Trade marks in Germany

Arnold Ruess Rechtsanwälte PartmbB

Düsseldorf IP boutique Arnold Ruess Rechtsanwälte PartmbB is experienced in advising on strategic portfolio matters as well as in representing clients in contentious proceedings. Despite the firm's purely national presence, the team led by Peter Ruess is well versed in the coordination of international mandates. The team's extensive experience in license negotiations and the development of advertising strategies and materials round off its range of services.

Practice head(s):

Peter Ruess

Testimonials

‘Fast, competent team.’

‘Excellent technical competence in combination with economical understanding and commercially sensible decisions.’

‘In the meantime well established practice on industrial property rights, but still with a distinctive start-up mentality. Very dynamic and flexible.’

‘Very competent and fast response times, flexible and realistic assessments.’

‘Peter Reuss offers excellent technical competence, as well as an interdisciplinary overview within the overall context.’

Key clients

Cansativa GmbH

Chipita SA

De Zuivelstichting

Edgewell

Guhl Ikebana GmbH

Johanniterorden

Mercedes pay S. A.

NORDSEE GmbH

Smith & Wesson Corporation

Weingut Markus Molitor

Work highlights

  • Legal representation of the Cansativa GmbH in a court case regarding trademark law at the LG Köln (Regional Court) concerning medicinal cannabis, which was resolved by a court settlement.
  • Advice to the eismann Tiefkühl-Heimservice GmbH on different matters of trademark law.
  • Legal representation of the Guhl Ikebana GmbH in a copyright lawsuit with partial aspects of trademark law.

Baker McKenzie

Baker McKenzie is particularly active in an advisory capacity, while also continuously expanding its litigation practice. At the heart of its services lies the management and strategic development of large trade mark portfolios. This is routinely handled on a cross-border basis in conjunction with various offices across its international network. The team co-headed by Michael Fammler and Rembert Niebel is also an experienced partner for transactional matters. Its extensive client roster spans various industries but includes an increasing number of consumer goods sector clients.

Practice head(s):

Michael Fammler; Rembert Niebel

Key clients

Axxion S.A.

BAT (British American Tobacco / Batmark)

Calvin Klein

CSL Behring

E.ON SE

Esprit

Hasbro

Karen Millen Fashions Limited

Leica Microsystems

SAP SE

Work highlights

  • Management of the global brand portfolio of E.ON as well as support on strategic matters and legal representation in disputes.
  • Comprehensive advice to SAP SE on its brand portfolio, including strategic advice on brand-clearing, advice on management and development of the portfolio and legal representation in disputes with competitors.
  • Ongoing advice to Calvin Klein in the course of the enforcement-scheme to combat the distribution of counterfeit products on the internet. Strategic advice on branding concerning product launches.

Bardehle Pagenberg

Bardehle Pagenberg handles the full spectrum of trade mark and competition law with a specialism in the management and development of international trade mark portfolios. In the contentious space, the team led by Claus Eckhartt is equally well versed in enforcing trade mark rights in opposition and cancellation proceedings and in handling infringement proceedings before ordinary courts. Other work includes design law matters, product piracy and transactional issues as well as licensing and delimitation agreements.

Practice head(s):

Claus Eckhartt

Other key lawyers:

Pascal Böhner; Henning Hartwig; Philipe Kutschke

Key clients

Air Liquide

ameria GmbH

Campari

Galana NV

GlaxoSmithKline

L’Oréal

Mondelez UK Holdings and Services Limited

MZE Möbel Zentral Einkauf GmbH

Nintendo Co Ltd.

The Coca-Cola Company

XL-Energy Marketing s.p.zoo

Work highlights

  • Management of the brand portfolio of Air Liquide and representation in trademark registration procedures.
  • Ongoing advice to The Coca-Cola Company on trademark, design, copyright and competition law, including strategic advice, the legal representation in trademark registration, appeal and cancellation procedures and advice on the trademark law aspects of launching new products.
  • Legal representation of Mondelez UK Holdings and Services Limited in a legal dispute at the BGH (Federal Court) and BPatG (Federal Patent Court) concerning the cancellation of two three-dimensional brands of the client.

BEITEN BURKHARDT

BEITEN BURKHARDT combines an experienced trade mark portfolio management practice with broad sector knowledge. The team led by Matthias Stecher provides in-depth expertise in the automotive, retail and sports sectors and has extensive experience in advising clients from the media, design and luxury goods industries with a specialism in the cosmetics and gaming sectors. The practice's forensic expertise is regularly demonstrated in proceedings, which, in addition to trade mark and competition law aspects, also contain copyright elements. In September 2018, the team increased its bench strength by adding salary partner and IT and data protection specialist Lauren Lee from Baker McKenzie, while IP expert Uta Norstedt made salary partner in January 2019. Joachim Wessel retired in December 2018.

Practice head(s):

Matthias Stecher

Other key lawyers:

Tanja Hogh Holub; Andreas Lober; Angelica von der Decken; Holger Weimann; Uwe Wellmann; Lauren Lee; Uta Norstedt

Testimonials

‘Angelica von der Decken: highly experienced lawyer, who, especially on complex topics, delivers advice from a legal point of view with regards to commercial aspects.’

Key clients

Antenne Bayern

Deutscher Fußball-Bund e.V.

Deutscher Golfverband e. V.

Epic Games, Inc. / Epic Games Germany GmbH

Estée Lauder Companies GmbH

JAKO AG

König Ludwig International

SCHUFA Holding AG

Supercell Oy

Vitra AG

Work highlights

  • Comprehensive advice to Epic Games Inc., among other things on trademark, copyright and competition law with regards to the brand Fortnite. In addition the Europe-wide coordination of measurements to combat counterfeit software in accordance with trademark, copyright and competition law and advice on the launch of the Epic Games Store, a global digital platform for the distribution of computer games.
  • Comprehensive support to Bandai Namco Entertainment on the protection of the brand Pac-Man, including the representation in legal disputes against imitators, advice on combating the unlicensed merchandise trade and actions against grey market imports. Furthermore the global coordination of trademark registrations for the client.
  • Advised the Bigpoint GmbH on matters of trademark law and representation of the client in trademark registration processes. Successful defence of the client’s rights in a legal dispute against a provider of cheating-software.

Bird & Bird LLP

Bird & Bird LLP covers the gamut of trade mark work, from the development of registration strategies to the defence of trade marks in infringement proceedings. The practice covers a wide range of stand-alone work but also handles interdisciplinary instructions, such as transactions. Based on the firm's client focus, much of the team's work stems from the technology, telecommunications, media, automotive, life sciences, retail and consumer goods sectors. One of the team's particular strengths is the coordination of international trade mark and design portfolios, which is continuously growing in volume. Christian Harmsen heads the IP practice, which includes Munich-based main contact for trade mark law Richard Dissmann. Frankfurt-based IP and trade mark lawyer Mascha Grundmann made partner in May 2019. Senior counsel Sebastian Fischoeder joined Taylor Wessing in September 2019, while trade mark lawyers Frederik Thiering and Marion Jacob announced their arrival for spring 2020. Both have previously been at Harte-Bavendamm Rechtsanwälte and will join as equity partner and senior counsel respectively.

Practice head(s):

Christian Harmsen

Other key lawyers:

Richard Dissmann; Joseph Fesenmaier; Mascha Grundmann; Markus Körner; Uwe Lüken

Testimonials

‘Good interlinking between partners and back-office. Especially for time-consuming research work, manpower can be activated quickly.’

‘The team around partner Markus Körner is very strong, acts fast, easy to reach and practically competent.’

‘Very precise working method.’

‘Richard Dissmann: Excellent know-how of trademark- and competition law, very assertive, very much strategically thinking.’

