We are specialists in intellectual property rights.
Our expertise helps us to advance your interests.
Trademarks are more than the mere name of goods or services. They inform consumers of the origin of products and guide them in their choice between several providers on the market.
Trademarks also sum up a company’s sales message and thus encapsulate its reputation gained over many years of advertising and product management in a right that is measurable in economic terms.
To be able to fulfil this function, trademarks must be protected by law. They have to be invented, filed and registered by someone with expert knowledge and renewed whenever applicable. With market success at the latest, strategies on legal trademark management and expansion of the geographic scope of protection via international registration will become an issue. Simultaneously you might be required to defend your trademark – either against holders of older rights opposing your registration or against infringements by others using identical or similar marks, thus posing danger of confusion.
Our office is highly familiar with and deeply involved in trademark law. We register trademarks with the German Patent and Trademark Office (DPMA) on a regular basis as well as the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO). In addition, we are constantly involved in trademark litigation before courts in all of Germany.
Where is the added value in hiring a competent lawyer to guide you through the registration procedure? Establishing a strong trademark that will be able to survive conflicts already starts before handing in the registration application. First, the interests of the client and potentially opposing third party rights need to be investigated to determine the required content of the application.
Our advisory work frequently shows that clients underestimate the requirements set by the patent and trademark authorities regarding distinctiveness on the one hand, while they only pay attention to a small segment of the varieties that are possible with the subject matter of their application on the other. Against this backdrop, it is not surprising that registration services with no or only minimal legal advice, which leave these essential decisions to the client, cause a far higher number of rejections and subsequent problems like opposition proceedings and trademark suits than a well-prepared trademark registration.
Whenever third parties file opposition against the registration of a trademark, the registration procedure automatically leads to opposition proceedings that - like court proceedings - require the submission of formal written statements explaining the factual situation and bringing forward legal arguments. It goes without saying that the quality of legal advice is of material significance to the outcome of such opposition proceedings.
In recent years, we were able to successfully settle several trademark disputes involving well-known names in favour of our clients.
As can be easily seen from the amounts in controversy defined by the courts, trademark disputes have considerable economic significance for the companies involved. A change of company name, discontinuation of a product line or a new advertising campaign are not only associated with a great amount of work, but a heavy cost burden too. Therefore, trademark suits are often fraught with strong emotions.
Claiming alleged arbitrariness on the part of the courts in trademark suits would be oversimplifying the matter. In order to concentrate trademark issues in a specific court, trademark disputes are in Germany allocated to highly specialised courts pursuant to Section 140 (2) Trademark Act (MarkenG). One can therefore assume that these courts understand their business. Whoever wants to interact with these courts at eye level must distinguish him or herself by submitting a clear statement of facts and a sound, comprehensible presentation of the legal circumstances.
This describes our approach to trademark suits and handling of the warning letter procedure preceding the actual suit. If you entrust us with your case, you can rest assured that our course of action is well-founded and exact down to the last detail. Moreover, as we are aware of the urgency in most trademark matters, we place special emphasis on speedy processing of the cases and enforcement of our clients’ claims.
Copyright law serves the purpose of protecting works of literature, science and art against unauthorised duplication, distribution, publication or distortion.
In addition to the classical artistical fields of copyright protection mentioned in the definition above, the protection of databases, photographs and phonograms has gained considerable significance in the last years due to the supplementary protection of creations under competition law.
In contrast to other fields of intangible property rights, where claims are supported by rights resulting from registration, the legal status always needs to be clarified first in copyright matters. Therefore, irrespective of whether the client is an author or an alleged infringer, the first step will always be to clarify whether the subject matter in question really qualifies as a work in terms of copyright law. This may prove rather difficult in practice: examples of works that we examined for applicability of copyright protection in the last few years include the concept for a TV show, an idea for a board game, a designer chair, the website for a medical practice, a company logo, an architect’s plan for a house, a carpet pattern, a detailed personal ad, background graphics for a PowerPoint presentation and the interior of a shop.
This shows the recurring theme in our copyright advisory work: comprehension is the essence of successfully solving a copyright case. We therefore see it as our duty to understand the work and its uniqueness, so we can then “translate” the idea behind the work of art into the legal concept for the opposing party or the courts.
In the past two years, we have conducted more than 70 copyright cases before diverse German courts. Besides the problems mentioned above, also authors’ claims for damages and licensing following unauthorised use of their works play a central role in this field.
Competition law serves the purpose of protecting competitors and consumers against unfair commercial practices.
However, the matters are not as easy as this definition set forth in Section 1 of the Act against Unfair Competition (UWG) implies:
In many cases, such as for example cases regarding the obligation to inform consumers, the legal situation is so complicated that even experts have difficulties defining the boundaries of unfairness. In other fields of competition law, like for example in the fields of slavish imitation or obstructive competition, the assessment of the facts depends on many different pieces of background information and the presentation thereof by the lawyers involved in the dispute.
In other words: competition law is a real challenge for lawyers and we are willing to accept this challenge.
Every year we represent a medium double-digit number of claimants or defendants in competition disputes before courts throughout Germany.
