Development, conception, and registration of the trademark
Developing and designing the brand is the cornerstone for later trademark success. This is why you can rely on our support already in these phases.
We assist you in selecting and differentiating your trademark from other IP rights, in performing trademark searches to avoid later conflicts and in applying for and registering your trademark as well as further representation before trademark offices (DPMA, EUIPO and WIPO). We take care of all issues relating to protectability and potential obstacles to registration.
- performance of trademark searches jointly with renowned research institutions to avoid trademark conflicts;
- conception of the trademark (selecting the trademark form, drafting the list of goods and services, and advising on the territorial scope of protection);
- representation in application proceedings before trademark offices (trademark application; representation in protection refusal proceedings);
- advice on (potential) trademark conflicts and the extra-official settlement of disputes (trademark differentiation and priority agreements)
Strategic advice and IP portfolio management
Successful IP strategies are central to your lasting trademark success. One of our key areas of advice therefore focuses on strategic trademark and design consulting, including the conception and implementation of national and international trademark and design strategies as well as the management of global trademark and design portfolios. We collaborate closely with peers from our international network of law firms to develop and implement cross-border strategies, while taking account of national particularities.
Our advice includes:
- developing and implementing national and international trademark and design strategies
- IP portfolio management
- monitoring of trademark and design portfolios through continuous collision monitoring
Defense and litigation
The protection of trademarks and designs includes enforcing and defending trademark and design rights against infringers who use identical or similar signs, thus creating confusion of allocation. If owners of earlier rights question the protection of others, this protection must be defended. We advise and support you in enforcing and defending your trademark and design rights.
Disputes may frequently be settled out of court by means of
- trademark differentiation and priority agreements, or
- trademark and design licensing agreements.
It is, however, not always possible to avoid legal disputes. Even in those cases you can rely on the extensive experience of the SKW Schwarz team. In the event of trademark and design right infringements, we will find the right strategy for you and defend your rights in proceedings before German and European courts and trademark offices.
Our advisory fields comprise the following areas:
- coordinating your representation before German and foreign courts
- representation in all proceedings before German and European trademark offices (DPMA, EUIPO) and instances (ECJ, CJEU)
- litigation in complex trademark and design infringement proceedings up to the European courts
- temporary injunction cases
- supporting customer surveys
The right of identical family names for companies [“Gleichnahmigenrecht”]
Considerable economic value is associated with your brand and your corporate identity. This is particularly true where corporate trademarks are formed of your own family name and look back on a tradition. May it be Kupferberg, Peek & Cloppenburg, Joop, Hans Grohe, or Krupp – if companies find themselves in disputes over the use of their identical family name as a company, trademark or domain name, the saying “first come, first served” finds its limits. This also applies to other typical cases were free riders intend to take advantage of another company’s good reputation in order to promote their own asset. Once coexistence has been tolerated, the dispute and the damage in such cases may be enormous.
Our advice aims at providing security and predictability for the respective companies and families.
In order to alleviate potential conflicts right before potential claims can be asserted, we take action already in advance and ensure that a balanced condition does not even arise in the first place. Once the companies exist side by side so that a balanced condition has arisen, our strength lies in reacting quickly and advising comprehensively.
Particularly in the event of disputes between families, our focus also lies on the persons behind the companies whom we then accompany as individuals at SKW Schwarz.
Our advisory fields include
- differentiating the fields of activity and signs of companies
- early trademark applications on behalf of companies
- asserting claims and defending against claims of companies using the same family name