‘Markus Körner is characterised by a deep, profound knowledge of industrial property rights and practically valuable legal advice. His memos are to the point and avoid diffuse legal explanations.’

Key clients

Amway

Audi AG

Dalli Group

Discovery Channel

Fendi s. r. l.

Fila

L’Oréal

Microsoft

Nokia

ProSiebenSat.1 Media AG

Work highlights

  • Comprehensive support to the Audi AG, among other things on cooperation agreements in accordance with design law, on the registrations of new designs for the client’s very own design studio Audi Design and on the defence concerning trademark law, domain and design rights.
  • Legal representation and advice to Canon on trademark, competition and copyright law.
  • Legal representation and advice to Fendi s. r. l. on disputes concerning trademark law, among other things in a comprehensive infringement procedure against the tractor manufacturer FENDT.

bock legal Partnerschaft von Rechtsanwälten

Frankfurt-based firm bock legal Partnerschaft von Rechtsanwälten stands out for its strong design law practice. The team led by Andreas Bock is one of the most experienced litigation practices in the market and predominately acts for watch and jewellery sector clients alongside clients from the automotive, fashion and luxury goods industries. Similarly, in trade mark law, clients frequently instruct the team with contentious matters and benefit from its in-depth expertise in product piracy. Advising on portfolio management and portfolio development complements this offering.

Practice head(s):

Andreas Bock

Other key lawyers:

Jan Müller-Broich

Testimonials

‘Competent, engaged, reliable.’

‘The intersections between team members are well balanced. Tasks are clearly allocated and are transparent for us as the client. The administration does a good job and is very service-oriented.’

‘Andreas Bock is one of the go-to addresses in Germany concerning industrial property rights.’

Key clients

Bottega Veneta SA

Ferrari S. p. A.

Guccio Gucci S.p.A.

Infectopharm Arzneimittel und Consilium GmbH / Pädia GmbH

Rothenberger Gruppe

The Swatch Group AG

Tod’s S. p. A.

Vario Büroeinrichtungen GmbH & Co. KG

Verband der Schweizerischen Uhrenindustrie FHS

Vodafone GmbH

Work highlights

  • Comprehensive support to Ferrari S.p.A. on trademark and design law, including regular legal representation in disputes with regards to replicas and unlawful adjustments to vehicles.
  • Ongoing advice to the ROTHENBERGER-Gruppe on trademark and competition law as well as IT rights. Legal representation in several proceedings on trademark and copyright infringements as well as violations of competition law.
  • Legal representation of the Vario Büroeinrichtungen GmbH & Co. KG in several infringement proceedings against reputable furniture manufacturers and traders. In addition out-of-court advice on matters regarding design, competition and copyright law.

Boehmert & Boehmert

Boehmert & Boehmert's strength lies in the strategic development and management of large trade mark portfolios, both within Germany and internationally. The team also receives demanding contentious instructions, which frequently go all the way to the Federal Court of Justice (BGH). Its broad client base includes media, luxury goods and pharmaceutical sector clients as well as consumer goods and technology companies. Trade mark and design law expert Rudolf BöckenholtMalte Nentwig, who predominantly handles strategic trade mark portfolio work, Volker Schmitz-Fohrmann, who deals with contentious and non-contentious trade mark matters, and Martin Wirtz, who frequently advises on the development and maintenance of trade mark and design portfolios, are among the main contacts. Trade mark, copyright and antitrust law specialist Jan Bernd Nordemann left the firm in January 2019 to co-found the spin-off Nordemann with its main office in Potsdam and a second office in Berlin.

Testimonials

Boehmert & Boehmert has a highly competent and specialised team. Its reputation as one of the most experienced firms in the protection of industrial property is more than justified. The availability of the team, the expertise and the experience and quality are outstanding, the fee structure is clear

Rudolf Böckenholt is the contact person for everything concerning the protection of industrial property. He is excellent in formulating his advice clearly. Due to his extensive experience, he manages to pursue the most efficient strategy for his clients The enables the achievement of the best possible result in the most cost-effective way. He is a highly reliable as well as thorough partner who replies to short telephone and email queries in the most suitable grade of detail and particularly achieves outstanding results based on his realistic assessments. His reaction time is great. In case of absences, his team is able to take on his work without any disruptions.

Key clients

BLG Kardesler

Jack Daniel’s

Metro-Goldwyn-Mayer

Newell Brands

Novartis

Rittal

Sonos

DJI

Tipico

Warner Media

Work highlights

  • Successful defence of BATA in a legal dispute at the BGH (Federal Court), in which the BGH ruled out the danger of confusion of the brand THINK for shoes and the brand THINK OUTDOORS.
  • Advice to Santen Oy on parellel imports and reimports of medicinal products in accordance with the legal requirements of the European Court of Justice concerning repackaging.
  • Advised Turner Broadcasting on trademark protection for the TV show 4 BLOCKS. Legal representation of Boomerang TV concerning a trademark infringement.

CBH Rechtsanwälte

Acting from Cologne, Munich and Hamburg, CBH Rechtsanwälte Cornelius, Bartenbach, Haesemann & Partner's client base predominantly consists of medium-sized companies from the healthcare, beauty and care products, automotive and luxury goods as well as retail sectors. The team is well versed in handling the management and development of portfolios as well as representing clients in contentious proceedings, while also having design law expertise. Key members of the team include Sebastian EbleIngo JungMarkus RuttigNadja Siebertz and Detlef von Schultz, who are experienced in providing clients with strategic advice and representing them in contentious proceedings, among other matters.

Other key lawyers:

Sebastian Eble; Ingo Jung; Markus Ruttig; Nadja Siebertz; Detlef von Schulz

Testimonials

‘The points of contact at the practice remain with the practice for many years, and in this way they can build up a technically specific expertise, even in those areas that aren’t usually known economically.’

‘The team of Nadja Siebertz is very competent, always reachable and with clearly distributed competences and responsibilities. As a client, one always knows who to turn to, and one always gets excellent advice. The whole team is very nice, friendly and willing to help.’

‘Very good reachability and familiarization with the topic. Fast preparation of procedural documents, comprehensive advice with high legal expertise and comprehensible presentation of legal concerns. Furthermore, our wishes concerning the contents of the procedural documents are considered. Always eager on amicable settlement, as long as possible.’

‘Nadja Siebertz’ knowledge in the area of industrial property rights is very broad, she is able to perfectly explain complex circumstances, takes her time and always finds practice-oriented solutions. She certainly is one of a kind in the industry.’

Key clients

Albrecht Jung GmbH & Co. KG

Burberry Group

Daimler AG

Donaldson Deutschland GmbH

Feldschlösschen Brauerei GmbH

IronMaxx

Saint-Gobain Glass Deutschland GmbH

Swatch Group

TÜV Nord

Zentralverband des deutschen Bäckerhandwerks

Work highlights

  • Ongoing advice on trademark law to the Donaldson Filtration Deutschland GmbH.
  • Legal representation of the Fast Fashion Brands GmbH in several trademark infringement proceedings, among them ten proceedings against Amazon and two proceedings against Tommy Hilfiger.
  • Advised the Curaden AG on design law for different product configurations within the dental care sector, as well as legal representation of the client in a measurement method dispute against an Italian competitor.

CMS

CMS stands out for its specialsm in consumer goods sector work and its expertise at the intersection with life sciences, agroscience and healthcare. As part of an international set-up, the team led by Thomas Manderla and Jörn Witt regularly handles cross-border matters, which frequently pertain to the strategic development of international trade mark and design portfolios, including associated registration proceedings, while also regularly crossing national borders when handling contentious proceedings. Its expertise also extends to representing clients in product piracy scenarios. Gordian Hasselblatt is an expert in trade mark protection for new product launches.