Our competition-related services also focus on advising our clients on extrajudicial solutions. When representing the claimant, we aim to exactly determine the claimant’s interests to find a precise wording for the claims as well as the right approach with respect to judicial proceedings later on. When, however, representing the addressee of the claim we carefully consider whether it makes sense for the client – particularly in economic terms – to seek settlement by the courts or whether it is more reasonable to settle the matter in the scope of the warning procedure.
Media law is a branch of law that deals with all forms of communication relevant to our society.
Communication takes place in the press, on the radio, in films and, increasingly, via electronic media like internet forums, blogs, social media and emails. As such, media law is divided into several sub-branches:
- Press law
- Radio broadcasting law
- Film law
- Internet law
Regardless of whether communication is involved, IT law deals with the legal specifics of data processing and is therefore strongly related to media law. Our legal work often deals with cases that involve communication via new information technologies, such as for example Twitter, meaning that our considerations have to be based on both IT law and media law at the same time.
Any legal work associated with media law is based on Article 5 of the German Basic Law (GG) and the constitutional requirements set forth therein.
Free expression of opinion is the touchstone for all media-related cases, irrespective of whether the statements were made via classical media like newspapers, TV and radio or via the new media. According to decisions by the highest relevant courts, the crucial points are whether the respective statement can be challenged as a false statement of facts or whether it is an expression of opinion, which is only actionable if it qualifies as calumny.
Our litigation work frequently confirms that the boundaries between these definitions are rather flexible. Well-considered, legally founded argumentation helps to utilise this scope in the client’s favour.
In recent years we have constantly been confronted with the legal admissibility of postings on companies that were published in internet forums, while we were also able to obtain injunctive relief on our clients’ behalf against several radio broadcasting companies and print media.
We accompany and advise numerous and major internet and computer companies in legal IT matters. Our clients appreciate that we take an interest in their data processing needs and that we are familiar with terms and concepts like affiliate marketing, cloud computing, domain grabbing and DNS attack.
We keep track of latest developments and issues in the IT world and the problems associated therewith and welcome the challenge when it comes to scrutinising the technical facts from a legal viewpoint and explaining them to the courts in a comprehensible manner.
Registered designs protect a product’s form of appearance or parts thereof against imitation.
As such, the aesthetic characteristics of a product are the subject matter of design law. These may include its form, outlines, surface structure, colours, but also the effect of a product achieved by using specific materials. In addition to classical designer pieces like fashion products and furniture, design law also governs objects of daily use (such as kitchen equipment, carpets or lawn mowers), typographic characters, graphics, screen displays and buildings.
Design law poses a special challenge for lawyers. While this is also due to the general complexity of the legal field itself, difficulties are primarily caused by the fact that a lawyer needs to develop a deep understanding of the design itself and its characteristics to be able to obtain and enforce protection thereof.
We support companies and designers in protecting the exclusivity of their designs. Usually, this is achieved by registering designs with the German Patent and Trademark Office (DPMA), the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO).
The property right obtainable for a registered design is granted without inspection upon registration, meaning that mistakes are not discovered at this stage. Mostly, mistakes only become apparent when a registered design proves insufficient during action.
This renders obtaining legal advice before seeking registration so important: we first investigate whether the object actually qualifies for registration of design. If this is the case, we look at already existing shapes to analyse the specifics of the design in question together with the client and work out how this is best presented in the registration documents. In addition, we examine whether national or international registration is required. Finally, we take care of a quick and reliable registration and represent the client vis-à-vis the authorities.
If, however, a design does not qualify for design registration, we analyse whether protection may be obtained by other means, such as copyright, trademark law or through supplementary protection of creations under competition law.
Our firm also frequently deals with design litigation. Design disputes are highly complex and particularly difficult from a legal viewpoint, thus requiring special expertise.
Regardless of the side we represent - holder of a registered design or alleged infringer - we place great emphasis on fully investigating the existing range of shapes and on presenting the facts to the courts in a clear and understandable manner. Our intensive analysis with a trained eye provides us with our own impression of the subject matter of dispute and you can rely on us to pursue every single aspect that might support your position.
Media reporting on the patent war between the manufacturers of mobile phones in recent years has raised public awareness of the strategic and economic significance patent rights generally have for companies.
Patent-related legal work can be divided into two major fields: patent registration, i.e. legal support in dealing with patent authorities to obtain patent protection, and patent litigation.
We do not personally perform patent registrations on behalf of our clients, but are more than happy to coordinate the protection of our clients’ inventions, also on an international basis, by involving suitable patent lawyers. If required, we will take care of the entire correspondence until the desired patents are granted.
Germany is a globally renowned venue for patent suits. Both the District Courts (LG) of Düsseldorf and Mannheim have achieved an excellent reputation among patent law specialists in recent years. However, also other patent courts – including the District Court of Frankfurt – have become the venue of patent disputes with material and lasting significance for the companies involved and even entire industries.
We are fully committed to contributing to the development of this branch of law by means of competent and forceful litigation work. Even though patent disputes are dealt with by specialised courts in Germany, litigators play an important mediating role in such disputes:
their task not only involves understanding the technical facts, if need may be with the support of patent lawyers, but also recognising the legally relevant facts and presenting these to the courts in a comprehensible way. In order to accomplish this task, the litigator requires legal expertise, but also an affinity for technology and love for the clear linguistic presentation of complex technical and legal matters.
Your contact in matters of patent law: Rechtsanwalt Dr. Schmitt-Gaedke.