Trade marks in Germany

Bird & Bird LLP ‘s team is active in the development and management of large trade mark portfolios. Integrated into the international law firm and led by Christian Harmsen (Düsseldorf), the German team is well positioned for cross-border mandates, both in prosecution matters and large contentious proceedings. Sector focuses include the technology, automotive, life sciences, media and consumer goods industries. Among the client roster are large companies as well as newly added major players. In addition to trade mark, design and competition law expertise, the team also advises on copyright and the protected designation of origin act. The German team is active at the Düsseldorf, Frankfurt, Hamburg and Munich locations and regularly cooperates with other practices, particularly the M&A group. The firm also offers legal tech tool Talisman for international trade mark monitoring and product piracy matters, with frequent instructions from the luxury goods, fashion and cosmetics sectors. In May 2021, Roman Brtka made partner in Munich. Richard Dissmann is renowned for his experience in litigation, particularly in product piracy issues.

Hamburg IP boutique Harmsen Utescher is among the largest portfolio management practices in Germany as well as among the most renowned addresses for major infringement proceedings. In addition to trade mark and competition law, the firm also advises on interface matters, such as copyright, antitrust, food and cosmetics law as well as data protection. Despite its only office in Germany, the team pursues an international approach, with longstanding experience in proceedings before the EUIPO. Beyond Europe, the group calls upon the expertise of selected international law firms. The main contacts are Karin Sandberg, Till Lampel, Rainer Kaase and Martin Kefferpütz. Jan Peter Heidenreich left the firm in January 2021 and joined Preu Bohlig & Partner.

Hogan Lovells International LLP is experienced in managing large international trade mark portfolios, while the group frequently cooperates with the Alicante office and offers numerous legal tech solutions. Among the core competencies are design law and litigation, including prosecution and infringement proceedings, with particular expertise in the fashion industry. The unusually large team is also experienced in the consumer goods, automotive, pharmaceuticals, life sciences as well as technology and telecoms sectors. Recent advisory focuses include soft IP aspects of social media and influencer marketing, e-sports and gaming, FinTech and legal tech as well as digitisation and sustainability issues. Another key focus is the EU Digital Services Act. The soft IP practice is integrated into the firm’s IPMT team, which is led globally by Burkhart Goebel in Hamburg, in Europe by patent lawyer Miriam Gundt in Düsseldorf and in Germany by Andreas Bothe, also in Hamburg. Yvonne Draheim (Hamburg) is one of Germany’s most recognised litigators. The firm’s large team of counsels includes Mareike Hunfeld (expertise in colour marks) and Patrick Fromlowitz (regularly advises companies in the pharmaceutical, construction, fashion and oil industries) in Hamburg as well as Marion Fischer (specialises in life sciences and automotive sectors, among others) in Munich.

IP boutique KLAKA Rechtsanwälte is renowned for its expertise in comprehensive contentious proceedings before the courts, the DPMA and the EUIPO. Particularly practice head Ralf Hackbarth is well-known for advising on major trade mark and design law disputes in the automotive sector, among others. The client roster includes numerous well-known German corporations and international players, including from other European countries as well as Japan and the US. Florian Schmidt-Sauerhöfer, Carola Onken, Oliver Rauscher, Stefan Abel, Susanne Schackert and Andreas Schulz are experienced in soft IP matters and all based in Munich. The firm also has an office in Düsseldorf.

Lubberger Lehment is renowned for supporting landmark proceedings before the BGH, with regular instructions from large international corporations and commerce platforms on the opposing side. Another key focus is the development and management of large trade mark and design portfolios. The boutique, with offices in Berlin, where Andreas Lubberger (trade mark, design and competition law), Kai Schmidt-Hern (the media and luxury goods sector and startup advice), Rani Mallick (influencer marketing, counterfeit products, parallel imports), Bernd Weichhaus (competition, trade mark, copyright and antitrust distribution law) and Martin Fiebig (product piracy, commerce platforms, border seizures, transactional IP support) are based, Hamburg as the location of Cornelis Lehment (competition and trade mark law), and Munich, where Benjamin Koch is expanding the firm’s transaction practice, is well-known for its prestigious client portfolio, particularly in the luxury goods sector. David Weller in Hamburg, a specialist in media, competition and trade mark law, made partner in January 2021.

