Intellectual property in Austria
Recognised for its ‘hands-on approach’ and ‘quick turnaround and responsiveness’, Dorda Rechtsanwalte GmbH’s ‘extremely competent’, ‘highly specialised’ and ‘very skilled and deep’ IP team advises on domestic and international copyright, trade mark, unfair competition and patent law matters, with additional capabilities in the IT sector. The ‘impressive’, ‘extremely talented’ and ‘focused’ Axel Anderl heads the team in a ‘practical, very effective’ manner. He and ‘very accurate and reliable’ attorney Andreas Seling acted for McDonald’s in a trade mark infringement and unfair competition case against supermarket chain Lidl, preventing it from using copy-cat packaging. Bernhard Heinzl was promoted to junior partner in October 2017; he and Anderl act for a leading Austrian bank, Erste Bank, in trade mark disputes.
GEISTWERT’s ‘partner-only approach’ is valued by clients and considered a key strength and unique selling point, leading to the ‘utmost efficiency and communication transparency’. Praised for ‘his availability’, ‘his business and industry insights and his communication skills', Alexander Schnider ‘lives and breathes software development, also in the form of complex computer and video games’. ‘Extremely experienced patent litigator’ Constantin Kletzer provides ‘effective and to-the-point’ advice, in particular in pharmaceutical patent cases, as does Rainer Schultes, who also advises on design matters in the automotive sector, trade marks and unfair competition. Regarded as ‘a brilliant lawyer’, Juliane Messner has ‘exceptional experience in IP-driven transactions and licensing’, and is appreciated by clients for her understanding of the ‘value of IP rights – be it trade marks, licence contracts, patents or others’, not just from the ‘legal side, but also on the business side’. Max Mosing specialises in trade mark matters with a focus on EU trade marks, among other areas.
The ‘very focused and very efficient’ team at Schoenherr (Schönherr Rechtsanwälte) covers all aspects of IP law, on the contentious as well as the non-contentious side, ranging from trade mark, design, patent, copyright and know-how protection to unfair competition work. ‘Recognised authority’ Guido Kucsko has acted for major players in the IT industry for many years on copyright levies and reprography levies against collecting societies, while ‘empathetic listener’ Christian Schumacher acted for an Austrian beer producer in China in the co-ordination of a trade mark enforcement and defensive action. Recently promoted partner Michael Woller and the ‘ambitious’ and ‘very responsive’ Dominik Hofmarcher have been defending new client Uber in an unfair competition case before the Austrian Supreme Court.
Schwarz Schönherr Rechtsanwälte OEG
IP boutique Schwarz Schönherr Rechtsanwälte OEG handles contentious and non-contentious design competition, patent and copyright matters with a special focus on trade mark and unfair competition work. In addition to regularly advising long-standing client Novartis on trade mark prosecution, Thomas Adocker, who provides ‘exceptional hands-on support’, and name partner Georg Schönherr are acting for generic drug producer Sandoz and Becton Dickinson, a leading injection needle manufacturer, in substantial patent litigation lawsuits. The team also manages Starbucks' trade mark portfolio, and Markus Grötschl represents a host of well-known fashion brands, such as Giorgio Armani, Christian Dior, Gucci and Tommy Hilfiger, in trade mark infringement, anti-counterfeiting and unfair competition proceedings.
Specialist IP firm Wiltschek Rechtsanwälte, as it has been known since 2018, handles the full spectrum of IP work, from unfair competition law and trade marks to design and copyrights. The team advises clients operating in an array of industry sectors, including manufacturing, healthcare, industrial engineering and financial services. However, particular attention is placed on the life sciences sector. Lothar Wiltschek and David Plasser are the key contacts.
CMS’ offering in the IP field is comprehensive and includes contentious and non-contentious work in trade marks, patents, copyright and unfair competition law. Equally wide ranging is the team's industry coverage, with domestic and international clients from the media, sports, pharmaceutical and medical device, biotechnology and IT sectors. Team leader Egon Engin-Deniz is assisting Marriott with trade mark cancellation proceedings, and is acting for Falco Privatstiftung in copyright litigation against an individual claiming co-authorship of various Falco songs. Gabriela Staber, who was promoted to partner in January 2018, is representing pharmaceutical company Johnson & Johnson in trade mark, design and unfair competition proceedings regarding its medical devices.