Practice head(s):

Thomas Manderla; Jörn Witt

Other key lawyers:

Nikolas Gregor; Gordian Hasselblatt; Carsten Menebröcker

Testimonials

‘Highly professional, very business-oriented, extremely competent, very reliable. Knows the needs of the client very well. Very pleasant in the communication.’

‘Gordian Hasselblatt is a world-renowned specialist, but still able to communicate well with non-lawyers, and to explain. He is extremely business-oriented and finds brilliant legal, but also pragmatic solutions.’

Key clients

1. FC Köln

August Storck

Ecolab

Eli Lilly

Fissler GmbH

Hochwald Foods

Leifheit

ODDO BHF Asset Management

Siemens

Unilever

Work highlights

  • Legal representation and advice to Ecolab USA Inc. on matters of trademark in Europe and parts of Asia. Coordination of the teams in other jurisdictions.
  • Ongoing advice on trademark and competition law to the  1. FC Köln GmbH & Co. KGaA, including the management of the global trademark portfolio and legal representation in domain disputes.
  • Ongoing advice on trademark, design and competition law to the Fissler GmbH, including the management and development of the global trademark portfolio and the representation in legal disputes.

Dentons

Dentons has international work at its core, handling contentious cross-border proceedings alongside non-contentious IP portfolio, licensing agreement and distribution issues. Constantin Rehaag and Stefan Dittmer, who jointly head the practice, also succeeded in expanding its trade mark and design registration practice without diminishing its forensic capabilities. In the counterfeiting and product piracy space, the team can draw on of counsel and former public prosecutor Helmut Brandau's extensive expertise in criminal law.

Practice head(s):

Stefan Dittmer; Constantin Rehaag

Other key lawyers:

Helmut Brandau

Testimonials

‘Technically very focused, always with a realistic outlook on the whole situation.’

‘Constantin Rehaag is strategically strong and demonstrates excellent eye measure.’

Key clients

Amazon

Bayer AG

Delta Airlines

Ermenegildo Zegna

Konica Minolta & Konica Minolta Business Solutions Europe

Pierre Fabre

Polaroid

SUPREME

WayRay

Yves Rocher

Work highlights

  • Legal representation of Amazon in complex trademark and competition law proceedings against a perfume manufacturer concerning matters of liability for alleged trademark infringement and the corresponding burden of proof in consideration of the Converse I-and Converse II-decisions at the BGH (Federal Court). In addition handling of matters at the interspace of trademark and customs law.
  • Legal representation of the Bayer AG in several trademark and patent infringement proceedings against a grouping, which sells potentially counterfeit pharmaceuticals on the internet.
  • Advised the rating service eKomi on matters of trademark, integrity and data protection law. Design and negotiation of cooperation contracts and other commercial contracts.

DLA Piper

The team at DLA Piper is particularly experienced in the media and entertainment, technology, consumer goods and fashion as well as food and drinks sectors. Its extensive trade mark law expertise includes portfolio management and development as well as infringement proceedings, most notably summary proceedings. Handling digitalisation-related work is another key strength. Thanks to its international network, the team also provides one-stop support in cross-border mandates. Stefan Engels heads the practice from Hamburg.

Practice head(s):

Stefan Engels

Other key lawyers:

Kai Tumbrägel; Burkhart Führmeyer

Testimonials

‘Excellent team, always available, which covers the whole range in the areas of IP and media, nationally as well as internationally.’

‘The team at DLA Piper revises our cases with high priority, efficiency and expertise. The cases are researched brilliantly, prepared, explained clearly and we feel well advised.’

‘An internationally well interconnected team.’

‘Kai Tumbrägel: Excellent lawyer and very good strategist.’

‘Kai Tumbrägel is a very pragmatic lawyer with a distinctive hands-on-mentality.’

‘Wolfgang May is an experienced expert on trademark law. Due to time spent in-house, he understands a client’s need very well.’

‘Gabriele Engels overlooks the whole case at all times, does quick research and composes documents clearly, gives excellent legal advice and always tries to reach an out-of-court settlement first.’

Key clients

About You GmbH

Bacardi

BRITA GmbH

Coty Inc.

Guccio Gucci

Nike Inc., Nike European Operations Netherlands B. V.

Rituals Cosmetics

Ty Inc.

Wort & Bild Verlag

Zuru Inc.

Work highlights

  • Ongoing advice to Bacardi on matters of IP and competition law, including on parallel imports, advertising campaigns and product labelling.
  • Ongoing advice to the BRITA GmbH on matters of IP and competition law, including on parallel imports, advertising campaigns and trademark infringements.
  • Strategic advice to Nike Inc. and Nike European Operations Netherlands B.V. on non-contentious matters as well as legal representation of the client in legal proceedings against Bogner concerning infringements of trademark and competition law.

Eisenführ Speiser

With the arrival of counsel Andreas Ebert-Weidenfeller in May 2019, previously at Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbBEisenführ Speiser gained an experienced trade mark and design strategist, complementing the core team around Julian Eberhardt and Harald Förster. As part of an integrated law and patent firm, the practice shares some of its clients with the firm's patent law team, many of which are owner-managed SMEs. Its offering includes representation in contentious proceedings and summary proceedings, for example at trade fairs.

Key clients

Agrarfrost GmbH & Co. KG

Asklepios-Gruppe

CEWE-Gruppe

Koninklijke Philips N.V.

kwb Germany GmbH

Protina Pharmazeutische GmbH

Sennheiser Electronic GmbH & Co. KG / Georg Neumann GmbH

TA-XAN AG

WABCO Holdings Inc.

WARK Group Sp. z o.o. Sp. k.

Work highlights

  • Successful defence of kwb Germany GmbH in appeal proceedings at the OLG Braunschweig (Higher Regional Court) concerning products labelled with k.® GERMANY GmbH.
  • Management of the whole brand portfolio of the Protina Pharmazeutische GmbH, including the legal representation in several disputes with competitors.
  • Ongoing advice to the Cewe-Gruppe on IP rights.

Eversheds Sutherland

Eversheds Sutherland continues to follow an international approach and thus has been able to increase the number of cross-border instructions. Mostly, these include transactional and strategic portfolio issues alongside licensing matters, while the team also provides assistance with contentious proceedings. With co-head Tobias Maier also co-heading the global Health & Life Sciences sector group, the team's workload includes many overlaps with healthcare law, such as pharmaceutical advertising law. Maier jointly heads the practice with Axel Zimmermann, who is an expert for media, entertainment and sports law.  IP specialist Thomas Farkas made counsel in May 2019.

Practice head(s):

Tobias Maier; Axel Zimmermann

Other key lawyers:

Thomas Farkas

Key clients

Alpargatas

Aspen Pharma

Burger King

Kering Group

Mitsubishi

Munich Re

Praesidad und Hesco (The Carlyle Group)

Pryde Group

Rolls Royce

Turkish Airlines

Work highlights

  • Advice to Aspen Pharma on the takeover of a brand portfolio by GlaxoSmithKline after the acquisition of the underlying pharmaceutical business.
  • Advised First Data, a US-American provider of e-commerce solutions for payment transactions, on matters of trademark law. Takeover of the brand portfolio.
  • Ongoing advice to the Kering Group, in particular on combating product counterfeiting. Advice on the development of the IP strategy.

FECHNER Rechtsanwälte

Hamburg boutique FECHNER Rechtsanwälte regularly handles name finding procedures and is best known for its specialism in representing advertisers alongside advertising and communication agencies. Much of its work is non-contentious in nature and includes trade mark and design law matters but the team including Georg Fechner and Birte Lorenzen also handles contentious proceedings.

