Trade marks and unfair competition in Germany
Bird & Bird provides advice at ‘the highest technical level’ on the full spectrum of trade mark and competition law and is noted for its ‘ability to adapt to clients’ needs’. The firm has expanded its trade mark and design portfolio management practice, also at an international level, which simultaneously has meant a growth in advice on international projects. The sizeable team includes the renowned Richard Dissmann, who recently represented a multinational retail company in a competition law and design law dispute concerning shoe models. Joseph Fesenmair, who alongside counsel Roman Brtka and senior counsel Franz Gernhardt is recognised for his ‘excellent expertise’, handled several matters for Audi, including representing the client in multiple proceedings at Higher Regional Courts in the defence of trade mark, domain and design rights, and acting in several proceedings against Deutsche Umwelthilfe (German environmental relief) regarding the requirements of the German energy labelling ordinance for cars. High-profile clients include Fendi, Deutsche Telekom and Phillip Morris. Key figures in the team, which is led by patent law expert Christian Harmsen, also include Markus Körner, Uwe Lüken and Niels Lutzhöft; the practice is very visible in the market at partner level, but is also strong at counsel and senior counsel level with Sebastian Fischoeder, Mascha Grundmann and Thomas Urband. Jana Bogatz joined D Young & Co LLP as partner in October 2018.
Boehmert & Boehmert
At Boehmert & Boehmert, a ‘professional’ team ‘belonging to the top-segment’ of IP lawyers provides ‘an excellent service level’ with ‘profound personal bonds with the client’. The IP boutique is known for its expertise in strategic advice, both in the context of trade mark and design law, but also has strength in contentious matters. The ‘very competent’ and ‘efficient’ Rudolf Böckenholt advised cigar and cigarillo company Arnold André on the complete overhaul of its market presence in terms of trade mark, competition and tobacco law. Jan Bernd Nordemann represented the federal association of German insurance brokers Bundesverband Deutscher Versicherungskaufleute in landmark proceedings concerning reporting and advisory requirements of comparison portals. A highlight in the parallel import sector was the representation of Jack Daniel’s Properties in an action and injunction procedure against a parallel importer of collector’s editions. Christian Czychowski, Carl-Richard Haarmann, Malte Nentwig, Axel Nordemann and Volker Schmitz-Fohrmann are also key contacts.
CMS has longstanding experience in contentious matters and in the development and management of portfolios. With eight offices across Germany, the practice, which is led by Thomas Manderla in Düsseldorf and Jörn Witt in Hamburg, stands out for its large geographical presence, but also for its expertise at the intersection with drug advertisement law. The trade mark practice has an excellent reputation in particular, not least due to the presence of Gordian Hasselblatt. Recent highlights include Cologne-based Heike Blank’s representation of BayerVital in a multitude of competition and drug advertising law disputes and Nikolas Gregor acting for Unilever in opposition proceedings against the registration of the trade mark Nivea-Blau by Beiersdorf. A key mandate in the healthcare sector was acting for Eli Lilly in several matters in the fight against piracy, including border seizures, as well as ongoing advice on trade mark and competition law. Heralt Hug advises the Gewandhaus in Leipzig on labelling law questions and trade mark portfolio management. Other clients include August Storck, L’Oréal Deutschland and Leifheit.
Gleiss Lutz ‘always gives advice under the consideration of the economic situation of the company’. The ‘high-quality service’ and ‘deep expertise’ also contribute to the practice’s good reputation under Berlin-based Stefan Weidert. The firm covers both contentious matters and portfolio design, including advice on international trade mark strategies, and due to its full-service approach is able to offer clients ‘an all-round care-free package also in matters transcending IP’. Andreas Wehlau in Munich represented Blizzard Entertainment in an action regarding the distribution of a cheat programme for the game Overwatch, while Weidert successfully acted for the German Federal Institute for Risk Assessment in proceedings at the Higher Regional Court in Cologne surrounding the publication of the client’s ratings. Merck, Hansgrohe and Tigercat also sought the firm’s advice. The ‘renowned’ Stefan Völker is the key contact in the Stuttgart office. Counsel Alexander Molle, who also handles matters at the intersection with IT law, is also recommended.