Munich-based IP boutique Bardehle Pagenberg comprehensively advises on soft IP matters. The trade mark practice demonstrates strengths both in portfolio development and management as well as in contentious authorities and court proceedings. Design law constitutes another focus area, where the team has experience in the fashion, furniture and medical technology sectors, with the firm’s own graphic designer underlining the importance of the practice. The service offering further includes border seizure procedures, licensing agreements and clearing and contractual advice in the merchandising space. The group also handles transactional issues. Startups and German medium-sized companies are supported via the offices in Munich, Düsseldorf, Paris and Barcelona, while the group also maintains connections to firms in the US and Asia for cross-border matters. Expertise in competition, copyright and domain law complement the soft IP offering. Claus Eckhartt heads the team.

CBH Rechtsanwälte‘s soft IP team is mainly located in Cologne and Hamburg, and focuses on supporting clients from the automotive, healthcare, beauty care and luxury goods sectors. Specialised in advising German medium-sized companies and large international corporations, the team is well versed in trade mark and design law and assists with prosecution and contentious proceedings in Germany and internationally. Nadja Siebertz is based in Cologne and specialises in portfolio development and strategic brand management and is also qualified as mediator; she was elected managing director of the firm in March 2021. She co-manages the office with Johannes Ristelhuber, who specialises in D&O liability and corporate law. Ingo Jung has experience in trade mark and competition law as well as copyright and media law.

CMS fields a team specialised in colour and shape marks. The group advises on the strategic development of protection strategies as well as on some of the largest infringement proceedings in the German market. Life sciences and pharmaceuticals constitute the team’s key industry focuses, which noteably increased in 2020. Led by Markus Deck in Düsseldorf and Roland Wiring in Hamburg, the team advises on trade mark, competition and trade secrets law, as well as regulatory issues, especially in the healthcare and FMCG sectors. Pertaining to the latter, the team provides interdisciplinary support for the clearing of marketing campaigns, claims and product labels, with a noteworthy increase in sustainability-related mandates. Cross-border matters are another strength of the team thanks to the firm’s international platform. Design law experts Gordian Hasselblatt in Cologne and Nikolas Gregor in Hamburg are among the key contacts. In Stuttgart, Klaus Ikas retired in 2020, while Julia Dönch, specialised in trade mark, competition, copyright and publishing law, joined the team in January 2021, she was previously at BDO Legal.

Instructed by media companies and consumer goods manufacturers, Gleiss Lutz regularly advises on trade mark law in the context of the Internet of Things. Led by practice head Stefan Weidert in Berlin, the team also handles trade mark aspects of social media and apps. The full-service approach is utilised in matters at the interface with IT and data protection law. Renowned for its specialised know-how in 3D, colour and colour combinations as well as position marks, the practice has longstanding experience in infringement proceedings against competitors and is also well equipped for supporting strategic portfolio developments in Germany and internationally. Another key topic is the clearing of advertising measures and marketing campaigns. Stefan Völker advises on trade mark law, including both strategic portfolio issues and contentious proceedings.

International firm Taylor Wessing is well positioned for cross-border mandates. Germany was among the countries, where the firm broadened its prosecution and litigation offering with the expansion of newly acquired as well as existing mandates. The practice advises at national and international level and assisted with numerous China-related matters in 2020 and 2021 via the IP agency Beijing Tailun Intellectual Property Agency Co. Ltd, founded in 2019, under the leadership of Thomas Pattloch and Helen Wan, formerly at the firm’s Beijing office. The soft IP practice is increasingly active in the life sciences sector, reflecting the firm's overall strength in this regard. Led by Olaf Gillert in Düsseldorf, clients are advised by teams tailored to their needs as well as specific regions. Nikolai Voss, who has expertise in the consumer goods and retail sectors, was appointed salary partner in July 2020.

Frankfurt-based bock legal partnership of lawyers focuses on contentious proceedings. The renowned design dispute practice stands out among its competitors, but is also a good choice for trade mark proceedings, both at national and international level. The team, led by practice head Andreas Bock, also includes well-known Jan Müller-Broich (design infringement proceedings) and Reinhard Döring (IP and litigation), and is frequently instructed by German medium-sized companies as well as large international corporations, the latter often from the luxury goods industry. 

Munich-based IP boutique Hoffmann Eitle added forensic capacities to its experienced prosecution practice. The group is jointly led by Wedig von der Osten-Sacken and Michaela Ring and often takes on a leading role in contentious proceedings at national and international level. Clients call upon the cross-border expertise via the firm’s offices in London, Madrid, Milan and Amsterdam, with increased instructions from Chinese companies. Other key topics include design law and transaction-related matters. Isabelle Kuschel (global trade mark and design administration and enforcement) made partner in January 2021.