Other key lawyers:

Georg Fechner; Birte Lorenzen

Testimonials

‘Fechner is a boutique with very engaged, competent and friendly colleagues.’

‘Birte Lorenzen is a very competent colleague, wo acts with full commitment and high motivation.’

‘A reliable partner, always reachable, fast legal assessment of the situation, great competence in trademark and competition law.’

Key clients

Brauerei C. & A. Veltins GmbH & Co. KG

fischerAppelt Gruppe

Hamburg Commercial Bank AG

Jung von Matt

Mey GmbH & Co. KG

Ogilvy & Mather GmbH

Peter Kölln GmbH & Co. KGaA

Publicis Pixelpark

Red Rabbit

Sächsisches Landesamt für Umwelt, Landwirtschaft und Geologie

Work highlights

  • Supported the brewery C. & A. Veltins GmbH & Co. KG on all matters concerning industrial property, including advice on matters of plant varieties protection law.
  • Strategic advice to Mey GmbH & Co. KG on the management and development of the brand and design portfolio. Representation in disputes concerning integrity and design law. Comprehensive advice on brand, design and copyright law with regards to clothing.
  • Management of the brand portfolio for Peter Kölln GmbH & Co. KGaA and advice on its strategic development.

FPS

FPS' team led by Christoph Holzbach handles a wide range of contentious and non-contentious trade mark and design law work. Unlike most other firms in Germany, the practice has positioned itself strategically at the interface of IP and IT, enabling the team to assist its clients - many of which stem from the pharmaceutical, cosmetics, luxury goods and fashion industries alongside the media, advertising, manufacturing and software sectors - with large projects. The team also provides advice on the commercial exploitation of IP portfolios. Equity partner Thomas Stein and associate partner Sarah Petereit joined the team from Winterstein Rechtsanwälte in October 2018, strengthening the group's capacities at the interface between IP and IT. In February 2019, Eckart Haag and Daniel Hövel joined Notos.

Practice head(s):

Christoph Holzbach

Other key lawyers:

Thomas Stein; Sarah Petereit

Freshfields Bruckhaus Deringer

Freshfields Bruckhaus Deringer's trade mark practice is characterised by the digitalisation initiative led by Matthias Koch and by Andrea Lensing-Kramer's experience in providing trade mark and competition law advice to consumer goods, technology, healthcare and financial sector clients. Koch as well as Lensing-Kramer are experienced litigators but are also specialised in the commercial exploitation of IP portfolios, advising on licensing and distribution agreements as well as on IP aspects arising from joint ventures and other transactions.

Friedrich Graf von Westphalen & Partner

As well as its strength in providing pharmaceutical companies and luxury goods manufacturers with trade mark law advice, Friedrich Graf von Westphalen & Partner succeeded in expanding its Cologne and Frankfurt offices by consolidating its broad range of services on one hand and by establishing a solid practice in product labelling, design and copyright law on the other. The team handles strategic portfolio expansion and portfolio management work as well as contentious defence proceedings. The firm's corporate capabilities also translate into a steady flow of transactions. Norbert HebeisMorton DouglasDavid Kipping and Stephan Dittl jointly head the team.

Practice head(s):

Norbert Hebeis; Morton Douglas; David Kipping; Stephan Dittl

Gleiss Lutz

Gleiss Lutz is best known for its expertise in unconventional brand categories such as positional trade marks, 3D, colour and colour combination trade marks. Providing assistance with the adaptation of trade mark portfolios to a constantly changing technological environment, most notably in the online space and including social media and apps, constitutes another key area of expertise. Its workload includes forensic matters as well as the strategic management and development of trade mark portfolios. As part of a full-service firm, the team led by Berlin-based Stefan Weidert and Stuttgart-based Stefan Völker is well placed to assist clients with a wide range of matters beyond the IP space.

Practice head(s):

Stefan Weidert; Stefan Völker

Other key lawyers:

Alexander Molle; Marcel Pemsel

Grünecker

Grünecker excels in luxury goods and fashion sector work alongside cosmetics, pharmaceutical and medical device sector matters. With its offices in Munich, Berlin and Cologne alongside an office in Paris, the practice has deep roots in Europe, leading to an international client base which is not least due to the firm's close cooperation with other European, US, Japanese and South Korean law firms. The team is particularly active in large infringement proceedings, most notably acting for luxury goods companies in the context of non-traditional trade mark categories and with large trading companies on the opposite side. In design law, the team's hard IP expertise is based on its close cooperation with the firm's patent law practice. Providing assistance with portfolios is another key element. Team heads Martin AufenangerAnja FrankeHolger GaussMaximilian Kinkeldey and Nicolás Schmitz are the main contacts.

Practice head(s):

Martin Aufenanger, Anja Franke; Holger Gauss; Maximilian Kinkeldey; Nicolás Schmitz

Testimonials

‘Highly-motivated team, which is fun to work with. The team is characterised by its practice-oriented and pragmatic solution approach.’

‘Holger Gauss possesses a well-founded technical knowledge and is able to outline complex legal issues in a comprehensible manner. He is on the task with his heart and mind, with him one feels looked after.’

‘I can very much recommend Anja Franke. She is an excellent trademark- and design law solicitor with a good understanding of all aspects of the industrial property rights. Also she is leading an efficient team, distributes tasks sensibly and solves problems well and with reasonable costs involved.’

Key clients

Bulgari

Capri Sun AG

DJO

Hermès

Lacoste/Gant

Laverana

Louboutin

Migros

Schwan Stabilo

Sony Music

Work highlights

  • Legal representation of different manufacturers and traders of products containing live microorganisms in court proceedings at the European Court of Justice concerning the cancellation procedure of an EU-brand.
  • Advised a fashion retail chain on the defence against a preliminary injunction after an alleged trademark violation by a clothing manufacturer.
  • Successful legal representation of an international luxury goods company in a dispute against a Europe-wide trading chain.

Harmsen Utescher

Harmsen Utescher in Hamburg is one of the oldest IP boutiques in the market. The management of large international trade mark portfolios is a key segment of its services alongside with representing clients in contentious proceedings, including those before the Federal Court of Justice (BGH). Its diverse client base including trade mark owners as well as trading companies provides the team with a comprehensive insight into various conflict situations on the market. Handling design law work is another key element of the practice, whose key individuals include Rainer KaaseMartin KefferpützTill Lampel and Karin Sandberg, who are equally active in strategic advisory work, portfolio management and contentious proceedings.

Key clients

Douglas

Intersnack

Jack Wolfskin

Metro

Peugeot PSA

Roxtec

Scout24

Stada

Work highlights

  • Legal representation of Roxtec International AB in a preliminary injunction process within appeal proceedings at the OLG Hamburg (Higher Regional Court) concerning the acquisition of a trademark protected model range of sealing solutions by an Italian competitor.
  • Legal representation of Almdudler in a preliminary injunction procedure against the brewery Riegele concerning the use of the brand Spezi, which clarified the conditions for the admissibility of an injunction in constellations.
  • Legal representation of the defendant Automobiles Citroën S.A. in trademark infringement proceedings at the OLG Hamburg (Higher Regional Court) concerning the use of the brand PURE PEARL in one of the client’s Citroën-special edition models.