Hamburg-based IP boutique Harmsen Utescher belongs to the most established firms on the market. Portfolio management is a particularly big focus, but the team also has longstanding experience in the defence of trade marks at courts and at the authorities. Karin Sandberg defended Bell in preliminary ruling proceedings at the ECJ around the interpretation of EU regulations regarding geographical indications, specifically the amendment of the specification Schwarzwälder Schinken (Black Forest ham) so that the cutting and packing of the product also takes place in the area of origin. In a highlight relating to EU law, Martin Kefferpütz represented Ferrero in proceedings now at the EJC surrounding the question of the nullity of a community design due to the rights to an earlier trade mark. Till Lampel acted for Roxtec International in a dispute at the Higher Regional Court in Hamburg concerning the protection of trade marks in the sealing solutions sector. Rainer Kaase successfully secured the enforcement of the registered trade mark Immunostad for Stada at the EJC. Automobiles Citroën, Intersnack and Jack Wolfskin are among its other clients.
Harte-Bavendamm Rechtsanwälte’s ‘extraordinarily good’ IP experts provide ‘first-class advice’ and ‘a very high-service level’ with ‘very high responsiveness and a risk awareness’. The team’s combination of ‘an extraordinary business sense and outstanding industry expertise in the clients’ sectors’ makes the boutique a ‘leading address’. In addition to expanding its portfolio management by gaining new clients in the pharmaceutical area, the firm also strengthened its dispute practice, both in trade mark and design infringement proceedings and unfair competition law matters. Founding partners Karolina Schöler and Henning Harte-Bavendamm successfully defended Procter & Gamble on appeal at the Higher Regional Court in Stuttgart against Wilkinson regarding advertisement with test results of the consumer organisation Stiftung Warentest. ‘Brilliant lawyer and analyst’ and ‘extraordindary litigator’ Michael Goldmann is also recommended for his ‘excellent pleadings’. Frederik Thiering and Marion Jacob ‘are extremely experienced in trade mark law’ and ‘always achieve the best deal for their clients’. Other key contacts are Andrea Jaeger-Lenz and Arne Lambrecht. Clients include numerous international names, such as Christian Louboutin, Boehringer Ingelheim and Haribo. Ulrich Börger left for UNVERZAGT VON HAVE in August 2018.
Hogan Lovells International LLP took a step forward in its Hamburg, Frankfurt and Düsseldorf-based practices with the counsel promotions of Thorsten Klinger, Fabian Pfuhl and Marcus Schönknecht in January 2018 and of Marlen A. Mittelstein in January 2019, simultaneously counterpointing the departure of several senior associates. Morten Petersenn, who heads the European IPMT practice, acted for the community of heirs Baklan in a matter that was initiated in 2017: he represented the client at the Higher Regional Court in Karlsruhe in a dispute regarding the right to use the trade marks BAKTAT and BAK, which besides trade mark issues also involved international private law and inheritance law problems. Susanne Karow’s management of Canyon Bicycles’ international trade mark portfolio and global chair Leopold von Gerlach’s advice to Citi Group on strategic matters and portfolio development show the team’s strength in the non-contentious area. A highlight in domain law was Petersenn’s representation of Chanje in an action against a user of chanje domains in the Netherlands. Other clients include CeramTec, eBay and FlixBus. Yvonne Draheim and copyright expert Nils Rauer are also key contacts. The renowned Andreas Bothe heads the IPTM practice in Germany.
KLAKA Rechtsanwälte stands out for its ‘precise work’ and was able to expand its market presence with numerous new mandates in trade mark and competition law. The team has broad industry expertise with matters originating from the banking, finance and insurance sectors, pharmaceutical, automotive and energy industries but also the fashion, sports and luxury goods segments. Renowned practice head Ralf Hackbarth represented BMW in three landmark proceedings concerning the protection of the trade mark MINI against the use of the trade mark by Segway for scooters, while Oliver Rauscher Deichmann handled contentious and non-contentious trade mark and design law matters. Two other prominent clients for design law matters are Lafuma Mobilier and Longchamp; the key contact here is Stefan Abel. Stefan Eck and Constantin Kurtz take the lead in handling contentious matters for the Centre for Protection against Unfair Competition (Zentrale zur Bekämpfung unlauteren Wettbewerbs). Carola Onken and Andreas Schulz are also key figures.