Freshfields Bruckhaus Deringer
Active in numerous industry sectors, including food and drink, healthcare, pharmaceuticals, telecoms and transportation, Freshfields Bruckhaus Deringer’s IP department specialises in cross-border unfair competition, trade mark, trade secret, know-how licensing and transactional work. Team head Christof Pöchhacker advised new client LG on the IP elements of its acquisition of the Austrian automotive supplier ZKW Group. Moreover, he advised another new client, a global car manufacturer and mobility services provider, on co-operation with other players in the area of self-driving cars, particularly focusing on the division and protection of IP rights and know-how, including liability and risk. On the contentious side, Pöchhacker acted for Backhausen in a copyright and unfair competition dispute with a Czech company over the improper use of Backhausen’s photographs for advertising purposes. Laura Adriana Grinschgl joined the firm as an associate in February 2018
Noted for their ‘wealth of experience in litigation cases, particularly in the life sciences sector’, the ‘skilled and experienced patent litigators’ at Gassauer-Fleissner also act in trade mark, copyright, trade secrets and design disputes. In the non-contentious space, the team manages trademark portfolios for domestic and international clients, with additional expertise in IT contract drafting for the transfer of technology. The ‘immensely knowledgeable’ Christian Gassauer-Fleissner heads the team with the ‘very good’ Dominik Göbel, who ‘gets on top of every technology very quickly’ and for whom ‘no legal scenario is too complicated’.
With a particular focus on litigation, Wolf Theiss Rechtsanwalte GmbH & CoKG’s IP team handles a wide range of IP work for clients in Austria and abroad, including patents, copyright, design rights and unfair competition, covering numerous industries such as life sciences, technology and retail. Owing to its additional IT capabilities, the team is also well equipped to advise on online IP matters. Department head Georg Kresbach defended YouTube in injunction proceedings brought against it for alleged copyright infringement and unfair competition, arguing that YouTube is not liable as a host provider. He is also acting for new client PopSockets, an American company manufacturing innovative extensible smartphone stands and complementary mounts, in patent, trade mark, design infringement and unfair competition litigation against various Austrian and Romanian retailers. Well-known German DIY home improvement retailer OBI is also among the practice's clients. Roland Marko is another key team member.
A large part of Binder Grösswang’s IP practice revolves around non-contentious and contentious trade mark work, entailing the registration and management of worldwide trade mark portfolios, as well as related infringement proceedings for a diverse range of industry sectors, such as telecoms, luxury goods, food and entertainment. IP transfer and licensing work and IP due diligences are also key areas of activity, as is advice on unfair competition matters, including lawsuits. ‘Highly knowledgeable’ team head Ivo Rungg has ‘great expertise’ and successfully assisted Hypo Vorarlberg Bank on the registration of a sound trade mark. Hellmut Buchroithner is recommended for his ‘practical approach’. Philipp Spring joined the firm as a senior associate in the second half of 2017.
Trade mark litigation and advice on trade mark portfolio management are the cornerstones of Brauneis Klauser Prändl Rechtsanwälte GmbH’s IP practice, in particular for clients in the luxury goods sectors, including cosmetics, fashion and premium alcoholic beverages, but the team also handles copyright and unfair competition matters. Team head Martin Reinisch is acting for Spirits International in a long-standing dispute spanning across multiple jurisdictions regarding trade marks for the iconic Stolichnaya and Moskovskaya vodka brands in Austria. The firm also acts for long-time client and producer of cosmetic articles Shiseido/BPI in trade mark infringement and anti-counterfeiting cases.
Herbst Kinsky Rechtsanwalte GmbH
Besides its expertise in unfair competition, most notably in the pharmaceutical advertising area, trade mark and copyright matters, Herbst Kinsky Rechtsanwalte GmbH’s IP team is also acknowledged for its licensing work in the startup biotech and life sciences sector. Experienced team head Sonja Hebenstreit defended new client Lifecare Essentials in a trade mark violation case against Red Bull regarding a nutritional supplement. She also regularly advises pharmaceutical giant Gilead Sciences in unfair competition matters.
Valued for its ‘fast response times’ and ‘broad technical knowledge’, ‘service-oriented’ and ‘customer-focused’ IP boutique ABP Anwälte Burger & Partner Rechtsanwalt GmbH provides ‘profound patent applications’ expertise alongside other patent-related work, and advises on trade mark matters in the contentious and non-contentious spaces. The team consists of Hannes Burger, who acted for Rosenbauer International in a patent infringement case; Clemens Ofner, who has a ‘high negotiating competence’; and Katarina Casals Ide.
As well as focusing on the IP elements of transactions, Eisenberger & Herzog deals extensively with trade mark matters and work that straddles IP and unfair competition law. Department head Andreas Zellhofer acted for long-term client Microsoft regarding software licensing and service agreements. The recommended Helmut Liebel advised new client Samsung on its investment in Austrian high-tech company TTTech, with the due diligence exercise aimed particularly at all IP-related licensing and co-operation agreements, as well as TTTech’s IP portfolio generally.
With ‘high analytical competence’, ‘enormous specialist knowledge’ and a strong emphasis on IP litigation work, Graf & Pitkowitz’s team is adept at handling patents, unfair competition and trade mark matters for domestic and international clients, particularly those active in the life sciences field. Valued for their ‘convincing sovereignty in critical negotiation situations in court’, practice head Claudia Csáky and Ferdinand Graf are acting for new client KTM Fahrrad. Csáky is also representing renowned watch manufacturer Daniel Wellington in a counterfeiting case.