Harte-Bavendamm Rechtsanwälte

Harte-Bavendamm Rechtsanwälte succeeded in expanding its design and trade mark management offering, and in strengthening its forensic wing. The Hamburg IP boutique has broad industry expertise covering the food and fashion industries as well as the print and media sectors and clients from the furniture, design and pharmaceutical sectors. Main contacts are Michael Goldmann, who is particularly active in contentious proceedings, Henning Harte-Bavendamm, Andrea Jaeger-Lenz and Arne Lambrecht, who handles a wide range of contentious and non-contentious matters. Design, trade mark and competition lawyer Malte Lieckfeld made partner in January 2019. In spring 2020, Frederik Thiering and Marion Jacob, both specialised in trade mark law, are due to move to Bird & Bird. Thiering will join as equity partner and Jacob as senior counsel.

Key clients

Christian Louboutin

Deutsches Rotes Kreuz

Haribo

Gruner + Jahr GmbH

Levi Strauss & Co.

Nestlé-Gruppe

Procter & Gamble

Säkaphen GmbH

Tribodyn AG

Volkswagen AG

Work highlights

  • Advice and legal representation of Christian Louboutin in several infringement proceedings on the protection of the well-known Red Sole trademark.
  • Successful defence of Krombacher in a cancellation procedure concerning the brand Felsquellwasser.
  • Comprehensive legal representation of Levi Strauss & Co. in several injunctive processes concerning the trademarks Arcuate, Tab and Batwing.

Heuking Kühn Lüer Wojtek

As an integral part of the firm's IP, Media & Technology group, Heuking Kühn Lüer Wojtek's trade mark practice has litigation work at its core, while also regularly handling non-contentious matters. The partner appointment of IP lawyer Ruben Alexander Hofmann in January 2019 in Cologne and the addition of the litigation experienced Robert Güther, who moved internally and joined the Berlin team, showcase the positive development of the practice. Michael Schmittmann heads the team from Düsseldorf.

Practice head(s):

Michael Schmittmann

Other key lawyers:

Dominik Eickemeier; Andreas Schabenberger; Christian Spintig; Thorsten Wieland; Ruben Alexander Hofmann; Robert Güther

Key clients

Bacardi Company Ltd.

APASSIONATA World GmbH

Carl Zeiss Vision GmbH

COMPO Expert GmbH

DALLI-WERKE GmbH & Co. KG

GameStop, Inc./GameStop Deutschland GmbH

Messe Frankfurt GmbH

TASCHEN Verlag

Tommy Hilfiger

Viridis Pharmaceuticals

Work highlights

  • Comprehensive advice to the DALLI-WERKE GmbH & Co. KG on research concerning trademark and design law for new washing and washing-up products, in particular dishwasher tabs.
  • Legal representation of couponplatz.de GmbH in a legal procedure concerning the use of other brands for one’s own services and products of the manufacturer, in particular the admissibility of the use of the brand Funny Frisch on vouchers for crisps.
  • Legal representation of GameStop Deutschland GmbH in several trademark infringement proceedings.

Hoffmann Eitle

Rated for its international and broad bench strength, Hoffmann Eitle's team includes a Munich-based trade mark lawyer, who is also admitted in Great Britain, and receives regular assistance from its teams in Milan and Madrid. Its workload includes strategic advice on trade mark portfolios as well as the enforcement of intellectual property rights before ordinary courts, the German Patent and Trade Mark Office (DPMA) and the European Union Intellectual Property Office (EUIPO). Wedig von der Osten-Sacken and Michaela Ring are among the main contacts of the team and, in addition to German trade mark mandates, also handle European and international trade mark law instructions.

Hogan Lovells International LLP

Hogan Lovells International LLP's global reach is clearly reflected in its German trade mark practice, in both prosecution and contentious proceedings. This leads to regular instructions on the development and management of international trade mark and design portfolios and the coordination of cross-border infringement proceedings. The team jointly led by Andreas BotheBurkhart Goebel and Morten Petersenn also has extensive experience in the amicable settlement of disputes. The lion's share of its work stems from clients from the life sciences, telecommunications, media and technology sectors. The practice has also been increasingly active in trade secret protection work. IP expert Marlen Annika Mittelstein made counsel in January 2019.

Practice head(s):

Andreas Bothe; Burkhart Goebel; Morten Petersenn

Other key lawyers:

Yvonne Draheim; Erhard Keller; Susanne Karow; Marlen Annika Mittelstein

Work highlights

  • Advice to BayWa on the management and implementation of the brand portfolio of the brand BayWa as well as on the strategic development of the portfolio.
  • Legal representation of the CeramTec GmbH in trademark infringement proceedings in Germany, France and the USA concerning abstract colour-, picture- and 3D-brands with regards to artificial hip joint implants.
  • Advised Flixbus on the management of the trademark portfolio, including the international registration of the business relevant FlixMobility-trademarks. Furthermore advice on contract law.

HOYNG ROKH MONEGIER

HOYNG ROKH MONEGIER particularly acts for clients from the food, healthcare and consumer electronics sectors, who receive assistance with both strategic matters as well as infringement proceedings. Main contact and team head Thomas Schmitz has expertise in anti-counterfeiting as well as in the development of products and the development of advertising and marketing strategies. Other work pertains to licensing issues and IP due diligence.

Practice head(s):

Thomas Schmitz

Other key lawyers:

Christina Tenbrock

Key clients

Adlon Brand GmbH & Co KG

EOS

GlaxoSmithKline

Katjes Fassin

Piasten

SIG Combibloc Group

Steinel

Work highlights

  • Legal representation of the Adlon Brand GmbH & Co KG in legal proceedings against a reputable German luxury fashion company concerning a matter under trademark law, which has not been settled yet by the BGH (Federal Court).
  • Legal representation of GlaxoSmithKline in different proceedings concerning the defence of a 3D-brand in the course of a Europe-wide legal dispute. Ongoing advice on trademark and competition law, in particular on non-traditional trademarks.
  • Global coordination of the launch of a new sweets product by Piasten and in this context legal representation in a European trademark legal dispute. Ongoing advice on trademark and competition law.

JONAS Rechtsanwaltsgesellschaft mbH

JONAS Rechtsanwaltsgesellschaft mbH stands out for its approach tailored to entrepreneurial requirements. The team led by Karl Hamacher, Martin Viefhues and Nils Weber assists its clients with trade mark law matters pertaining to the development of products and legal requirements of trade mark use in sales and advertising. Handling sales law matters complements this offering.

Practice head(s):

Karl Hamacher; Martin Viefhues; Nils Weber

KLAKA Rechtsanwälte

With offices in Munich and Düsseldorf, KLAKA Rechtsanwälte has carved out a strong practice handling trade mark and design law matters and is particularly active in the automotive, fashion and luxury goods sectors as well as the pharmaceutical, energy and banking industries with clients including renowned German and international companies. In 2018 and 2019, the team continued to demonstrate its well-known strength in infringement and other contentious proceedings. Ralf Hackbarth heads the team, which includes litigation expert Carola Onken.

Practice head(s):

Ralf Hackbarth

Other key lawyers:

Stefan Abel; Carola Onken; Oliver Rauscher

Testimonials

‘The trademark law team around Ralf Hackbarth delivers excellent work, particularly in strategic proceedings.’

‘Ralf Hackbarth is very competent, with regards to law as well as business. He is a hard worker, who constantly updates his knowledge. He is very interested in recent legal topics and incorporates these into the advice.’

‘Ralf Hackbarth surely is one of the best German trademark lawyers and very experienced in court. His thoroughness ist the basis of his success.’

‘Stefan Abel is very competent, efficient and cost-conscious.’

‘Carola Onken is a fantastic expert of trademark law, and in an outstanding way is able, to successfully conduct administrative procedures at the DPMA or EUIPO.’