Lorenz Seidler Gossel
Lorenz Seidler Gossel’s service level is ‘always excellent and meets the highest demands’. The Munich-based firm ‘ensures optimal results for clients in the IP arena’ and is both active in the management of trade mark portfolios and in contentious matters. Christian Raßmann has ‘extensive experience in IP issues in the sports sector’ and successfully represented adidas in infringement proceedings against Puma at the Federal Court of Justice regarding bioweb shoe models. Philipp Neuwald represented Casio Europe in all trade mark and unfair competition law disputes in Germany. In the design law segment Paul Schäuble’s representation of Naketano in several actions due to the infringement of registered and unregistered designs is one of the firm’s highlights. The ‘technically excellent’ Reinhard Ingerl, ‘who manages to make the most out of even the messiest situations’, delivers ‘polished written pleadings, which strike fear into the opponent’. Siegfried Jackermeier is another key player in the team. Other clients include Allianz, ProSiebenSat.1 and Swarovski.
Lubberger Lehment is especially known for its extensive experience in complex disputes in trade mark, copyright and competition law. The team also has particular expertise in litigation against large internet platforms such as Amazon and Google. The firm has offices in Berlin, Hamburg and, since spring 2017, also in Munich, where the practice around Benjamin Koch is expanding. Andreas Lubberger successfully claimed a victory for Coty in a high-profile preliminary ruling procedure at the EJC concerning the issue of whether and under which requirements luxury cosmetics manufacturers can control the distribution channel of its products to the end costumer. For Cornelis Lehment, a highlight was the representation of Axel Springer in several proceedings against AdBlock producers; the core issue of the disputes were fundamental questions regarding advertising funding of media content on the internet and restricted competition. Kai Schmidt-Hern handled another comprehensive mandate for documentus and represented the client in a dispute with Reisswolf regarding the continued transitional use of the trade mark REISSWOLF. Black Rock, Clarins and Deutsche Bahn are among its other clients.
Taylor Wessing’s ‘excellent lawyers’ impress clients with ‘an outstanding flair for what is feasible and willingness to go the extra mile’. The firm expanded its portfolio management practice with two new large client wins and further concentrated on the internationalisation of the practice, especially to Asia, via the appropriate composition of teams drawn from the firm’s large pool of lawyers. The group is also active in contentious matters, such as Wiebke Baars’ representation of the Scotch Whisky Association in trade mark disputes concerning absolute bars to protection due to geograophical indications, including one proceeding at the Regional Court in Hamburg which led to a referral to the EJC. In competition law, Andreas Bauer advises BSH on matters including the design of claims, the product launch of a new spot cleaner and securing the client’s presentation at the IFA fair. Key figures in the team, which is led by practice head Olaf Gillert, include Stefan Fröhlich, Marcus Hartmann, Thomas Raab, Jan Schumacher and Dirk Wieddekind. Thorsten Troge was promoted to equity partner in May 2018. Clients include Hewlett Packard, American Airlines, Alois Dallmayr Kaffee and Pernod Ricard.
Bardehle Pagenberg has a balanced practice handling contentious trade mark advice and prosecution matters, and Henning Hartwig also adds deep expertise in design law. Advice on transactions and license agreements round off the firm’s services. Philipe Kutschke is advising adidas on global design registrations and represents the client in ten court proceedings against Puma relating to shoe sole technology. The group is also acting for Coca-Cola in the prosection area and in contentious matters as well as for border seizures. Practice head Claus Eckhartt is the lead partner in this matter; he has niche expertise in representing clients in product piracy proceedings. With the partner promotion of Pascal Böhner in January 2018, the team expanded its pool of partners but at the same time bolstered its expertise in domain law disputes. Other clients include Galana, Mondelēz and Nintendo.
At the start of 2018, BEITEN BURKHARDT opened a new office in Hamburg, where the IP practice is now led by Angelica von der Decken, who divides her time between that office and Munich. The firm is particularly renowned for its niche expertise in the gaming and cosmetics industry. A highlight in this area is Andreas Lober’s advice to Bandai Namco Entertainment on the trade mark, competition law and copyright law protection of the Pac Man brand. Christina Hackbarth and von der Decken together represented the Nymphenburg Porcelain Manufactory in various disputes concerning the use of Bavarian emblems. Deutsche Fußball-Bund, Estée Lauder and NIO also sought the firm’s advice. The team, which is led by practice head Matthias Stecher, also includes Tanja Hogh Holub and Axel von Walter, and Wojtek Ropel and Gudrun Hausner, who were both promoted to salary partner in spring 2018. Claudio Chirco joined PwC Legal (PricewaterhouseCoopers Legal AG Rechtsanwaltsgesellschaft) in April 2018 and Tilmann Lührig left for Lexton Rechtsanwälte in May 2018.
