Brands symbolize values ​​and relationships.

Sylvio Schiller

Top 3 of German law firm for registrations German trademarks

World Trademark ReviewWTR 1000

Contract expertise

  •  License Agreement
  • Know-how contract
  • Franchising agreement
  • Non disclouser agreement
  • Branding Guidelines

Trademark law

Trademarks are of immense value to companies and become more and more important in competition for customers. Together with our clients, we develop trademark strategies which start as early as from the time of creating the trade name. In this respect, we investigate whether such trade name is capable of being protected or not, and whether it infringes upon third-party rights or not.

When we apply for the registration of your trademark, we advise and assist you before the national trademark offices (e.g. the German Patent and Trademark Office) or the Office for Harmonization in the Internal Market (OHIM) and defend your trademark against any possible opposition. Our activities also comprise trademark monitoring, including examination and elimination of trademark infringements, as well as trademark development, e.g. by expansion to further countries by means of international trademark applications through WIPO.

New ideas need new trademarks. Sometimes rebranding is necessary to re-position a product. The development of a trademark requires much energy, time and financial means. Therefore, legal assistance is advisable for this purpose. We support our clients by investigations and assessments of the protectability as early as in the creative phase. Our legal analyses help to avoid trademark conflicts at a later time.  Moreover, we also consider recommendations which help to create the strongest possible trademark.

Apart from conventional trademark types such as word marks and word/figurative marks, we provide advice regarding three-dimensional marks for the protection of products or packaging, colour trademarks, sound marks and olfactory marks as well as positional marks. In this way, our clients can use the entire spectrum of trademark protection according to their specific requirements.

A trademark registration without prior trademark search may cause trademark infringements and consequentially lead to the assertion of cease and desist, damage and further claims by third parties. Apart from the cost involved, this may have as a consequence that company names or product names must be changed within a short period of time and planned product launches must be rearranged or even cancelled.

Within the scope of trademark developments, we therefore recommend that a trademark search be carried out as early as during the trademark definition or naming process. In case of such a search, we search the relevant databases for identical and similar marks. Afterwards we provide our client with a specific risk assessment on the basis of the search results evaluated within the scope of our advisory activity, and we give recommendations as to how existing risks can be avoided and how the further development of the planned name or mark must be accordingly adjusted.

Trademark protection is achieved either by entering such marks in a trademark register or by using them in the course of trade, provided that they have acquired a secondary meaning amongst the relevant class of persons or have become well known. While the last two points merely apply to a few marks and must be proved in a costly and time-consuming manner in a potential litigation, such aforementioned entry in a register is relatively easy to implement.

In the meantime, we look after more than 1,000 trademarks for which we have applied for registration in Germany, Europe and all over the world.  Thus, we can rely on extensive know-how which we use during our advisory activity for our clients. For several years now, we have been among the top 10 law firms specializing in trademark law in Germany.

We coordinate the trademark strategy with the specific requirements and possibilities of our clients. For a medium-sized or a startup company, for example, a German trademark or a Community trademark can make sense in the first step. Afterwards the extension to other single countries through WIPO can be an option for the expansion to other markets. Beyond that, we also establish trademark rights together with partner attorneys in countries outside this contract system.

Our service does not end with the registration. We also assist our clients in the looking after of their trademark portfolios. We take care of numerous smaller portfolios in Germany, but also of larger ones on an international level.

Primarily, trademark conflicts can affect companies in two different ways. In such cases, it is necessary to either defend a company’s own trademark rights or to defend oneself against claims due to trademark infringements on the part of third parties.

In both situations, we advise our clients and show them efficient strategies if third parties violate the scope of protection of our clients’ trademarks. Such strategies can include conventional written warnings and, if applicable, preliminary injunction proceedings or principal proceedings, or oppositions or cancellation proceedings before the trademark offices in Germany and Europe if the elimination of the conflict due to younger trademarks is at the stake. The Internet opens up many new opportunities for trademark infringements which may impair the image and the value of a mark. In this respect, own protective measures must be regularly taken and adjusted and the current jurisdiction must be kept in view.