Key clients

Adelholzener Alpenquellen GmbH

BMW AG

Bureau National Interprofessionnel du Cognac

Deutscher Fußball-Bund

Infineon Technologies AG

Lafuma Mobilier SAS

Longchamp SAS

Poulsen Roser AS

Villeroy & Boch AG

Zentrale zur Bekämpfung unlauteren Wettbewerbs

Work highlights

  • Successful legal representation of the client BMW AG in infringement proceedings against Tchibo concerning the brand MINI in the merchandising sector.
  • Legal representation of the Deutscher Fußball-Bund in a legal dispute against the supermarket chain Real at the BPatG (Federal Patent Court) and EUIPO.
  • Comprehensive advice to and legal representation of Lafuma Mobilier SAS in several legal procedures, among them proceedings against a reputable online marketplace provider and distributor as well as proceedings against a TV-shopping channel and well-known discount supermarket chain concerning a design-deckchair, and in an infringement procedure against a furniture manufacturer concerning the imitation of another piece of outdoor furniture.

KNPZ Rechtsanwälte

Hamburg-based commercial law firm KNPZ Rechtsanwälte provides trade mark and competition law advice alongside expertise in copyright, antitrust and data protection law as well as press and freedom of speech law. Christian Klawitter is a key contact.

Other key lawyers:

Christian Klawitter

Lorenz Seidler Gossel

Munich-based IP boutique Lorenz Seidler Gossel is best known for its successful forensic practice but it also advises on the full range of trade mark law matters, from the development of national and international market strategies and representation in corresponding application proceedings to the administration of established portfolios. The team also has extensive experience in product piracy work and is adept at handling licensing issues. Reinhard Ingerl and Siegfried Jackermeier are among the most prominent members of the team and predominantly act in the contentious space.

Loschelder

In trade mark law, Loschelder handles both contentious proceedings and trade mark administration, while also regularly advising on issues that require competition law expertise. While most of its work has a national character, handling cross-border matters are also part of Stefan Maaßen's, Thomas Schulte-Beckhausen's and name partner Michael Loschelder's workload. All three partners cover a wide range of IP law work.

Key clients

1&1

Armacell GmbH

BIEK (Bundesverband Paket- und Expresslogistik)

B. Braun

Henkel AG & Co KGaA

Klosterfrau

Krüger GmbH & Co KG

Work highlights

  • Ongoing advice to the Henkel AG & Co KGaA on matters concerning integrity and trademark law in the sector for detergents and cleaning products. Increasingly on matters of product counterfeiting, too.
  • Ongoing advice to the Krüger GmbH & Co. KG on trademark law disputes. In addition advice on food legislation concerning product and packaging design.
  • Worldwide brand management for Klosterfrau. Comprehensive advice on matters concerning the label and domain.

Lubberger Lehment

Soft IP boutique Lubberger Lehment is rated as having one of the most successful litigation practices in the German market but the team also advises on transactional IP matters, which has been an area of growth since the opening of the Munich office in 2017. The team is well known for obtaining many landmark decisions before the Federal Court of Justice (BGH), whereby several recent rulings concerned matters at the intersection between trade mark law and digital economy, in particular online commerce. Acting for clients in the luxury cosmetics sector remains one of the team's key strengths, while also continuously expanding its expertise in other sectors. Main contacts are Cornelis Lehment and Benjamin Koch, who frequently handle contentious proceedings, as well as Martin Fiebig, who is equally active in the contentious space with a focus on fighting against internet-based product piracy, and Andreas Lubberger, who acts in contentious proceedings and advises on portfolio development and maintenance. Rani Mallick, who made partner in January 2019 and predominantly deals with counterfeiting and product imitation work is another key member of the team alongside media, luxury goods and start-up expert Kai Schmidt-Hern and Bernd Weichhaus, who frequently represents luxury goods manufacturers in contentious proceedings.

Testimonials

‘Very reliable and trustworthy, very foresighted defence strategies in international trademark- and design-matters, creative and professional conduct of negotiations, very friendly and collegial conversational tone, very good reachability.’

‘The team is very proactive and fast.’

‘A team of very experienced and pragmatic lawyers.’

‘Rani Mallick and Eva Maierski: High professional and technical competence in the conduct of proceedings concerning competition law, and in dealing with online-platforms.’

‘Rani Mallick: Works very thorough and precise, is always available and stands out through her pragmatism and commercial thinking.’

‘Benjamin Koch’s incredible IP-expertise, pronounced business sense and can-do-mentality, as well as his ability to think creatively, make him the perfect partner on all matters of trademark- and design protection, also in legal disputes and amicable settlements. His communication is above average clear, fast and always solution-oriented. Thanks to the slim law firm structure, the cost-benefit-ratio is very good.’

‘Kai Schmidt-Hern is very experienced and has a broad knowledge.’

Key clients

Adolf Würth

Apple

Coty

Desigual

Dyson

L’Oréal

Lekker Energie

Ortlieb

Shiseido

Thüga AG

Work highlights

  • Advice to the Adolf Würth GmbH & Co. KG on product counterfeiting.
  • Legal representation and advice to Apple on trademark and competition law.
  • Supported Emeram concerning IP rights in the course of a transaction in cooperation with another law firm.

Luther Rechtsanwaltsgesellschaft mbH

Luther Rechtsanwaltsgesellschaft mbH is just as well versed in portfolio management and portfolio development as in litigation before German courts. The development of national and international trade mark strategies as well as the coordination of cross-border disputes is also part of its offering. As part of a full-service firm, the team also handles transactional matters and frequently acts in conjunction with the firm's distribution law experts to assist with product launches and relaunches, among other issues. Detlef Mäder and Geert Johann Seelig form the core of the team.

Practice head(s):

Detlef Mäder; Geert Johann Seelig

Testimonials

‘Very good work across all technical departments. Comprehension of commercial matters. There is no art-for-art’s-sake-attitude.’

‘Very professional, high capacity of teamwork and very good internal network on intersection topics.’

‘Detlef Mäder: Equally high technical competence and high motivation. But also very solution- and practice-oriented. Never loses sight of the commercial aspects.’

‘Geert Johann Seelig has an outstanding expertise, is very strong analytically, always reachable, top-organised, reliable and client-oriented. One can tell, that he is a lawyer of passion.’

Key clients

achtung! GmbH

Daniel Wellington AB

EDCO Eindhoven B. V.

Harley Davidson

Imperial Tobacco Ltd./Reemtsma Cigarettenfabriken GmbH

Kamps GmbH

KIA MOTORS Corp.

Royal Appliance

The Nomad Company B. V.

Warsteiner Brauerei Haus Kramer KG/Warsteiner International KG

Work highlights

  • Ongoing advice to the Reemtsma Cigarettenfabriken GmbH on disputes concerning trademark and competition law. Management of the German brand portfolio.
  • Ongoing advice to the achtung! GmbH in all legal disputes concerning trademark and competition law, as well as out-of-court advice on matters regarding personal right, copyright law and data protection law.
  • Ongoing advice to the HRS GmbH on all matters concerning trademark and competition law. Management of the global brand portfolio.

Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB

Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB has one of the most active trade mark registration practices in the German market. In addition, Oliver Nilgen's team also handles a high volume of contentious work and is well versed in border seizure proceedings. Andreas Ebert-Weidenfeller joined Eisenführ Speiser as of counsel in May 2019.

Practice head(s):

Oliver Nilgen

Key clients

Acandis GmbH

ACO Severin Ahlmann GmbH & Co. KG

Cesra Arneimittel GmbH & Co. KG

O’Neal Europe GmbH & Co. KG

Revell GmbH

Warwick GmbH & Co. Music Equipment KG

Work highlights

  • Comprehensive advice and legal representation of the Acandis GmbH on trademark law, including the development of the strategy for trademark application and representation in legal disputes.
  • Comprehensive advice to the Cesra Arzneimittel GmbH & Co. KG on matters of trademark law, among other things on the strategy for trademark application and on the defence of the brand portfolio.
  • Comprehensive advice on the branding strategy under trademark law to the O’Neal Europe GmbH & Co. KG, legal disputes and border seizure proceedings.