In Berlin, Munich, Hamburg and Dresden, Noerr focuses on contentious proceedings pertaining to both trade mark and design law. Application support and the portfolio development practice are closely tied to the Alicante office, where practice head Tobias Dolde routinely coordinates related mandates with the Munich office. Thanks to the international network, including one office in Moscow, the firm is a good choice for cross-border mandates, especially litigation. IP advice in the insolvency and restructuring context constitutes another growth area. The group expanded with the promotion of Christoph Rieken to partner (trade mark, unfair competition and design law as well as copyright) and Jessica Loew to senior counsel (trade mark, design, copyright and competition law) in January 2021.

IP boutique Rospatt Osten Pross, based in Düsseldorf and Mannheim, is renowned for its powerful trade mark, design and copyright litigation practice. Clients benefit from the firm’s expertise in the hard IP and soft IP arena, offering a one-stop IP shop service. The team is particularly active in advising on grey and parallel imports of pharmaceuticals and low-cost electronic goods. In 2020, the team achieved two major successes, in October before the ECJ on the right-preserving use of the Testarossa trade mark and once before the ECJ on the risk of confusion with regard to non-distinctive trade marks, specifically the CORNEREYE trade mark. Key figures are Rüdiger Pansch (patent, trade mark and design law), litigator Max von Rospatt as well as Hetti Hilge and Stephan von Petersdorff-Campen, who cover all IP and competition law matters.

SKW Schwarz Rechtsanwälte‘s advice on trade mark law mirrors the firm’s industry focus on the IT, digital economy, media and technology sectors. Among the key topics are e-sports, branded content, including influencer marketing, as well as medicinal cannabis and the growth area FMCG, especially pertaining to the food and cosmetics industries. The service offering also includes strategic portfolio advice and licensing agreements, including distribution matters, and the increasingly busy litigation practice. The latter primarily expanded with cross-border mandates, with additional expertise from the TerraLex network, among others. The importance of legal tech was emphasised with the founding of the SKW@Tech GmbH. Led by practice head Sascha Pres in Berlin, the group also includes Margret Knitter and Dorothee Altenburg in Munich, who have longstanding expertise in IP, Berlin-based Sandra Sophia Redeker , Markus Brock as well as  Markus von Fuchs and Magnus Hirsch in Frankfurt. Ulrich Hildebrandt joined Hildebrandt in January 2021.

Vossius & Partner is particularly well-known for its trade mark and copyright litigation practice, the latter especially in the field of applied art with fundamental decisions won in bad faith trade mark applications and colour marks. Strategic portfolio development advice constitutes the second cornerstone of the practice, headed by Munich-based practice leader Mathias Kleespies. The team expanded with the appointment of Peter Johannes Klein (trade mark, design, competition, food and internet law) in January 2021.

DLA Piper stands out with sector focuses on the media, entertainment, technology and consumer goods industries. Integrated into the firm’s global network, the team increasingly advises clients from the hospitality and digital economy sectors on soft IP matters, while legal tech support is another core strength. The advice on trade mark and design law covers the entire life cycle of products and services, with additional capacities in domain, title and competition law. A combination of strategic portfolio advice and clients’ representation in contentious proceedings result in a busy workload for the practice, which expanded further in 2020 by acquiring and expanding new and existing mandates. Stefan Engels in Hamburg heads the team. Other key contacts are litigator Burkhard Führmeyer and Kai Tumbrägel in Cologne, who is active in media and sports law.

Heuking Kühn Lüer Wojtek combines its strong trade mark and design litigation practice with strategic portfolio management skills, including transactional matters, the drafting of licensing agreements and distribution law issues. The advice on copyright law is another strength. Led by practice heads Dominik Eickemeier in Cologne and Markus Lennartz in Frankfurt, the group’s industry focuses include the fashion, entertainment and electronics sectors. Trade mark and design specialist Christian Spintig in Hamburg and Andreas Schabenberger in Stuttgart, who is experienced in trade mark and competition law as well as in medical device law, are further key figures.