Even in the event that our clients violate the trademarks of third parties, we will look for optimal solutions to eliminate such conflict in a time and cost-efficient manner. In this context, we check whether the claims so asserted actually exist and present solutions to eliminate the conflict.

In both situations, we pay particular attention to a fast and cost-efficient solution to avoid lengthy disputes which in some cases even may have to be conducted in several countries. Where unavoidable, we represent our clients in court, taking into account all possibilities.

Trademark oppositions may occur in spite of trademark searches carried out in the preparatory stage. The risk of such trademark oppositions is somewhat higher in case of Community trademarks, since oppositions may not only be made on the basis of earlier Community trademarks, but also on the basis of national marks or company marks in the 28 member states. With the main focus on finding an effective solution for such opposition proceedings, we regularly try to resolve the conflict and therefore to shorten the official proceedings by means of prior rights agreements and/or delimitation agreements with the trademark owners.

If this is not possible, we will conduct the official proceedings including the appeal proceedings for our clients, and we will also use innovative search options for the preparation in order to make the best use of the jurisdiction.

If, within the scope of trademark monitoring, potential trademark conflicts are detected and out-of-court attempts to reach an agreement fail, we will file oppositions with the competent trademark authorities for our clients, and we will support our clients on the basis of our high professional expertise.

There is no legal definition for the term “product piracy”. According to the widespread opinion, the term “product piracy” describes the matter of fact of the professional, criminal infringement of industrial property rights, i.e. the systematic, massive, intentional infringement of existing property rights which is committed with the intention of making a profit as well as the infringement of the legal positions protected by law against unfair competition.

We advise our clients in cases of combating product and/or trademark piracy, and we proceed successfully against infringers. For these purposes, we apply the extensive rights provided by the German and European legislation, for example, in order to withdraw the merchandise concerned from circulation on the basis of customs seizures, or to hold accountable those responsible for the damage, just to name a few examples.  It is exactly these cases which require a high level of cooperation with our clients in order to ensure an intensive and fast information flow. At the same time, we are in regular contact with the competent authorities, e.g. the customs authorities or the public prosecutor’s offices in this regard. This enables us to efficiently enforce our clients‘ rights.

An IP due diligence review may become necessary in different situations. For example, investors may be interested in getting to know the value of their investment, or synergies and development options may be relevant in case of company takeovers.

According to our experience, IP due diligence reviews are important to the decision-making process. They are often critical in terms of time, and the budget planned for such reviews is limited.

Under this aspect, we conduct a focused and high-quality due diligence review for you. During this review, we focus on the following 4 core areas:

  1. Evaluation of the general strengths and weaknesses of a property right portfolio;
  2. Elaboration of the critical property rights;
  3. Evaluation of the strength of the critical property rights, in consideration of the relevant legal systems;
  4.  Freedom-to-operate analysis regarding the project objectives.

Our well-founded, legal evaluation is supplemented by an economic evaluation where required. In such cases, we cooperate with specialized auditors.

Within the scope of our advisory service with regard to the trademark law, we regularly advise our clients on issues relating to the drafting and negotiating of contracts, e.g. licence agreements, cooperation agreements, merchandising agreements and trademark purchase agreements, taking as a basis the trademark strategy developed.

For the settlement of trademark conflicts, we regularly negotiate delimitation and prior rights agreements with the opposite party. In doing so, we ensure that our clients’ interests are protected in the best possible manner.

Our approach is to ensure that contracts and agreements are drawn up in clear terms and in such a manner that future disputes will be avoided and provisions are made for hitherto unknown trademark developments.

Do you have any further questions? Our foregoing general information cannot replace legal advice in individual cases. If you require legal advice or legal representation for your specific concern, we will be pleased to be at your disposal. Simply call or write us.

  • Legal defence in case of a written warning due to trademark infringement
  • Enforcement of trademark rights
  • Legal defence in out-of-court trademark disputes
  • Provision of legal advice for your trademark strategy
  • Application for the registration of trademarks (national and international)
  • Search for similar marks and trademark expert opinion
  • Representation in trademark disputes before courts
  • Provision of advice and implementation of an opposition