Trademark Law
Trademark Application
Do you have an image in mind or have you found a name? Do you know what you want to use your mark for? Do you want to register your mark as a trademark and are looking for assistance?
We’ll work with you to develop protection strategies—from deciding whether to register your trademark in Germany, throughout Europe, or internationally, to determining whether design rights or copyrights can complement your mark. We’ll guide you through the maze of classifications of goods and services, work with you to define the scope of your trademark application, and verify whether the mark is actually available for use. So-called conflict checks can protect you from unpleasant surprises later on, in case your mark has already been registered in this or a similar form. But there are often solutions for that as well.
We handle the registration process for you, from start to finish.
Opposition to a Trademark Application, Cancellation Proceedings
You’ve put a lot of thought into the word, image, or symbol for which you filed a trademark application—and now this: An opposition has been filed against your trademark! Whether or not this opposition is justified could determine whether your trademark stands, or whether you’ll have to abandon it, rethink your strategy, or look for alternatives. Due to the opposition, you’ll have to defend your trademark in an administrative proceeding whose outcome depends on factual circumstances and complex legal arguments—or you’ll need to seek a coexistence agreement with holders of prior rights, which, of course, must be carefully drafted.
We’ll handle this for you and provide you with sound advice.
Register Monitoring
Have you applied for a trademark? Is it registered? Do you have the certificate? Congratulations! What’s next?
Intellectual property rights are exclusive rights. No third party may use an identical or similar mark in the classes of goods and services in which you are registered. It makes sense to monitor this closely. If you don’t, you risk diluting your exclusive rights and, in the worst case, allowing competition in areas where you once had exclusive rights. We set up monitoring processes for you through the relevant registries. We alert you to any marks that are applied for and are too similar to yours. We file oppositions, conduct cancellation proceedings, negotiate demarcation agreements, or enforce your rights through civil litigation. We provide specific recommendations for action on a case-by-case basis or protect the trademarks in your entire trademark portfolio following prior consultation.
Naturally, we also handle the monitoring of your term of protection.
Monitoring of Term of Protection
Having complete control over the term of protection for your trademarks is a must. We’re the deadline experts.
Especially with a large trademark portfolio, deadlines for paying renewal fees can quickly slip your mind after ten years. Plus, the term of protection varies for each trademark. This means you need to keep a constant eye on your portfolio—and it’s easy to overlook something. The consequence of missing a deadline: Your trademark is gone, and the risk that someone else will register your old or a similar mark is very real.
We are experts in monitoring deadlines, and the entire structure of our firm is geared toward handling such matters. And best of all: You no longer have to worry about it.
As your representatives before the trademark offices, we filter incoming mail for you and handle responses, deadlines, and payments. We notify you in a timely manner, make payments on your behalf if requested, and review with you whether and to what extent the goods and service classes should be maintained.
Speaking of deadlines: did you know that you risk jeopardizing the validity of your trademark, in whole or in part, if you fail to commence use of the mark—or do so only partially—in the registered classes within the statutory deadlines? We keep an eye on this for you as well and, upon request, document the commencement of use for future evidentiary purposes.
Enforcing and Defending Your Trademark Rights
Your brand belongs to you, and that’s how it should stay. How often do competitors try to capitalize on a brand’s commercial success?
From exact copies to similar word or figurative marks—it happens all the time, sometimes by accident, but often with the goal of riding the wave of your success or disrupting your business growth. You came up with the idea for the brand, and you’ve invested in it—not only in the brand itself, but above all in marketing and in establishing a presence in the market with your branded products or services. By asserting your claims under civil law, you defend the fruits of your labor. We’re familiar with the full range of remedies, from inspection to injunctions, disclosure, damages, and even destruction. From countless cases in the fields of intellectual property and copyright law, we are familiar with the procedural options available.
We know how best to enforce your rights.
We feel at home in all courts in Germany that deal with intellectual property matters; many judges know and value us as attorneys who consistently advocate for our clients while always keeping economic realities in mind.
Customs and Border Seizure
Protect your trademark rights even at the European Union’s internal borders.
Year after year, millions of standard containers are handled at the Port of Hamburg and, in this way, transported into or out of the European Union and the single market. It goes without saying that there are also some bad actors involved. Illegal copies, counterfeit products, and fake labels or certification marks deal a severe blow to rights holders and national economies as a whole. Customs authorities play a vital role in combating counterfeiting and product piracy—which makes it all the more important to be able to react quickly. We utilize border seizure procedures on your behalf, enabling you to defend your rights and prevent products that infringe upon them from even entering the single market.
We also know the relevant contacts at the Port of Hamburg and are on site for you when you need us. We understand that swift action is required in seizure proceedings to prevent counterfeit or mislabeled goods from entering the European market, and we also know that an unjustified seizure can give rise to claims for damages. We implement the appropriate measures for you effectively and judiciously.
Real-World Monitoring (Mystery Shopping, Platform Monitoring)
Simply monitoring trademark registries no longer helps you in the real world. What if third parties use identical or similar trademarks for their products? What if design or copyright laws are infringed?
We work closely with service providers who can help organize the prosecution of intellectual property infringements both online and in the “real world.” Tailored searches, reliable test purchases, and procedures documented in a manner that preserves evidence—all the way through to identifying the masterminds and personally responsible parties—are fundamental prerequisites for the subsequent effective enforcement of rights. Together with you, we set up monitoring processes that safeguard your business and enable early action and rapid responses to intellectual property infringements.
Criminal Prosecution / Criminal Defense
Criminal law doesn't help? Is filing a complaint for trademark infringement not an option?
It depends on what you want to achieve. Trademark infringements are not trivial offenses, but they are often pursued only upon request or are not pursued further later on because other related criminal offenses—such as tax crimes—tend to be the primary focus of investigative authorities. Nevertheless, criminal proceedings can effectively support and facilitate the enforcement of civil claims. If there are grounds for suspicion that justify a search warrant, this can take place more quickly than a complicated civil inspection proceeding or the enforcement of claims for information—provided that the competent authorities are informed and the investigation is actively supported. In such cases, it may be possible to initiate swift investigative measures.
We know how to do this.
We file criminal complaints on your behalf, either alongside or in preparation for civil proceedings to pursue intellectual property infringements. We actively provide legal representation during preliminary investigations and also represent you as a civil party in criminal proceedings. We support you in your efforts to have proceeds of crime confiscated, destroyed, or, for example, to have criminal judgments made public.