CBH Rechtsanwälte Cornelius, Bartenbach, Haesemann & Partner
CBH Rechtsanwälte Cornelius, Bartenbach, Haesemann & Partner is noted for its ‘very good service level’ and ‘the ability and willingness to tackle specific issues’. With the opening of an office in Hamburg in July 2017, the firm gained Detlef von Schultz and Sebastian Eble from Preu Bohlig & Partner, who now head the practice together with Cologne-based Ingo Jung and Nadja Siebertz. The practice covers trade mark portfolio management and contentious matters. A recent client was OBI in proceedings against Hornbach and Globus concerning the abstract colour trade mark orange. A highlight in the non-contentious area was gaining a large part of the trade mark portfolio management of Bastei Lübbe and the establishment of the new umbrella brand Be for audio books. The client base exemplifies the firm’s broad industry expertise with a particular concentration of clients stemming from the luxury segment in the newly opened Hamburg office. Other clients include Daimler, Gruner+Jahr and Saint-Gobain Glass.
Due to the ‘high level of advice across all areas of IP’, Grünecker is a popular choice for trade mark and competition law. The team is noted for its ‘uncomplicated cooperation at a top technical level’ and in addition to its expansive trade mark portfolio management practice, it is also highly active in litigation. Highlights included Nicolás Schmitz advising Laverana on the coordination of over 300 proceedings globally and on the strategic direction of the trade mark portfolio and Holger Gauss representing Lyft in several opposition proceedings at the DPMA and EUIPO. The firm is well known for advising domestic and international clients in the fashion and luxury goods industry, but is also expanding its client base into other areas, especially the sports and pharmaceutical sectors. Other clients include Schwan Stabilo, Bulgari and Superdry. Patent attorney Martin Aufenanger, Anja Franke and Maximilian Kinkeldey lead the team together with Schmitz and Gauss.
Baker McKenzie continues to expand its trade mark portfolio management practice and was able to gain the portfolios of Leica and E.ON. Under Michael Fammler’s lead, who together with co-practice head Rembert Niebel constitutes the core of the team, the firm now advises Leica globally on all trade mark matters concerning the trade marks Leica and Leitz, including those of a cross-border nature, where clients benefit from the firm’s international network. Niebel acted for New Valmar and Luv n’Care in a design law highlight, which involved two disputes concerning the manufacture and distribution of baby and toddler products. The practice also handled a significant domain law matter with its advice to SAP on the acquisition of a large number block of legacy IP addresses. CSL Behring, Esprit and StudioCanal are also clients.
bock legal Partnerschaft von Rechtsanwälten
bock legal Partnerschaft von Rechtsanwälten’s IP experts are considered ‘clearly above average’ and combine ‘excellent advice’ with ‘broad industry expertise’. In addition to its strong product piracy practice and a competition law practice that is particularly active in mobile communications, the firm also has longstanding experience in design law, where it advises many clients in the luxury and fashion sectors, among others. Reinhard Döring and Benedikt Frank, who was promoted to salary partner in January 2018, acted for Vodafone in multiple competition law proceedings across Germany against telecoms providers and consumer protection organisations. Andreas Bock, who is noted for his ‘analytic thinking’ and his ‘tactful finesse’, together with Jan Müller-Broich is representing The Swatch Group in Germany in all trade mark and design infringement matters and is also handling proceedings due to violations of competition law. The duo are also advising Guccio Gucci in trade mark and design law with assistance from Daniela Burghardt, who was promoted to counsel at the start of 2018. Other clients include the European Central Bank, Bottega Veneta and Rothenberger Group.