Taylor Wessing Austria’s team is active in all areas of contentious and non-contentious IP law in a variety of industry sectors, including furniture, food and technology. Practice co-head Martin Prohaska-Marchried specialises in unfair competition litigation, trade mark, design rights and copyright law. He advised Orange in a complex unfair competition and trade mark violation dispute, which was settled. Prohaska-Marchried also successfully represented Eternit Austria in a case seeking a declaration of invalidity of a community design. Well-known new clients include Continental and Sanpellegrino. Dieter Natlacen is the other co-head.
Baker McKenzie • Diwok Hermann Petsche Rechtsanwälte LLP & Co KG covers the full spectrum of contentious and non-contentious IP law, spanning across design rights, patents, copyright and trade secrets, frequently acting for domestic and multinational clients in the IT, consumer and luxury goods industries. The firm is also adept at handling big trade mark portfolios and unfair competition matters in the cosmetics, household goods, pharmaceutical and clothing sectors. Team heads Lukas Feiler and Martina Grama advised Swedish game developer THQ Nordic on its acquisition of Koch Media, specifically on questions concerning the existence and validity of trade marks.
Cerha Hempel’s IP team handles a range of trade mark work, including trade mark opposition and cancellation as well as trade mark protection and portfolio management. Mark Krenn regularly advises McDonald’s on trade mark infringement matters, and also takes care of its entire Austrian trade mark portfolio. Senior attorney Katharina Majchrzak, who joined the firm in November 2017, has particular expertise in unfair competition, copyright and design right matters.
Trade marks are a significant area of expertise for Eversheds Sutherland | Stolitzka & Partner RAe OG’s IP team, which also handles patents and copyrights. The practice acts from clients from a wide range of industries, such as clothing (where clients include shoe companies Legero Schuhfrabrik and Think Schuhwerk), pharma and life sciences, as well as film and media. Aurelius Freytag is the team head.
KWR Karasek Wietrzyk Rechtsanwälte GmbH
The ‘most knowledgeable’ IP team at KWR Karasek Wietrzyk Rechtsanwälte GmbH has substantial proficiency in the contentious space, specifically in trade mark, design, patents and unfair competition matters. On the non-contentious front, in addition to advising on IP-related licence and acquisition agreements, the firm assists international clients with the management and positioning of large trade mark portfolios. Praised for her ‘to-the-point’ advice, ‘always outstanding’ Barbara Kuchar leads the team, and successfully acted for a pumpkin seed oil producer in trade mark cancellation proceedings before the European Court of Justice in Luxembourg.
Lansky, Ganzger + Partner (LGP)
Lansky, Ganzger + Partner (LGP) is well versed in advising clients in the media, publishing and entertainment industries on trade mark and copyright matters. Other fields of activity include patents and unfair competition. Team head Gerald Ganzger advised gambling company Casinos Austria on trade mark law and know-how protection.
PENDL MAIR Attorneys at Law
Providing ‘always accurate’ legal advice, IP boutique PENDL MAIR Attorneys at Law has a committed trade mark practice, but also deals with copyright and patent matters. Name partner Rudolf Pendl is an ‘excellent lawyer’ with an ‘appreciative personality’; he advised Dr Lhotka Organic Products on trade mark strategy and protection, among other things. The ‘very experienced’ Gerald Mair is a ‘very good trade mark strategist’ and has ‘much knowledge about intellectual property’; he acted for Swarco in trade mark conflicts, as well as other IP matters such as patents and designs. The ‘efficient’ and ‘very engaged’ Martin Walser is valued for his ‘good knowledge of law and practice’.
Saxinger, Chalupsky & Partners Rechtsanwälte GmbH (SCWP Schindhelm)
With offices in Wels, Lenz and Vienna, Saxinger, Chalupsky & Partners Rechtsanwälte GmbH (SCWP Schindhelm) handles a variety of IP work, from trade marks and patents to transaction-related IP work involving know-how transfers and licensing agreements, while clients also benefit from the team’s expertise in internet-related IP matters. The team, which is led by Maximilian Gumpoldsberger and Michael Pachinger, advised SIA Social Impact Award on the acquisition and administration of the EU trade mark Social Impact Award from Vienna University of Economics and Business, which included the drafting of the trade mark transfer agreements and registration of the transfer.
‘Offering a comprehensive IP service with a particular focus on trade mark and copyright-related advice and transactional advice’, Schindler Attorneys’ ‘commercial and solution-oriented' IP team has ‘impressive knowledge and long-standing experience in IP law’. ‘Highly recommended’ ‘all-rounder’ Julia Kusznier, who has headed the IP team since February 2018, advised LexisNexis on its trade mark strategy, particularly regarding new innovative products.