Protect brands. Create added value. We are your experts in all matters of trademark law.
Trademark Law
We manage the portfolios of medium-sized companies and major international corporations with over 1,000 brands.
From defining the registration strategy to examining protectability and ongoing collision monitoring, our team specializes in the support and further development of sophisticated trademark and design portfolios.
Our international network of leading law firms allows us to register and defend trademarks and designs in all relevant jurisdictions.
At HARTE-BAVENDAMM, we think strategically, offer reliable advice and act decisively – for the best protection of your industrial property rights.
We assist you in trademark registration and provide defense against cancellation in all proceedings before the German Patent and Trademark Office (DPMA) and the EUIPO.
Our team has many years of experience in application, opposition, cancellation and appeal proceedings before the DPMA and the German Federal Patent Court (BPatG).
Operating across Europe, we are experts in proceedings before the European Union Intellectual Property Office (EUIPO) and actions litigated before the General Court of the European Union in Luxembourg (GC).
Thanks to our standardized processes and wealth of experience, we ensure efficient, prompt, and cost-effective action even in the most complex and intricate administrative proceedings.
We specialize in consistent and vigorous representation in all trademark disputes.
Trademark infringement proceedings are at the heart of our expertise: we vigorously advocate for the enforcement and protection of your trademarks and signs in court. Our track record includes significant victories in groundbreaking cases at both the German Federal Court of Justice and the European Court of Justice. However, our primary focus is not on making legal history but on efficiently advancing your commercial interests.
At times, it's prudent to resolve a dispute outside of court. We identify such instances and facilitate resolutions that conserve your resources.
Whether it be a cease-and-desist letter, preliminary injunction, or court action: We work with our clients to determine the best strategy and implement it in a targeted manner.
Efficient and cost-effective measures to combat counterfeit products and illegal parallel imports.
Requests submitted to customs authorities can help prevent the import and export of infringing goods at the external borders of the EU or Germany. These goods may be seized or promptly destroyed.
We maintain strong relationships with German customs authorities, especially at key locations like the Port of Hamburg and international exhibition centers such as Cologne, Dusseldorf, and Frankfurt. This enables us to coordinate procedures seamlessly across Europe.
On the subject: From our IP blog
According to the decision “Der Novembermann” of the Federal Court of Justice (BGH), the fees for warning letters are to be calculated on the basis of a so-called overall value of the claim (“Gesamtgegenstandswert”) and allocated to the individual warning letters if they are related to each other in such a way that the same matter is to be assumed.
In practice, warnings are often issued to several different infringers of the same IP right. In such cases, the question arises as to how the amount of the warning fee should be calculated. In this respect, the decision “Der Novembermann” of the Federal Court of Justice (BGH) from 2019 plays an important role. While it was previously common practice to charge fees in full for each warning letter, according to this decision, an so-called overall value of the claim (“Gesamtgegenstandswert”) is often to be calculated, on the basis of which the costs for the warning letters are to be divided proportionately between the individual infringers.
Not only words, figurative elements and their combinations constitute signs that can potentially be registered as trademarks. Section 3 (1) of the German Trademark Act (MarkenG) also refers to a variety of other signs that can potentially serve as an indication of origin and for which registration as a trademark is possible, such as sounds, three-dimensional designs and colours. The following article is dedicated to the latter.
So-called repeat filings, often intended to circumvent the obligation to put the trademark to genuine use and thus taking advantage of further grace periods for the refiled trademarks, might seem attractive in particular to reduce costs. However, they also involve the risk of finding bad faith at least under EU law. The concept of bad faith is not legally defined but is shaped by the respective case-law. In this respect, the “Monopoly” Judgment of the General Court sets forth relevant principles and provides important strategic guidelines. Furthermore, the recent decisions of the Cancellation Division of the EUIPO regarding the trademarks of the famous artist Banksy representing one of his best known artworks, the Flower Thrower, demonstrate the importance of having a sound strategy behind any trademark filing. In the following, we will have a closer look at these cases to illustrate the possible risks of repeat filings and to provide some advice on risk-minimizing trademark filing strategies.
Three reasons for choosing HARTE-BAVENDAMM
Satisfied clients, numerous top-tier rankings, major professional publications, extensive litigation experience: intellectual property law is our core competence.
We represent your interests with ingenuity and dedication. We protect your intellectual property and develop creative strategies. Complex cases are our strength.
As a reliable partner, we provide our clients with resolute, poised, and effective guidance. In challenging conflict scenarios, our team is well aware that cooler heads always prevail and excel at delivering valuable and advantageous solutions to our clients.