HOYNG ROKH MONEGIER expanded its soft IP team with the partner appointments of Mathis Breuer in January 2021 and Ivan Dimitrov in January 2022 respectively. The European IP boutique with offices in Germany, France, Spain and Belgium, fields Christina Tenbrock and practice head Thomas Schmitz, both like Breuer in Düsseldorf, offers advice on trade mark and design law, the geographical indications of origin act and advertising law, among others. The team has particular sector expertise in the food, cosmetics, life sciences and consumer electronics sectors. The partner trio is renowned for its litigation experience and border seizure practice with additional capacities in application strategies and licensing agreements.

Luther Rechtsanwaltsgesellschaft mbH fields Geert Johann Seelig in Hamburg and Detlef Mäder in Cologne and is renowned for its trade mark portfolio expertise in the luxury goods, consumer goods and retail sectors. Other focus areas are healthcare and life sciences as well as the logistics industry. The firm’s international outlook is evident in the management of global trade mark portfolios, as well as its cross-border litigation and licensing agreement practice. The group frequently cooperates with Asian law firms. The joint founding of international organisation unyer with French law firm FIDAL in May 2021 further emphasises the international orientation.

Osborne Clarke reflects the firm’s international positioning, especially in contentious proceedings. The key contact is Hamburg-based litigator and trade mark and competition law expert Matthias Kloth, while practice head Marcus Sacré in Cologne is also active in soft IP disputes. Industry focus areas include the automotive, consumer goods and sports sectors.

D Young & Co LLP opened its German office in 2016 and expanded under the leadership of Jana Bogatz. The team’s integration into the firm, which is well-known in Great Britain, is a particular strength for cross-border mandates, while Bogatz and her team also established an independent practice in the last six years. The group advises on trade mark, design, competition and copyright law. 

Dentons‘ strengths are litigation, including cross-border, border seizure and product piracy matters, trade mark portfolio management as well as contract law advice, including cooperation, IT and project-related issues. The team also assists with transactions and its industry focuses include the automotive, fashion and life sciences industries. Constantin Rehaag in Frankfurt and Stefan Dittmer in Berlin head the team, which also demonstrates know-how at the interface between IP and criminal law and regularly cooperates with the Paris team. In April 2021, the Berlin office was strengthened with counsel Julia Wiencke (formerly at Ernst & Young Law; digitisation, trade mark and title protection law) and the Frankfurt office with counsel Nadine Neumeier (formerly at Baker McKenzie; IT, data protection, e-commerce). Berlin-based Jana Semrau-Brandt specialises in IP, IT and licensing agreements and made counsel in March 2021.

Norton Rose Fulbright is well positioned for cross-border mandates due to the firm’s international network. Among the core competencies are the management of large trade mark portfolios for luxury goods companies, authorities proceedings, as well as the judicial enforcement of trade marks and designs. Led by practice head Daniel Marschollek, the German team routinely cooperates with the London and Paris teams, not least due to legal tech solutions. A particular strength is the advice on product piracy and border seizure scenarios, with several clients from the EU. Counsel Manuel Merling (sports goods, luxury goods and technology industries) is the second key contact.

Eversheds Sutherland focuses on trade mark portfolio management, forensic advice as well as licensing matters. Large international companies and German medium-sized companies are among the client roster, which utilises the firm’s international network with regard to multi-jurisdictional matters. Practice head Tobias Maier in Munich also co-heads the international sector group Healthcare & Life Sciences and has corresponding industry know-how. Another strength is the expertise in sports and media law, where Axel Zimmermann in Munich, who jointly leads the German soft IP practice with Maier, is the key contact. The firm’s headquarters are in Munich, while the Hamburg office expanded with principal associate Thomas Farkas, who focuses on fashion and premium brands.

Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB is a popular choice for EU trade mark applicants. The IP boutique’s team, including patent experts, is well-versed in authorities and court proceedings and also offers cross-border support thanks to its British office and the international team. Counsel Oliver Nilgen heads the trade mark practice in Munich, while patent law specialist Tobias Wuttke is in charge of the firm’s litigation experts. In January 2022, the firm merged with Würtenberger Rechtsanwälte and was thus able to add Gert Würtenberger (trade mark application and infringement proceedings as well as plant variety protection law) to the team, among others.

IP boutique Uexküll & Stolberg fields an experienced prosecution practice, with particular expertise in authorities proceedings before the DPMA and EUIPO. Additional experience in court proceedings and strategic advice on the development of trade mark and design portfolios complement the comprehensive service offering. The team also covers matters pertaining to product piracy and assists with expert opinions in the validation and infringement context. Frank Dettmann in Hamburg heads the team.