"... its proactive solutions prepare companies for potential future challenges."

WTR 1000, 2014

Trademarks

Gleiss Lutz is one of Germany’s leading law firms in the area of trademarks. We have decades of experience of administering trademark portfolios of varying sizes for many longstanding clients. We currently manage trademarks in more than 190 countries. Our spectrum of services ranges from strategic consulting, to trademark creation and selection, to the full range of activities required for registering a trademark and then monitoring for infringements. Our advice covers not only trademarks as such, but also all other trademark-related IP rights, including trade names, titles of works, and rights to names.

Creating trade marks

We offer a wide range of services to help clients develop new trademarks. We not only carry out searches to identify any potential conflicting trademarks in Germany or abroad, but also advise on the protectability and distinctiveness of a mark (proposed, for example, by an agency). Our strategic advice also covers the protection of three-dimensional objects (such as products and their packaging), abstract colours and colour combinations, sound marks, position marks, and other new forms of trademark.

Conflicts

Today companies rarely protect their trademarks in a single country. In a global marketplace, trademarks are protected at the international level. This means that, unless measures are taken early on to prevent this, conflicts further down the line may lead to expensive and time-consuming opposition, cancellation, or claims proceedings in a number of countries. One of our key tasks is therefore to help clients enter into an active and constructive dialogue with the opposite side right from the outset in order as quickly as possible to find a solution and settlement acceptable to both parties. In this way, the substantial costs associated with a protracted trademark conflict spanning a number of countries can often be avoided. We also provide extensive advice and support should clients wish to pursue the matter further. We represent clients before the German and European authorities and courts. Furthermore, while continuing to play a coordinating role, we ensure that our clients receive proper representation in proceedings outside the EU. 

Product piracy

Gleiss Lutz has many years of experience in combating product and trademark piracy, including customs control and border seizures both at the external borders of the EU and in key foreign jurisdictions (such as the People’s Republic of China). We help our clients develop and implement a robust long-term strategy for combating counterfeit goods. This requires both consistent execution and the most efficient use of (often limited) resources.

Domain names

Advice on domain names forms an integral part of any comprehensive trademark protection strategy. We advise not only on domain name management but also conduct searches and assist in the event of conflicts. We are active in this area in Germany and elsewhere. Our work here includes asserting claims both in and out of court, as well as conducting UDRP and arbitration proceedings before the competent international bodies.     

Licensing

A key aspect of trademark administration is negotiating and drafting agreements regarding the commercial exploitation and transfer of trademarks (purchase, licensing and merchandising agreements, etc.), as well as the settlement of disputes (differentiation and coexistence agreements). It is of decisive importance when delivering advice and representing clients in these types of contract negotiations to have an in-depth knowledge of their trademark portfolios and their plans and goals. 

Searches

Professional trademark searches are another important focus of our work. We carry out online searches for all types of trademarks, including German, Community, and internationally registered trademarks. We also perform searches in countries and territories for which online trademark searches are not yet possible. At the same time, we offer Internet searches using search engines to uncover other conflict risks that cannot always be identified via traditional trademark searches. We can, of course, also provide these services for trade names, titles of works, and other IP rights. 

Trademark administration abroad

Almost all our clients require multinational – and occasionally worldwide – protection for their trademarks. The effective and efficient administration of trademarks across national borders, as well as dealing with trademark conflicts abroad, is a particular challenge. This starts with the selection of the right trademark lawyers in the relevant countries. We view the identification of the best lawyers in a large number of jurisdictions as an ongoing process. We compare the performance of lawyers in the various jurisdictions and use every opportunity to get to know our foreign counterparts personally. We also ensure that the right lawyers are selected for the particular issue at hand, whether this involves general trademark administration or problems or trademark infringements that are more challenging. As a result, we are able to recommend firms that are both cost-effective and best-suited for the task at hand.