Noerr

Noerr continues to focus on the establishment of its international practice and has seen an increase in cross-border instructions in both litigation and portfolio development. In addition, the practice has also been handling a number of international transactional instructions. The team led by Tobias Dolde, who divides his time between the Alicante and Munich offices, was further consolidated with the partner appointment of Christoph Rieken in January 2019 and the increase of its bench of associates in Hamburg and Munich.

Practice head(s):

Tobias Dolde

Other key lawyers:

Jessica Loew; Valentina Nieß; Janina Wortmann; Christoph Rieken

Norton Rose Fulbright

Norton Rose Fulbright regularly handles anti-counterfeiting work and stands out for its high proportion of border seizures. The practice also has expertise in the strategic development of trade mark portfolios and in infringement proceedings, including summary proceedings. In addition, the team led by Daniel Marschollek has extensive litigation experience.

Practice head(s):

Daniel Marschollek

Other key lawyers:

Manuel Merling

Key clients

AllStar (Converse)

BNP Paribas SA

Christian Dior Couture S. A.

Energizer Brands

Indeed Inc.

Nike European Operations NL B. V.

River Light V, LP (Tory Burch)

Sandvik Mining and Construction Crushing Technology

Sigave Production AG

Sunflower Management GmbH & Co. KG

Work highlights

  • Legal representation and advice to AllStar CV on legal proceedings concerning the distribution of counterfeit Converse-shoes, including the coordination of the different investigating authorities and coordination of the transnationally-led dispute.
  • Management of the global brand portfolio of the BNP Paribas S.A. and several group companies of the BNP Paribas-Group.
  • Strategic advice on trademark law to the Sunflower Management GmbH & Co. KG., including the management of the global brand portfolio and legal representation in appeal procedures.

Osborne Clarke

Osborne Clarke is one of the younger players in the market and focuses on clients from the automotive, consumer goods, life sciences, media, fashion and technology sectors. The team led by Marcus Sacré has grown rapidly since 2015, and was particularly strengthened by the arrival of Matthias Kloth from White & Case LLP in May 2016. Litigation work makes up for a key portion of the team's workload and includes both national and cross-border instructions as well as the coordination of international disputes.

Practice head(s):

Marcus Sacré

Other key lawyers:

Matthias Kloth

Testimonials

‘The lawyers are very well connected among each other and clearly work together on a friendly basis. Good availability. High affinity for technology, open to new technical solutions as well as an understanding of such solutions.’

‘Martin Soppe is an excellent lawyer, very good market knowledge of publishing, strong analytic and strategic skills.’

Key clients

A. T. U. Autoteile Unger GmbH & Co. KG

Bernardo Fashion LLC

BNP Best Natural Products GmbH & Co. KG

Fitness First Germany GmbH

Fitness First Germany GmbH und Fitness First Ltd.

Gesamtverband Autoteile-Handel e. V.

Hella Gutmann Solutions GmbH

PepsiCo Deutschland GmbH

Rockstar Inc.

Work highlights

  • Legal representation of Fitness First Germany GmbH in legal proceedings against the Deutscher Olympischer Sportbund on a client-led advertising campaign with Olympia Special, which the opposition considered a trademark violation.
  • Successful legal representation of Rockstar Inc. in court proceedings against the Czech company Luxuria concerning the brand REVOLT under trademark law, including the coordination of the proceedings against one distribution company and several trading companies
  • Legal representation of Bernardo Fashion LLC in legal proceedings on trademark law against the Willy Bogner AG & Co. KGaA concerning the B-logo of the client.

Preu Bohlig & Partner

Preu Bohlig & Partner advises on the planning and development of trade mark portfolios, including representation in associated application procedures. This includes trade mark law advice when setting up companies and due diligence assistance in connection with transactions. The team also handles a wide spectrum of contentious matters, from summary proceedings to principal proceedings and border seizure measures, as well as design law matters. By further strengthening its bench of associates in Hamburg and intensifying its cooperation with the Paris office, the practice managed to expand its market share. Christian Donle, Torben Düsing, Astrid Gérard, Andreas Haberl, Jürgen Schneider and Ludwig von Zumbusch are the team's key members.

Practice head(s):

Christian Donle; Torben Düsing; Astrid Gérard; Andreas Haberl; Jürgen Schneider; Ludwig von Zumbusch

Key clients

Candice Cooper AG

Ducati Motor Holding S. p. A.

Fossil Gruppe

Fresenius Medical Care Deutschland GmbH

Jan Böhmermann

Möve Bikes

National Pen

Ping Inc.

Thermofonte AG

Weiße Rose Stiftung e. V.

Work highlights

  • Legal representation of the Candice Cooper AG in breach of contract-proceedings concerning product counterfeiting.
  • Support on trademark law to the travel portal Charming Hideaways UG, in particular on trademark registration.
  • Legal representation of the Gustav Magenwirth GmbH & Co. KG in several trademark infringement proceedings.

Rospatt Osten Pross

Rospatt Osten Pross predominately handles contentious work and increasingly acts not only before German but also European courts. Representing clients at trade fairs and combating grey and parallel imports constitute key portions of the team's workload, while also handling design law matters. As an IP boutique with a solid patent law practice, the group is well equipped to guide clients through the entire spectrum of IP law. Hetti Hilge and Stephan von Petersdorff-Campen, who both handle a wide range of IP and competition law work, as well as patent lawyer Rüdiger Pansch are the main contacts.

Testimonials

‘Unusually broad and comprehensive expertise in the whole sector of industrial property rights. Large team with internal area-specialising.’

International outlook, internationally well connected, fast response, practice-oriented creative solutions, focusing on the essential points.’

Key clients

Avega

Ferrari

Heidenhain

Lock & Lock

Marjo Leder & Tracht

Sick AG

Sulzer Mixpac

TAM Fashion

Thonet

United Fashion Brands and Fashion FC Club

Work highlights

  • Advice to Almirall on safeguarding against parallel imports, including approval matters and legal representation in proceedings at the BGH (Federal Court).
  • Advice to several fashion clients, including TAM Fashion and Paul Green, on using first names as model names in the clothing and shoes sector in accordance with trademark law with a particular focus on the diverging jurisdiction of the lower instance courts and the BGH (Federal Court).
  • Ongoing advice to Heidenhain on trademark law, integrity and design law, including legal representation in violation proceedings. Representation in domain disputes.

Schultz-Süchting

Schultz-Süchting combines its trade mark and competition law expertise with copyright and media law advisory work. Lars Kröner, who has a specialism in pharmaceutical law, is one of the main contacts.

Other key lawyers:

Lars Kröner

SKW Schwarz Rechtsanwälte

SKW Schwarz Rechtsanwälte has carved out a strong practice acting for technology, media and IT sector clients. Due to the strong links between the firm's IP and IT practices, the team is well placed to handle eHealth and eSports work. Other key areas of expertise include influencer marketing, branded content and advertising, with advice spanning the development of national and international trade mark and design portfolios to the enforcement of IP rights before German and, in cooperation with foreign law firms, international courts. International trade mark clearing and anti-counterfeiting work are also key strengths. Margret Knitter, who made equity partner in January 2019, heads the practice, which includes recommended trade mark lawyer Ulrich Hildebrandt.

Practice head(s):

Margret Knitter

Other key lawyers:

Dorothee Altenburg; Ulrich Hildebrandt; Magnus Hirsch; Sandra Sophia Redeker; Sascha Pres

Testimonials

‘Competent, engaged, close to the client.’

