton Boggs significantly expanded its trade mark and competition law practice by adding Reinhart Lange, Christofer Eggers and Eva Schalast from WilmerHale. Recent highlights include advising the Zippo Manufacturing Company on licensing agreements alongside trade mark and domain law matters, and providing trade mark and competition law advice to Deutsche Bank. In other work, the team acted for a German scientific publishing house in a global trade mark dispute. The team’s client roster also includes Zott, LSG Lufthansa Skychefs and the international luxury goods group Richemont.

With a specialism in IP, Düsseldorf-based boutique Arnold Ruess Rechtsanwälte PartmbB provides strategic advice on the development of trade mark and design portfolios and assists with the conception of advertising campaigns and branding strategies. Acting for clients in litigation and handling licensing matters are also part of the firm’s offering. Renowned team head Peter Ruess is the main contact.

Since January 2017, the trade mark and competition law group at Eversheds Sutherland has been led by Tobias Maier, who was made partner in May 2016. The team, which has expanded its international scope significantly by merging with the US law firm Sutherland, scores highly with clients due to its ‘quick response times and good industry knowledge.Axel Zimmermann advised a private-label company in the food sector on counterfeiting proceedings. Other clients include Aspen Pharma, Avon Cosmetics, the Kering Group and Starbucks.

Hamburg boutique Fechner Rechtsanwälte stands out for its ‘above-average commitment’ and ‘highly professional work’. The team primarily advises clients from the advertising industry and is noted as being able ‘to manage the restless and fast-moving advertising business with confidence’; Georg Fechner in particular ‘knows the industry like no other in Germany’ and has ‘a good economic understanding’. Key areas of expertise include advising on transactional trade mark matters and strategic trade mark developments as well as assisting clients with the administration of portfolios and representing them in infringement proceedings. Birte Lorenzen is singled out for her ‘entrepreneurial and strategic thinking’ and is praised as ‘always being ready to go the extra mile’.

GSK Stockmann noticeably expanded its trade mark and competition law team by welcoming Katy Ritzmann from FPS. In recent highlights, the team represented Ryanair in contentious key word advertising and domain law matters, and has been providing ongoing advice to the Academy of Motion Picture Arts and Sciences on rights concerning the Oscar award with a focus on product piracy. ‘Client-oriented’ team head Jörg Kahler ‘provides efficient, practical and business-oriented advice’ and ‘is always eager to advance the client’s business’.

Hoyng Rokh Monegier is ‘definitely to be recommended’. The team led by Thomas H. Schmitz and including counsel Sandra Stolzenburg-Wiemer stands out for its ‘very good industry knowledge and experience in the cosmetics sector’. The team advised the hair and toiletry manufacturer Dr. Wurt Wolff on trade mark and competition law proceedings, while assisting the sanitary facility manufacturer Mepa with design law matters.

Luther Rechtsanwaltsgesellschaft mbH expanded its client roster with new client The Nomad Company, a Dutch outdoor company, which has been receiving advice on trade mark and competition law matters, while the team has been representing long-term client Daniel Wellington in several counterfeiting proceedings. The group, which is jointly led by Geert Johann Seelig and Detlef Mäder, is also experienced in handling distribution law work, which led to several instructions from Harley Davidson, among other clients. In other work, it handles trade mark portfolio instructions from Imperial Tobacco, Kamps and valve manufacturer VAG Holding, while the latter client also received advice on the reorientation of its global trade mark strategy.

Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB is ‘particularly well versed in handling application procedures’. With a clear focus on prosecution-related work, the team acts for a number of well-known clients, who regard the team’s ‘good mix of patent and trade mark lawyers as a particular bonus’. Highlights included assisting ACO Severin Ahlmann with various contentious and non-contentious matters pertaining to strategy development and portfolio administration. Oliver Nilgen is an ‘experienced trade mark lawyer’.

Menold Bezler is experienced in the administration of trade mark portfolios, and, in recognition of this strength, received new instructions from Rieker Holding and the SACS BOYSEN AEROSPACE Group to manage their portfolios. In the contentious space, the team represented Daimler in litigation against Deutsche Umwelthilfe covering the alleged use of incorrect statements in its C-Class advertising campaign. Also in litigation, the team acted for new client Sparda-Bank Baden-Württemberg in several competition law proceedings against Sparkasse Karlsruhe-Ettlingen, while the Centre for Protection against Unfair Competition in Frankfurt am Main instructed the group to assist with a proceeding, partly held before the ECJ, concerning the inadmissibility of extra charges for 0180-numbers. Andreas Schabenberger joined Heuking Kühn Lüer Wojtek at the start of 2018.

Oppenländer Rechtsanwälte is noted for its ‘quick response times, good industry knowledge and hands-on advice’ but also scores highly with clients for its ‘uncomplicated co-operation’. Several health sector clients such as GlaxoSmithKline Consumer Healthcare and a large mail-order pharmacy rely on the team’s advice. Other clients including the Reckitt Benckiser Group retained the team to assist with supplier relationship matters and competition law issues. In design law, the team acted for an industrial lighting manufacturer. Timo Kieser is recommended.

