Intellectual Property / Competition Law
SKW Schwarz can provide a team of experienced lawyers who are specialists in intellectual property (IP) law. The term “intellectual property” covers intangible assets such as trademarks, product names, innovations, concepts or intellectual creations. These assets can be protected, for example by trademarks, patents, utility models, designs or copyrights.
Particular aesthetic or technical features of a company’s products, trademarks etc often form the basis of a company’s success. Protecting and developing intellectual property is one of the key tasks of forward-looking management. Our IP specialists
- have intellectual property rights registered with national and international authorities;
- research intellectual property rights (brands, firms, titles, domains, designs, patents, utility models);
- manage and monitor global portfolios of intellectual property rights;
- assert intellectual property rights in front of the German Patent and Trademark Office, the Federal Patent Court, the European Patent Office, the Trade Marks and Designs Registration Office (OHIM) and the World Intellectual Property Organization (WIPO);
- assert intellectual property rights in front of national courts and the European Court of Justice, both in regular and in preliminary proceedings;
- draft and negotiate licence agreements, merchandising contracts, research and development contracts, cooperation contracts, prior rights and coexistence agreements and sponsoring agreements.
In addition, SKW Schwarz gives advice on all matters of competition law. This covers in particular the market behaviour of and the relationship with competitors, i.e. a company’s right to defend itself against unfair competitive practices (competition law in the narrower sense of the term). Examples are misleading or comparative advertising, counterfeit products, the exploitation of business secrets of competitors or drawing customers and employees away from a company.
Another focus is brand and product piracy, which we fight systematically on behalf of our clients, not least by border seizure procedures.
It is important to us that we support our clients not just when they have to defend themselves against intellectual property right infringements. Rather, we want to show them how to best protect their intellectual property in a forward-looking way.
Examples
We manage and monitor a global brand portfolio for a global market leader in camera construction/lighting technology. Following a comprehensive brand research we took care of the necessary applications to have the brands registered in Germany and as international IR brands in countries which have signed the Madrid Agreement. We handled and coordinated applications in numerous other countries via our own network or via partner law firms. All formalities (powers of attorney, attestations, proof of priority) and the invoicing procedure were conducted by our firm. All relevant data are collected in our brand database, which helps us to monitor deadlines. In the framework of our brand database maintenance we monitor colliding brand applications world-wide in order to resolve conflicts as early as possible.
We have expanded and improved the brand, patent and design portfolio of a shoe manufacturer. We help our client both to defend intellectual property rights and to prevent infringements. One regular problem are infringements at fairs. Each year we research new products concerning potential protection and expand the portfolio of intellectual property rights accordingly.
On behalf of a motor sport event organiser we made an EU-wide border seizure application pursuant to the EU Council Regulation 1383/2003 on the grounds of potential infringements of brand rights. We also produced the necessary technical documentation together with our client. We ensure the necessary communication with the central customs authorities in the EU and the individual customs departments and represent the client versus importers and others who are involved in counterfeit imports. The problem was quickly resolved because we provided expert opinions on how the goods infringed upon our client’s intellectual property rights and the customs authorities seized them. We enforced injunctive relief and organised the destruction of the pirated goods before they even reached the EU market.
In a large procedure we represented an online registration portal for sport events which offers, among other things, services such as RFID-supported timekeeping for marathons. A competitor had sent cease-and-desist letters to our client and numerous sports event organisers on the grounds of a suspected infringement of a utility model for a transponder chip. In about 25 injunction proceedings (including appeals) we represented the portal and its service providers, the chip producer and some of the sports event organisers (directly or indirectly in the form of an intervention by a third party) outside and in court. Moreover, we conducted a number of both preliminary injunction proceedings and proceedings on the merits for unjustified warnings of intellectual property infringements; in some cases the proceedings involved two instances. Overall, the case included some 50 individual proceedings. What was key was a good management on behalf of the sports event organisers, who were faced with the risk of having to cancel marathons with several thousand participants each. In the end we won all proceedings. And an even more important aspect is that, because we represented all customers of our client either directly or indirectly, we helped our client to keep them as customers.
We regularly represent one of the most traditional producers of Christmas stars versus producers, importers and traders of counterfeit products on the basis of trademark rights (word, word/image, 3-D trademarks) and related rights under competition law in infringement and border seizure procedures. Our client’s Christmas stars have been produced for more than one hundred years and are popular around the world. Initially, the main problem was to convince the courts that the particular features of the stars are relevant to competition.
We have started a long-term enforcement programme on behalf of a leading outdoor products manufacturer in order to fight trademark piracy. The programme includes out-of-court cease-and-desist letters, preliminary injunctions, proceedings on the merits, border seizures and the filing of criminal proceedings. It was self-funding thanks to expense reimbursements and has almost completely eliminated counterfeit products from market places such as e-bay or the flea markets on the Czech border.
We are defending a leading pharmaceuticals producer in a Europe-wide trademark infringement procedure in court. The proceedings have taken place in several instances, triggered numerous appeals to the European Court of Justice and taken five years so far. Simultaneously, we have conducted several trademark opposition and cancellation proceedings and participated in settlement negotiations abroad.