Danckelmann & Kerst
Danckelmann & Kerst predominantly handles contentious competition law matters; the firm is well known in the market due to its representation of Telekom. At the start of 2018, Jan-Felix Isele successfully concluded proceedings at the Federal Court of Justice for the client pertaining to competition and telecoms law requirements regarding the processing of porting requests when changing providers. Nikolaus Konstantin Rehart and Hans-Jürgen Ruhl represented Telekom in proceedings at the Higher Regional Court in connection with the advertising limitations with test prizes won at network tests. The firm is also active in trade mark portfolio management, including for cider manufacturer Born in the Wetterau. Other clients include the German Agency to Combat Unfair Competition, Bettzeit and Roche Diagnostics Germany.
FPS’ practice sits at the intersection between IP and IT with a significant focus on the commercialisation of intellectual property. The firm also advises clients on the development of portfolio strategies and in infringement proceedings. The client base consists of a mixture of German and international companies stemming from a broad range of industries. The team frequently acts for clients in the pharmaceutical and cosmetics, luxury goods and fasion sectors and in the media and advertisement industry. Christoph Holzbach is the main contact.
Freshfields Bruckhaus Deringer
Freshfields Bruckhaus Deringer’s ‘very professional’ team provides ‘a very good service level’. The practice handles stand-alone IP matters, both of a contentious and non-contentious nature, but also acts as a transaction-supporting unit. Competition law matters, including those related to the unlawful misappropriation of trade and company secrets, form a particularly important pillar of the practice. Renowned practice head Matthias Koch leads a team that includes the ‘business-oriented’ Andrea Lensing-Kramer, who together with principal associate Tobias Timmann is advising Volkswagen on the coordination of a global defence in competition law proceedings pertaining to the emission of nitrogen oxide by diesel vehicles. The team represented Agco in several trade mark actions against fashion manufacturer Fendi relating to the trade mark Fendt. Other clients include Plasser & Theurer, VMWare and Knauf International.
Heuking Kühn Lüer Wojtek strengthened its Stuttgart office with the arrival of Andreas Schabenberger in December 2017, who was formerly at Menold Bezler, consequently bolstering its litigation practice in particular. Practice head Dominik Eickemeier, who us based in Cologne, also focuses on infringement proceedings, but has additional expertise in transactions and portfolio development and management. In the product piracy area the firm has longstanding experience in disputes and advises clients on special enforcement programmes for the protection of trade marks and designs. Another area of focus lies in domain disputes.
JONAS Rechtsanwaltsgesellschaft mbH
Cologne-based firm JONAS Rechtsanwaltsgesellschaft mbH provides comprehensive advice on trade mark and competition law matters during the development and marketing of products. The team also covers issues at the intersection with media and corporate communications. Karl Hamacher, Martin Viefhues and Nils Weber constitute the core team, which was strengthened by the September 2017 arrival of Ine-Marie Schulte-Franzheim, who joined as of counsel from her own firm Schulte-Franzheim and has notable competiton law expertise.
Preu Bohlig & Partner
Preu Bohlig & Partner has particularly close contacts with French clients, but also advises a multitude of prominent German companies. The team has longstanding experience in the prosecution and litigation area and is increasingly handling design law matters in addition to its traditionally strong trade mark and competition law practice. Andreas Haberl, whose track record includes numerous due diligences, is advising Eisl Sanitär on the enforcement of design rights. In July 2017 Daniel Hoppe joined from Harte-Bavendamm Rechtsanwälte and is now the main contact in the Hamburg office. Astrid Gérard in Munich, Christian Kau and Torben Düsing, who was promoted to partner in July 2018, in Düsseldorf and Christian Donle in Berlin are the other key names.
SKW Schwarz Rechtsanwälte
Clients recommend SKW Schwarz Rechtsanwälte’s team not only for its ‘excellent knowledge of trade mark and competition law and impressive industry expertise’ but also its ‘strong sense for profitability’. The team’s ‘dedication in combination with its high flexibility’ make it ‘a reliable partner’. In addition to competition law highlights, such as representing OTD Oil Trading Germany in comprehensive court proceedings against a competitor, the practice also handled several significant trade mark and design law matters. Dorothee Altenburg advised food retailer basic on its prosecution business and a trade mark dispute against Kellogg. At the end of 2017, the team in Berlin saw the arrival of former Noerr partner Sandra Sophia Redeker, who is noted for her ‘high capacity for abstract thinking combined with pragmatism and creativity’, and counsel Sascha Pres, whose ‘excellent combination of legal astuteness and practical orientation is impressive’. In Frankfurt, the team includes practice head Magnus Hirsch and Ulrich Hildebrandt, ‘who combines his dogmatic strengths and his enormous pool of knowledge with practical, comprehensible advice in a wonderful manner’, and Margret Knitter, whose ‘work is solution-oriented and highly precise’. Markus Brock is also recommended. New clients include Skechers and Procter & Gamble Service.
