Germany: Trademarks
In early 2011, the Munich-based Max Planck Institute and the European Commission (EC) published their Study on the Overall Functioning of the European Trade Mark System, which makes numerous recommendations in preparation for the future review of community wide regulations and directives. Proposals to increase competition and brand protection as well as community-wide standards on the remedies for trademark infringement will all have strong implications for the European trademark bar. The 31 lawyers we recognise below are at the cutting edge of the trademark law marketplace in Germany and are well placed to assist their clients through the developments of the coming years.
Specialised IP firm Bardehle Pagenberg leads the field in this chapter with four lawyers from its Munich office ranking highly. Jochen Pagenberg is a “national leader” according to peers who recognise his trademark prosecution and enforcement work as “first rate”. Henning Hartwig specialises in industrial design work, encompassing multinational design infringement and invalidity proceedings, as well as acting in unfair competition and anti-piracy matters for clients in the food and healthcare sectors. International trademark conflict expert Peter Munzinger is “highly regarded” for his work on behalf of leading companies in the engineering, chemical, food, fashion, electronics and hospitality sectors and is a “great choice” according to sources. Alexander von Mühlendahl is noted for a “long and distinguished” career in the national and European trademark legislation, most recently acting as vice-president of the Office for Harmonization in the Internal Market, and he offers “unbeatable” regulatory expertise to clients in proceedings before the European courts.
Two lawyers rank highly at Hogan Lovells. Hamburg’s Andreas Bothe focuses his practice on trademark infringement proceedings, name disputes and extrajudicial advice and counts Philips among his recent clients. Leopold von Gerlach is recommended for his “hard-nosed and inventive” trial work and regularly acts in brand enforcement, anti-counterfeit and unfair exploitation matters for clients in the life sciences, hi-tech and luxury goods sectors.
At Taylor Wessing, Sabine Rojahn is highly recommended for her IP disputes work for clients in chemical, semiconductor, telecoms and mechanical and medical engineering sectors, having acted in numerous precedent setting cases before the German Federal Supreme Court. Head of the firm’s trademark team Thomas Raab is also commended for his work before the courts and in out of court infringement proceedings – encompassing brand disputes, licensing, anti-counterfeiting, customs, domain name and brand clearance matters – and sources hail him as a “world class” practitioner.
Michael Schaeffer is an “excellent” name in domestic and international IP law as well as design, employee invention, competition and media matters and is one of two nominees from Harmsen & Utescher. Joining him is the “top tier” Karin Sandberg, who boasts extensive expertise in unfair competition and protectionism matters alongside her strong IP and design law knowledge.
At Grünecker Kinkeldey Stockmair & Schwanhäusser, Martin Aufenanger is noted for his patent and trademark work and strong engineering acumen, while Maximilian Kinkeldey comes “highly recommended” for his knowledge of international trade regulation in the context of intellectual property matters.
Munich-based IP boutique Lorenz Seidler Gossel also fields two representatives, including Rocky Ingerl, whose knowledge of national and European community trademark law is “invaluable” according to sources. Siegfried Jackermeier is another “outstanding name” at the firm and is recommended for his disputes work.
Christian Rohnke represents White & Case LLP’s Hamburg office where he is praised for his work in trademark infringement litigation, portfolio management and distribution, and he counts Volkswagen, Unilever and Deutsche Bank among his recent high-profile clients. At Bird & Bird, Wolfgang von Meibom is “the go-to-guy” for IP work according to sources, who praise his complex domestic and international life sciences practice as “the best in the country”. Jones Day fields the “superb” Andreas Ebert-Weidenfeller who is known for his work managing large international trademark portfolios from their launch through all stages of defence against infringement and piracy as well as design protection and competition matters.
Founder and name partner of Best Rechtsanwaelte Michael Best is lauded for his “exceptional” trademark and unfair competition law practice and, having previously acted as head of legal at Hoechst AG, is particularly well thought of for his work on behalf of clients in the chemical and pharmaceutical sectors. CMS Hasche Sigle sees international trademark protection specialist Gordian Hasselblatt rank highly in this section, with sources noting his “brilliant” expertise in unfair competition, design and advertising matters. Stefan Völker heads the IP practice at Gleiss Lutz, where his “broad-based and high quality” practice encompasses strategic and brand creation advice as well as trademark protection and prosecution.
Klaka Rechtsanwälte benefits from the inclusion of international trademark and unfair competition specialist Andreas Schulz, whose understanding of food and drug law as well as media matters is “very well thought of” by respondents to our survey. Michaela Huth-Dierig founded the trademark and anti-counterfeiting department at the Munich office of Boehmert & Boehmert and is “well known and respected” for her litigation and prosecution work, as well as her anti-piracy, unfair trade and portfolio management acumen. At Fritze Paul Seelig, Carsten Albrecht focuses his practice on the management, defence and prosecution of brands both in and out of court and is noted in particular for his “market leading” expertise as a mediator.
At his own eponymous IP boutique, Henning Harte-Bavendamm is recommended for his distribution and unfair competition knowledge and is the current trademark committee chair of the German Association for the Protection of Intellectual Property. Also representing his own firm, Kay Uwe Jonas is a specialist in protection, defence and portfolio management for national and international brands and regularly represents clients before the German and European courts. A founding partner at Lubberger Lehment, Andreas Lubberger boasts “leading” knowledge of internet IP protection, unfair competition and parallel imports.
At Krieger Mes & Graf von der Groeben, Jochen Bühling is an “internationally prominent” figure with a “great” knowledge of contractual IP and trademark licensing. Lichtenstein Körner & Partners fields Thomas Sambuc whose practice encompasses unfair competition and design and copyright protection as well as “impressive” trademark expertise. Peter Müller of Müller Schupfner & Partner brings strong electrical engineering knowledge to the table in his work on behalf of clients in the life sciences, hi-tech and communications sectors and he is particularly well thought of for his work in dispute resolution through mediation.
Hi-tech and life sciences IP “expert” Christian Osterrieth is noted for his international dispute strategies and is a name partner at Reimann Osterrieth Köhler & Haft. Hans Peter Kunz-Hallstein is a “highly visible” international practitioner and represents his own firm in this section.