About our German trademark law firm: horak Attorneys-at-Law

horak Trademark Lawyers/ Trademark Attorneys is a leading trademark consultancy that provides the full range of trademark services, from portfolio management, disputes and enforcement through to strategy, consulting and commercialisation.

Our law firm is big enough to provide a broad range of skilled and highly specialised legal trademark services and yet small enough to approach each client individually.

We advise middle-sized and large companies, economic institutions and corporations of different sizes as well as private clients in almost all areas of national and international trademark and related law. This aspect is not too bad.

However, we do offer more. Our trademark attorneys are highly specialised experts. You might already know us from former co-operation. You may have read scientific publications written by one of or lawyers, you may have participated in our seminars or you may have heard about us elsewhere.

Should this be the first time that you were informed about us, you will get to know us as a reliable legal partner who will help you achieve your goal.

Main practice areas: Prosecution and litigation of trademarks

• Trademark law (prosecution and litigation of trademarks and related rights in Germany, Europe and worldwide)
   
• Law on competition
   
• Drafting of contracts (in particular licence agreements, trademark assignments, trademark agreements etc.)

IP Law Firm brochures

Please learn about horak Lawyers and the complete range of areas of practice we serve from our brochures.
 

•  General brochure

Our Trademark attorneys are specialized professionals who assist individuals and businesses in protecting, managing, and enforcing trademark rights. Their role encompasses the entire lifecycle of a trademark, from registration and strategic planning to litigation and management. Below is a comprehensive description of their responsibilities in German, European, and international trademark law, with examples and relevant court cases.

1. Trademark Searches

1.1 Purpose

Trademark attorneys conduct detailed searches to determine the availability of a proposed trademark and assess risks of infringement. This is a critical step to avoid conflicts and potential legal disputes.

1.2 Types of Searches

• Identity Searches: Look for identical marks.
• Similarity Searches: Identify phonetically, visually, or conceptually similar marks.
• Comprehensive Searches: Cover trademarks, company names, domain names, and unregistered marks.

1.3 Tools and Databases

• German Market: DPMA database for German trademarks.
• European Market: EUIPO's TMview for EU trademarks.
• International Market: WIPO Global Brand Database and national trademark registries.

1.4 Example

Case: "Adidas v. Shoe Branding Europe (I ZR 63/15)"
Adidas conducted extensive similarity searches and identified that Shoe Branding Europe’s two-stripe design created a likelihood of confusion with Adidas’ iconic three-stripe mark. The German Federal Court of Justice (BGH) ruled in favor of Adidas, highlighting the importance of pre-filing searches.

2. Trademark Applications

2.1 Filing the Application

Trademark attorneys draft and file applications with the appropriate office, ensuring compliance with procedural and substantive requirements.

2.2 Jurisdictions

• Germany: German Patent and Trademark Office (DPMA).
• EU: European Union Intellectual Property Office (EUIPO) for EU-wide coverage.
• International: WIPO under the Madrid System for global trademarks.

2.3 Overcoming Office Actions

Trademark attorneys respond to objections or office actions, addressing issues such as lack of distinctiveness or conflicts with earlier marks.

2.4 Example

Case: "Big Mac Trademark Revocation (T-716/17)"
McDonald’s trademark for "Big Mac" was revoked in the EU for lack of genuine use. Trademark attorneys played a crucial role in gathering and presenting evidence of use in an attempt to retain the mark.

3. Opposition and Cancellation Proceedings

3.1 Opposition Proceedings

Trademark attorneys represent clients in opposing the registration of conflicting trademarks during the opposition period.

• Germany: Oppositions before the DPMA.
• EU: Oppositions before the EUIPO.
• International: National-level oppositions in designated countries under the Madrid System.

Example:
"Halloumi v. EUIPO (C-766/18 P)"
The CJEU ruled that the mark "Halloumi" lacked distinctiveness, emphasizing the role of attorneys in presenting strong opposition arguments.

3.2 Cancellation Proceedings

Trademark attorneys handle cancellation actions to invalidate trademarks on grounds such as non-use, descriptiveness, or bad faith.

Example:
"Monopoly Word Mark Case (T-663/19)"
Hasbro’s trademark for "Monopoly" was partially invalidated for bad faith re-filing to avoid proving use. Trademark attorneys played a key role in challenging the registration.

4. Trademark Infringement and Litigation

4.1 Infringement Analysis

Trademark attorneys assess whether a third party's use constitutes infringement by evaluating:

• Likelihood of confusion.
• Dilution of a well-known trademark.
• Unauthorized use of identical or similar marks.

4.2 Cease-and-Desist Letters

They draft and send formal notices to infringers, demanding cessation of unauthorized use and, where appropriate, compensation for damages.

4.3 Litigation

Trademark attorneys represent clients in court proceedings, seeking injunctions, damages, and destruction of infringing goods.

Example:
"Red Bull v. BullDog (C-65/12)"
Red Bull successfully sued for trademark infringement, arguing that the use of "BullDog" diluted the distinctiveness of its well-known mark.

5. Trademark Management and Administration

5.1 Portfolio Management

Attorneys manage clients' trademark portfolios, ensuring timely renewals, assignments, and licensing agreements.

5.2 Monitoring and Enforcement

They monitor trademark registries and the marketplace for unauthorized use or conflicting registrations.

5.3 Strategic Planning

• Advising on global registration strategies based on business objectives.
• Aligning trademark protection with marketing and expansion plans.

5.4 Example

Case: "Louboutin Red Sole Case (C-163/16)"
Christian Louboutin's attorneys successfully argued for the protection of the red sole as a trademark, emphasizing the importance of strategic registration.

6. Specific Proceedings Before Trademark Offices

6.1 WIPO (Madrid System)

Trademark attorneys handle international applications under the Madrid System, ensuring smooth designation in multiple jurisdictions.

6.2 DPMA

• Filing and opposition proceedings in Germany.
• Assisting in appeals before the German Federal Patent Court.

6.3 EUIPO

• Representing clients in oppositions, cancellation actions, and appeals before the Boards of Appeal.

Example:
"Tosca Blu v. EUIPO (T-608/19)"
Attorneys argued the distinctiveness of the contested mark before the EUIPO Board of Appeal and the General Court.

7. Developing Trademark Strategies

7.1 Preemptive Registration

Registering trademarks in key markets and classes before launching products to avoid conflicts.

7.2 Geographical Expansion

Using the Madrid System for cost-effective international protection.

7.3 Enforcement Policies

Developing guidelines for monitoring and acting against infringers.

7.4 Licensing and Commercialization

Advising on licensing agreements to maximize the commercial value of trademarks.

8. Key German, European, and International Cases

9. Future Trends

• Digital Trademarks: Attorneys are increasingly handling marks for non-traditional trademarks like holograms and motion marks.
• AI and Blockchain: Managing IP in emerging technologies, including automated trademark searches and blockchain-based registration.
• Global Enforcement: Handling disputes in cross-border e-commerce and metaverse platforms.

Trademark attorneys are integral to the protection, management, and enforcement of intellectual property. By staying informed of legal developments and offering strategic advice, they ensure clients’ brands are secure and commercially valuable in an increasingly complex global market.