‘The law firm is very modern and progressive. The newest developments in the economy and IT are immediately covered. The expertise in IP, particularly trademark law, is very, very high.’

‘The accessible, young team at SWK delivers world-class advice in the area of industrial property rights. Extremely smart heads in several locations are covering the rather broad area of industrial property rights (and its offshoots) perfectly well: from hardcore-trademark law to unfair competition law and completely new questions concerning international e-commerce to media and copyright law- no matter what, at SKW there is always competent advice and support on the project.’

‘With Ulrich Hildebrandt and Sascha Pres, the law firm has two extraordinary good trademark- and competition law solicitors, who, unlike competitors, also choose unconventional and successful ways.’

‘Margret Knitter is an excellent lawyer of trademark- and competition law, who grasps and processes complicated circumstances fast. She has a very high expertise in these areas and a lot of experience in court. She always keeps up with the times (or further onwards) with regards to the newest technological and economical developments.

‘Ulrich Hildebrandt is a mastermind on trademark law. Not only does he (really) know almost all relevant decisions of the German and European Courts and authorities, but can also interconnect those with a depth, that hasn’t been matched yet.

‘Magnus Hirsch: Great litigator. Finds solutions, where others have given up already.’

Key clients

Arnold & Richter Cine Technik GmbH & Co. Betriebs KG

Margarete Steiff GmbH

ECOVER Deutschland GmbH

BVB Merchandising GmbH

basic AG Lebensmittelhandel

Webasto SE

Work highlights

  • Legal representation of the AIWA Corporation in four cancellation actions against four AIWA-brands in the course of the relaunch of the brand AIWA. The application of this brand for the products of the client was attacked by AIWA Co. Ltd.
  • Successful representation of the Lotte Co. Ltd. in a European Court procedure concerning the trademark registration of the brand KOALA, after the Nestlé Unternehmungen Deutschland GmbH had filed a complaint against the trademark registration. The sticking point in the procedure was the rights-preserving use of a brand by the complainant.
  • Legal representation at court of the Paris Bar in an injunctive process at the LG München (Regional Court).

Squire Patton Boggs

Squire Patton Boggs handles both purely advisory mandates as well as contentious proceedings. Team head Reinhart Lange and his team regularly act in international matters, which require trade mark as well as competition law expertise. This includes the management of large international trade mark portfolios.

Practice head(s):

Reinhart Lange

Other key lawyers:

Iliana Haleen; Jens Petry; Eva Schalast

Key clients

Bora Creations SL

Cosnova GmbH

Deutsche Bank AG

GfK SE

LSG Lufthansa Sky Chefs

Tradewind GmbH

Zippo

Zott SE

Work highlights

  • Management of the worldwide brand portfolio of Bora Creations SL.
  • Management of the global brand portfolio of the Deutsche Bank AG. Comprehensive advice on trademark and competition law.
  • Comprehensive global advice on trademark and competition law for LSG Lufthansa Sky Chefs.

Taylor Wessing

With the arrival of salary partner Sebastian Fischoeder from Bird & Bird in September 2019, Taylor Wessing expanded its already sizable team and strengthened its expertise in colour, three-dimensional trade marks and trade mark protection for slogans. The practice has a particularly strong profile for international mandates, most notably in trade mark and design portfolio development, which it regularly handles in conjunction with colleagues across its network. In the contentious space, the team also receives regular instructions with cross-border elements. Olaf Gillert heads the team. Jan Schumacher left the firm in June 2019 to become a founding partner of Schmitt Teworte-Vey Simon & Schumacher.

Practice head(s):

Olaf Gillert

Other key lawyers:

Wiebke Baars; Thomas Raab; Thorsten Troge; Dirk Wieddekind; Sebastian Fischoeder

Key clients

ABB Asea Brown Boveri Ltd.

Alois Dallmayr Kaffee

American Airlines

Check24

DS Produkte GmbH

FC Bayern München

HP Hewlett Packard

Ohropax

Scotch Whisky Association

Tedi

Work highlights

  • Comprehensive advice to the ABB Asea Brown Boveri Ltd. as well as legal representation in infringement proceedings and in German and European registration and appeal processes.
  • Coordination of the EMEA-brand portfolio of American Airlines, advice on strategic portfolio matters and representation in legal disputes.
  • Legal representation and advice to the FC Bayern München on trademark and domain disputes.

Vossius & Partner

Vossius & Partner is experienced in the management and development of portfolios as well as in contentious proceedings with clients including well-known national and international companies. In combination with its broad sector expertise, the team led by Mathias Kleespies is well equipped to guide clients through various scenarios and has extensive experience in design, competition and copyright law.

Practice head(s):

Mathias Kleespies

Other key lawyers:

Paul Kretschmar

Testimonials

‘Brilliant service at all times and very professional advice.

The trade mark team is very strong and the department is more independent than at other firms – nobody else (patent attorneys) interfere in matters and the result is of high quality.

Paul Kretschmar, brilliant strategist. He always reliably recognises the gaps in the oponent’s argumentation and uses them, but never in an unfair manner. He doesn’t take on every case and is not merely interested in strengthening his reputation by taking cases to the highest courts unneccessarily. He advises prominent brands and I have always happily worked with him but not so much against him.

‘Mathias Kleespies and his team are always fully at the client’s disposal.’

‘Simone Schäfer summarizes complex issues in a comprehensible manner and offers clear recommendations for action including all pros and cons. She is remarkably experienced and a master of networking, also outside her own firm, in order to achieve success.’

‘Leyre Barragan makes very reliable statements and obtains a second opinion from more experienced colleagues.’  

‘The team is professional and responsive. Paul Kretschmar is extremely reliable and a very nice person to work with.’  

Key clients

Boffi S. p. A. e De Padova

BSI

Geniatech

MAN Truck & Bus

Minges Kafferösterei

Ornua Co-Operative Limited

Remitite Ltd.

Superdry

Unify and Atos

VARO

Work highlights

  • Global trademark registration for a new product highlight by MAN Truck & Bus in the area of e-mobility and autonomous driving.
  • Takeover of the whole support on matters of trademark law of the Ornua Co-Operative Limited, including the well-known brand Kerrygold.
  • Legal representation of Remitite in court proceedings against Beele Engineering B. V. under trademark infringement law concerning a brand of fire-resistant wire insulation.

Zenk Rechtsanwälte

Zenk Rechtsanwälte specialises in the food and consumer goods sectors, leading to frequent instructions from manufacturers and retailers on trade mark and competition law matters. The team jointly led by Stefanie Hartwig, Carsten Oelrichs and Sonja Schulz also has in-depth knowledge of food law. It handles a range of purely advisory matters, such as product launches, but also represents clients in disputes concerning summary proceedings alongside major proceedings before the Federal Court of Justice (BGH).

Practice head(s):

Stefanie Hartwig; Carsten Oelrichs; Sonja Schulz

Key clients

Dextro Energy GmbH & Co. KG

Iglo GmbH

Peter Kölln KGaA

Unilever Deutschland GmbH

Theo Müller GmbH & Co. KG

Zertus Unternehmensgruppe

Work highlights

  • Legal representation of the Dextro Energy GmbH & Co. KG in court proceedings at the BGH (Federal Court) concerning a 3D-brand cancellation procedure. Management of the global brand portfolio and advice on competition law.
  • Advice to the Iglo GmbH on the relaunch and re-introduction of all products. Ongoing advice on branding concepts and public offers of a reward.
  • Legal representation of the Unilever Deutschland GmbH in several default actions and preliminary injunctions, among other things to combat counterfeit Magnum-, Langnese- and Cremissimo-products by discount supermarkets.