Vossius & Partner
IP boutique Vossius & Partner has deep know-how in the analysis of property rights portfolios and property rights strategy development. Paul Kretschmar advised MAN Truck & Bus on its most important trade marks globally, including the processing of the required registrations, and on the designs in connection with new truck and bus models. The team also has strength representing clients in contentious trade mark and design proceedings. In one highlight, practice head Mathias Kleespies successfully represented Dogstyler Soest in trade mark infringement proceedings and in a series of proceedings against several competitors due to design infringements. Simone Schäfer is the main contact for the monetisation of IP rights. Clients include the Federal Association of the German Sport Goods Industry, Boffi and ResMed Germany.
IP boutique Eisenführ Speiser is active in providing general non-contentious advice and in representing clients in disputes. Harald Förster represented Agrarfrost in a complex trade mark dispute with McCain and assisted Cloer Elektrogeräte with the registration of numerous designs. In a product piracy highlight, Julian Eberhardt coordinated several proceedings against pirates for Herbacin Cosmetic, including in Asia. Sennheiser, Ta-Xan and Big Dutchman International are also clients.
Friedrich Graf von Westphalen & Partner
Friedrich Graf von Westphalen & Partner’s quality of advice is characterised by the team’s ‘strong expertise, efficient working method, reliability and quick implementation of decisions’. Clients also appreciate the ‘proactive handling of matters’ and the ‘thinking according to an industry and case basis’. Following the arrival of Stephan Dittl and of counsel Heinz-Werner Ehlgen, both from Salger Rechtsanwälte, in the Frankfurt office in October 2017, the practice is now spread across three offices in Germany, including the already existing ones in Freiburg and Cologne. The traditionally strong prosecution practice is increasingly complemented by an expanding litigation practice with additional niche expertise in drug advertisement law. The ‘highly regarded’ Norbert Hebeis represented Haufe-Lexware in a trade mark dispute at the EJC concerning the legal concept of the relevant similarity of various trade marks. Erima, Wilkinson Sword and Pharmacist Chamber North-Rhine are among its other clients. Morton Douglas, David Kipping and Hans-Georg Riegger are also recommended.
Hoffmann Eitle is steadily expanding its litigation practice, as its increasing domestic presence in trade mark infringement proceedings and its growing volume of work in the coordination of international disputes demonstrates. It has also strengthened its activities in design law and in combination with its traditionally strong prosecution practice has an increasingly broad and balanced practice. The team is also well versed in IP due diligence and assisted Högänas with the acquisition of Starck Surface Technology and Ceramic Powders. Beele Engineering, Svenska Cellulosa Aktiebolaget SCA and Nikon are among its other clients. Practice head Wedig von der Osten-Sacken and Michaela Ring are noted.
Loschelder’s ‘very commendable’ IP team provides ‘a very good service level’. Thomas Schulte-Beckhausen, who together with Stefan Maaßen is one of the key figures in the practice, represented 1&1 in several contentious proceedings, including a comprehensive series of proceedings against mobile phone distribution companies. The team also acted for B. Braun in comprehensive proceedings concerning infringed trade secrets and copied software, including a procedure to secure evidence. In the prosecution area, its global trade mark management for Klosterfrau stands out; the firm also advises the company on labelling and domain law. Other mandates stemmed from a Bonn-based special purpose machine builder, an industry association in the logistics area and Henkel. Associate Patrick Pommerening makes a significant contribution with his ‘detailled advice’.
