Trademarks, Designs & Domains

How much can a bitten apple be worth as a logo? And how much longing for a soft drink can be triggered by white lettering on a red background? Brands and associated signs, fonts, and designs are frequently priceless assets that need to be strategically planned and protected. As a full-service law firm, we advise you throughout the entire process, from developing to defending your IP rights. And we do so with sound expertise and many years of experience.


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

  • warnings
  • 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

Product piracy/Border seizure proceedings

The most popular and successful brands are also usually the ones that are most often victims of counterfeiting and piracy. After all, this is where it’s worth it. For some time now, counterfeiting has not only been a problem for manufacturers of luxury goods alone, but it has also found its way into almost all industries.

Prosecuting and combating product piracy is therefore also of key importance for effectively protecting trademarks. In addition to monitoring and seizing counterfeits in close cooperation with customs authorities (border seizure proceedings), our advice includes prosecuting product piracy at trade shows as well as civil and criminal prosecution of trademark infringements. In addition to criminal prosecution in collaboration with the investigating authorities, we enforce your trademark claims in and out of court by means of temporary injunctions or in litigation.

We advise and support you in particular on the following topics:

  • border seizure proceedings
  • advice on parallel imports and gray market trading
  • civil and criminal prosecution of trademark infringements, temporary injunctions
  • support in prosecuting and combating product piracy at trade shows

Licenses & Merchandising

We advise comprehensively on developing merchandising strategies and drafting, negotiating, and implementing licensing agreements under all relevant legal aspects.

Designs

When a design is supposed to be protected, design patents may be registered for the Federal Republic of Germany or European design patents for Europe. Even without registration, however, there is already a certain level of design protection at the European level. Before filing an application, it should always be researched whether other designs block the way to protection.

Our experts analyze which protection strategy best meets your needs, enforce your design rights in and out of court, and defend you against imitators.

In design law, we advise on the following topics:

  • design research
  • design strategies and portfolio management
  • design infringements and warnings
  • licensing and contracts

SKW Schwarz was recognized as German Firm of the Year 2020 in the “Copyright & Design” category by Managing Intellectual Property IP STARS.

Domains

Brand presence without a corresponding domain is entirely unthinkable nowadays. Therefore, the advice by our lawyers on domain strategy before product launch is part of our service. Since there is no separate legal statute for domains, domain law is closely linked to trademark law and competition law – areas that are among SKW Schwarz’s main fields of expertise.

Simultaneously, the large number of domains also offers opportunities for imitators or other rightsholders, against whom we enforce our clients’ rights.

Our advice on domain law includes the following topics:

  • rights clearing of domain names and registration as part of portfolio management
  • domain trading
  • enforcing your rights from the domain by way of warnings
  • carrying out extrajudicial dispute resolution processes such as the UDRP

Title protection

Title protection is elementary in the media sector: for books, movies, and music, but also computer games and even events, special protection may exist for the title of the work, if the title is distinctive or particularly well known. Since productions frequently take a long time, title rights should generally be clarified early on and secured via title protection notices. We develop optimum protection strategies jointly with you in conjunction with trademark law and copyright law. We also enforce your title protection against infringers and represent you in disputes with other rightsholders.

We support you in particular in:

  • title and trademark research in advance of title selection
  • title protection notices
  • warnings
  • enforcing your title protection
  • agreements and licenses