Attracting praise for its ‘practical and business-oriented advice and its strong technical expertise’, the team at von Boetticher Rechtsanwälte Partnerschaftsgesellschaft mbB is also noted for its ‘good knowledge of the Berlin medical technology start-up scene’. It handles various trade mark portfolios and is experienced in litigation. Recent work includes assisting Aachenmünchener Versicherungen with its international trade mark portfolio, and providing regular advice to a mobile accessories provider on licensing and distribution law matters. Other clients include Cosmos Versicherungen, a fruit juice manufacturer, and Leo Pharma. Angelika Hoche is ‘experienced and reliable’ and her ‘understanding of corporate goals complements her knowledge perfectly’. Solicitor Holger Alt, who is based at the Berlin office with newly promoted partner Matthias Bergt, provides ‘well-thought-through recommendations’and is praised for his ‘excellent contract drafting skills’.

White & Case LLP predominately deals with competition law work but can also refer to a number of highlights in the trade mark sector: team head Markus Mette advised the Anschutz Entertainment Group on the strategic development of its trade mark Eisbären Berlin, and provided Printus with trade mark, competition and copyright law advice. Penta Hotels received assistance with the development of its trade mark portfolio in over 60 jurisdictions. Other clients include Henkel and Lichtblick.

Since March 2017, WilmerHale’s trade mark and competition law practice has been under the leadership of Vanessa Wettner, who joined the firm from Hengeler Mueller as a response to a number of significant losses: former practice head Reinhart Lange, Christofer Eggers and counsel Eva Schalast joined Squire Patton Boggs, while Klaus Schubert and Julia Goetz moved to K&L Gates LLP. The team acts for clients across a range of industries but has specialist expertise in the luxury fashion and consumer goods industries as well as the digital sector. As a highlight for the latter, the team handled a number of competition law-related matters for Facebook.

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Legal Developments in Germany

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  • LAG Düsseldorf: Dismissal with immediate effect valid in response to threat

    Anyone who seriously threatens their employer or superior should expect to be dismissed with immediate effect. This was confirmed by a ruling of the Landesarbeitsgericht (LAG) Düsseldorf [Regional Labour Court of Düsseldorf] from June 8, 2017 (Az.: 11 Sa 823/16).
  • Tax evasion: Only voluntary disclosure affords protection from severe penalties

    Anyone who has been caught for tax evasion should expect to be faced with severe penalties. Voluntary disclosure is the only way of returning to a state of normal tax affairs and avoiding penalties.
  • GSK Update: AIFM Marketing in Germany - The clock is ticking for U.S. and other non-EU fund managers

    Our GSK Update informs about the impact of recent German investment fund legislation (UCITS V Implementation Act) for AIF managers, who are not domiciled in the EU (“non-EU-AIFM”) and who seek to market AIF shares in Germany in accordance with applicable German investment fund law under the EU-AIFM Directive (2011/61/EU).
  • GSK expands Luxembourg presence with a new tax partner

    Opened at the beginning of March 2016, GSK Stockmann + Kollegen continues to expand its Luxembourg office. Mathilde Ostertag recently joined the Luxembourg team of Equity Partners Dr. Marcus Peter, Andreas Heinzmann and Dr. Philipp Mößner as Local Tax Partner.
  • EIA - Strengthening the role of the public

    Among other things, the recent amendment to the Environmental Impact Assessment Act has broadened the rights of (what is termed) the "affected public". The affected public consists primarily of various citizens' initiatives pursuing environmental or public-health purposes. It may for instance file an appeal against a negative decision at the screening stage (i.e., a decision according to which the given project does not require the issuance of an EIA report), and seek its annulment in court. The affected public has been granted a stronger voice also in subsequent procedures in which the fate of a building project is being decided: zoning proceedings and the proceedings on the issuance of a building permit. Taken together, these legislative changes may make it more difficult to implement projects which require an EIA report; in particular, the length of permission proceedings may be substantially extended.
  • New Top Level Domains – Noerr expert warns against trademark infringements

    On June 13, the Internet Corporation for Assigned Names and Numbers (ICANN) published the names of those who have applied for a new top level domain the ending of which may be geographic, such as "munich", industry identification such as "insurance" and even all trademark names and company descriptions such as "canon" and "adidas".
    - Noerr
  • No obligation to set up filtering systems in order to prevent copyright violations

    ECJ, decision of February 16th, 2012, ref. C-360/10 – SABAM
  • Further ECJ Ruling concerning NGO’s right of action under German environmental law

    For the second time within a short period of time, the non-governmental organisations right to challenge administrative decisions under German law is going to be subject to the jurisdiction of the European Court of Justice (ECJ). In January 2012, the German Supreme Administrative Court (Bundesverwaltungsgericht) referred a case to the ECJ for a preliminary ruling concerning the NGO’s right of action.
  • Lessons in Cross-Border M & A Transactions

    The fundamental advice for international business transactions is obvious and easy to understand: different countries have different laws, business habits and cultures. These differences may range from minor nuances, such as lengthy French business lunches or unusual Spanish office hours, to significant legal roadblocks, such as strict European employment laws.
  • Priority rental rights in insolvency

    Parties to rental contracts for commercial premises often agree priority rental rights. In practice, this concept is used to cover a whole series of legal structures. These range from fixed options for the tenant to a promise made by the landlord as a business policy that if any additional premises become available, they will be offered to the tenant. In 2010 the Berlin Court of Appeal issued a ruling on such priority rental rights in insolvency; the decision has recently been published.

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