Noerr combines ‘competent and honest advice’ with ‘a very high service level’ and ‘broad team’ in the IP area. Personnel changes included Sandra Sophia Redeker’s departure to SKW Schwarz Rechtsanwälte in December 2017, as well as on the promotion of Janina Voogd to partner and of Valentina Nieß to counsel, both in January 2018. Christoph Rieken and Voogd provided comprehensive trade mark and competition law advice to the financial services provider of a German automotive corporation, and advised the client on the legal framework for a used-car platform, particularly on questions concerning financing advertising. In the contentious area, group represented a leading German retail chain in the context of an international dispute around chocolate figures. Tobias Dolde, who divides his time between Munich and Alicante, heads the practice. Other clients include Marc O’Polo, Kanebo Cosmetics and PopSockets.
Rospatt Osten Pross’s ‘impressive expertise’ results in ‘highly competent advice from the entire team’. The spectrum of services range from trade mark disputes to numerous design and competition law proceedings and the firm also has experience in the prosecution area. Rüdiger Pansch, ‘whose impressive market knowledge’ and ‘innovative suggestions’ stand out, represented Ferrari in multiple infringement and opposition proceedings about the rights to the famous Testarossa trade mark, and Thonet sought Stephan von Petersdorff-Campen’s expertise for the copyright protection of the so-called Freischwinger (free-swinging) chair. The firm also acted for Marjo Leder & Tracht in registration and infringement procedures concerning the question of distinctiveness and use of fun and statement signs as a trade mark. The client portfolio also includes Schneider Electric, Almirall and Lock & Lock.
Arnold Ruess Rechtsanwälte PartmbB
Düsseldorf-based IP boutique Arnold Ruess Rechtsanwälte PartmbB’s ‘very competent’ team provides domestic and international clients with a comprehensive range of services in trade mark and competition law. The practice predominantly revolves around founding partner Peter Ruess, whose highlights include acting for Sony Interactive Entertainment in trade mark and design law as well as strategic advice to the Federal Association of German tobacco wholesalers (Bundesverbands Deutscher Tabakwaren- und Automatenaufsteller). Counsel Anja Doepner-Thiele is the main contact for Dr. Kurt Wolff with regard to continuous competition advice and contentious cosmetics and drug advertisement law matters. Other mandates stem from Guhl, the Order of Saint John and De Zuivelstichting.
Clients note Dentons’ ‘extraordinary expertise’ and ‘business sense’. The team, which is jointly led by Stefan Dittmer and Constantin Rehaag, is successfully expanding its prosecution practice for trade marks and designs and has deep expertise in combatting against product piracy. Of counsel Helmut Brandau has particularly extensive white-collar criminal law know-how. The practice’s strength in contentious matters can be seen in its representation of Amazon in complex competition law and trade mark infringement proceedings, particularly on the question of interference liability, while the team also has significant activity in transactional matters, such as handling the acquisition of Karlie Flamingo for Beeztees Group, including two trade marks. With Daimler and Yamaha the practice gained two new prominent clients.
At DLA Piper, practice heads Stefan Engels, Burkhard Führmeyer and Kai Tumbrägel have a strong forensic focus. With Ulrike Grübler, the firm also has an expert in international trade mark strategies and portfolio management. The firm saw highlights in the contentious and the non-contentious area with its frequent and often international advice to Amazon on promotion and advertising campaigns and the representation of medtronic in trade mark and design proceedings against a Chinese competitor. Clients also include Bauer Media Group, Nike and Samsung.
Clients note Eversheds Sutherland’s team’s ‘very good service level and the very good reaction times and quality of work’. Practice head Tobias Maier is singled out for his ‘very useful advice’ and his ability to find ‘pragmatic and quick solutions’. Under his lead the practice has expanded both at associate level and in terms of the client portfolio. The firm now advises Owens & Minor and Saint Gobain, in addition to existing clients such as Avon Cosmetics and Dennemeyer. It handles classic IP matters, including advising Asos, a client in the fashion and beauty area, on the establishment of online distribution in Germany, and is well versed in matters that require special expertise in healthcare law. In the latter area, the team’s Europe-wide advice to Aspen Pharma on competition law, specifically on drug advertisement law, stands out. In evidence of its international work, Axel Zimmermann, working with the Paris office, advised Kering on the development of a strategy in the face of fast-growing fashion.
HOYNG ROKH MONEGIER ‘rightfully belongs to the league of IP firms with a very good reputation’. In the trade mark area, the firm predominantly advises industrial companies and clients in the food and drinks sector, pharmaceutical, media, entertainment and publishing industries. Practice head Martin Köhler’s team also includes experienced litigator Thomas Schmitz, who represented EOS in competition, trade mark and design law matters, often in injunction proceedings but also in principal proceedings on infringement cases. Schmitz also advises Hotel Adlon, GlaxoSmithKline and SIG on trade mark law.
