Trademarks and Unfair Competition
EU legislation shaping lawyers’ work
Lately, it has been the German courts and their rulings that are creating lots of work for trademark and unfair competition lawyers. The “cookie sticks” decision by the Federal Court of Justice (Bundesgerichtshof), for instance, was met with much displeasure: the decision makes action against infringers at trade fairs more difficult, as it rules that product presentation does not necessarily constitute intention to sell.
Above all, however, trademarks and unfair competition are subject to international laws – and this is reflected in the advancement of these fields. Once again, it was the harmonization efforts at European level that provided a taste of things to come: the revisions of the Community Trademark Regulation and the Trademark Directive are on the starting blocks, and the harmonization of know-how protection is creating strong demand for advice. 2014 also saw the Consumer Rights Directive come into force, and its implementation brought much work for consumer goods companies in the online sector.
Playing field for international firms thinning out
Some predicted it years ago: more and more large international firms would either part ways with soft IP entirely, or would only keep it simmering over a very low flame – entirely the opposite of patents, where firms are expecting higher profitability. With White & Case having seen many departures last year and doing nothing to counter them, Clifford Chance has now met the same fate, with IP lawyers leaving the firm in Frankfurt and Munich. Evaporation is certainly not an issue for Hogan Lovells, but, as a consequence of its current strategic direction, it lost one of its best-known partners in Alicante, Dr. Verena von Bomhard. She ventured into self-employment, like many trademark lawyers before her.
One firm to demonstrate that real, successful practices can be operated in Alicante, as opposed to just having a letterbox here, was Noerr. The German firm has been visible in Alicante for a few years and has now shown its serious intentions in the home of the Office for Harmonization in the Internal Market (OHIM) with an equity partner appointment. Another exception here is Taylor Wessing, who likewise grew its partnership and is bringing its European network into play ever more efficiently.
International merger of IP boutiques could set a precedent
The German soft IP boutiques, meanwhile, are no less successful, even though not all demonstrate such rapid team growth as Harte-Bavendamm in Hamburg. While Reimann Osterrieth Köhler Haft became the first specialist patents firm to enter into an international merger (with Hoyng Monegier) and thus readied itself for the upcoming EU patent, trademark and unfair competition lawyers are so far keeping to themselves. This may change, if Hoyng ROKH Monegier profits from its new partnership away from patents, and thereby acts as a role model for soft IP boutiques. After all, a merger is always a way to meet advancing internationalization halfway.
The practice areas trademarks, design law and unfair competition are dealt with in one chapter. This is because in specialist firms these fields often overlap. Clients are often advised on all of the fields by one firm. Specialties can vary considerably, however, and there are also areas, such as advice on marketing campaigns or portfolio management, where overlaps are less common.
Because the perception and position of the firms in the market can also differ, this chapter includes separate ranking tables for trademarks and unfair competition. In terms of trademarks, there are also numerous mixed firms comprising patent attorneys and lawyers active in the market; however, these are dealt with in this chapter only if the lawyers also conduct extensive civil law litigation and are well known in the market for this.
Trademark and unfair competition aspects often play an important role in distribution and franchising ( ?distribution, trade and logistics). Please also see the chapters on ?food law and ?pharmaceuticals and healthcare. Firms’ expertise in copyrights is dealt with in the ?media chapter because of the close links between this legal material and the TV, film, entertainment and publishing sectors.
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