JUVE Law Firm of the year

Trademarks and Unfair Competition

Uncertain future for EU trademark after Brexit

German trademark and unfair competition lawyers have been preparing for the foreseeable changes at European level for some time. “There are practically no trademark proceedings where a Europe-wide ban doesn’t come under discussion,” says one IP lawyer. When the new European Trademark Directive came into force in spring 2016, seeking to modernize the system and simplify the registration process, no one suspected that a few months later Brexit would completely reshuffle the cards.

What the exact impact of the United Kingdom’s exit from the EU will be is not yet known. But in the medium term, the scope of protection of EU trademarks and Community designs will no longer encompass the UK. The country will no longer be a place of jurisdiction for EU trademarks either. The uncertainty is already generating demand for advice and Brexit should continue to provide a great deal of work for German trademark lawyers in the years ahead.

Mega trend IP

In the legal market, there are two opposing trends: on the one hand, large international firms are focusing on more profitable work – scaling back their soft IP activities and gearing these towards transactions. Hardly anyone, however, opts to forego this expertise entirely. On the other hand, the number of firms active in soft IP is steadily increasing. They often have the first trend to thank for the fact that they can bring in highly trained IP specialists. Thus it was firms like Reed Smith and K&L Gates, as well as midsized players like Kapellmann und Partner, who set about building their IP practices. These all value the stability of the advisory field: there is little economy-driven fluctuation when it comes to protecting and defending intellectual property rights.

EU patent: More competition for German firms?

This development is boosting competition, but it does not mean that large practices are being built en masse or that the new teams are quickly carving out significant market profiles. The firms leading the market by virtue of their litigation practices therefore remain unchallenged – in trademarks and unfair competition these are traditionally a mix of large firms like Hogan Lovells or CMS Hasche Sigle and boutiques such as Harmsen Utescher or Lorenz Seidler Gossel.

For some time now, the large practices have been consolidating ties with their international offices, with one recent example being Taylor Wessing. But boutiques like Hoyng ROKH Monegier and Bardehle Pagenberg, which originally positioned themselves internationally for their patents practices, are benefiting from this in soft IP as well.

 


 

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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