KNPZ Rechtsanwälte’s range of services consists of its representation in contentious matters and advice on the commercialisation of trade mark and design rights but also classic prosecution business and transactional work. Litigation highlights include founding partner Christian Klawitter’s representation of Porsche in a dispute with Acacia at the EJC about design rights to car rims. Kai-Uwe Plath assisted Scout24 with the acquisition of Finanzcheck.de.
SCHULTZ - SÜCHTING
Following Squire Patton Boggs’ team expansion at the end of 2016 and start of 2017, it subsequently acquired several new clients, including Cosnova, Deutsche Bank and Zott. In addition to its comprehensive prosecution and portfolio management work, including its global trade mark management for Bora Creations, the team also has a solid litigation practice. Iliana Haleen represented Zippo in a multifaceted matter, which besides trade mark litigation also required license law expertise and experience in domain law disputes. Reinhart Lange heads the team, which also includes Eva Schalast.
In addition to the GDPR-related wave of data protection matters, FECHNER Rechtsanwälte handled data protection matters related to branding questions and trade mark law aspects and assisted with transactions and matters concerning the monetisation of IP rights. Name partners Georg Fechner and Birte Lorenzen were also able to expand the traditionally strong practice for agency businesses. Together with Britta Klingberg, who was promopted to associate partner in April 2018, they advised Veltins on the launch of new products, specifically the clarification of trade mark rights, foodstuff labelling law advice, the management of protective rights and plant variety rights. Other clients include HSH Nordbank, Jung von Matt and Ogilvy & Mather.
Lichtenstein, Körner & Partner
Lichtenstein, Körner & Partner provides comprehensive advice on trade mark, design and competition law to a client base consisting predominantly of German mid-sized companies. The firm also has experience in ancillary areas such as copyright and domain law. Kerstin Gründig-Schnelle is one of the main contacts.
Luther Rechtsanwaltsgesellschaft mbH
Luther Rechtsanwaltsgesellschaft mbH successfully expanded its work for Warsteiner and Geert Johann Seelig now advises on the client’s entire trade mark portfolio. The team also assists the client with the strategic development of trade marks and designs and handles its license agreements. Detlef Mäder was able to utilise his expertise in product piracy cases in acting for Daniel Wellington in numerous proceedings. Mäder and Seelig, who jointly head the team, act for a diverse client base, which includes Imperial Tobacco, Saint Gobain Glass and Harley Davidson.
Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB
At Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, clients receive ‘an excellent service level’ and benefit from the team’s ‘outstanding expertise’; practice head Oliver Nilgen stands out for his ‘very strong service orientation’ and ‘practical solutions’. The team has a focus on the prosecution area, both with regard to trade marks and designs, but also increasingly handles contentious matters. The client portfolio includes ACO Severin Ahlmann, Revell and producer of musical instruments Warwick.
von BOETTICHER Rechtsanwälte Partnerschaftsgesellschaft mbB provides ‘businesslike advice at the drop of a hat’ and impresses clients with the ‘expertise in trade mark and competition law matters of each lawyer in the team’. The firm’s spectrum of work includes handling international trade mark portfolios, such as for Deutsche Bausparkasse Badenia, and comprehensive representation in contentious matters, such as for Generali in labelling, trade mark and copyright proceedingst. ‘Total strategist’ Holger Alt has gained additional instructions from Femto Messtechnik concerning trade mark law. Angelika Hoche is noted for her ‘knowledge, experience and reliability’. Claudia Böhm is the main contact for matters in the healthcare sector, as well as for drug advertisement law issues.
White & Case LLP’s IP team is noted for its ‘quick response rates’ and ‘pragmatic approach’. Practice head Markus Mette has deep experience in representing technology companies in disputes and was able to expand the firm’s activity in the area via the acquisition of several new clients. Overall the practice acts for a broad client base, which also includes clients from the consumer goods, automotive and energy sectors. The group advises Anschutz Entertainment Group on the use of the trade mark Eisbären Berlin on merchandising products. The team benefits from the firm’s network for a flow of regular cross-border work.