Company - trademark owner
In the field of intellectual property (IP), we also look after internationally active and DAX-listed companies in all aspects of trademark law and the protection of industrial property rights.
With international companies, the problems of trademark law are increasingly being focussed on. This problem results from the international prominence of the trademark and frequently also from the sales structure. A specific problem in this area is repeatedly that of product pi-racy and the enforcement of border confiscations.
When looking after large trademark portfolios, all is not said and done with the research of registration eligibility and the registration of individual new trademarks.
It primarily involves strengthening and protecting the existing trademarks.
For this, the relevant registers must be monitored for new entries, in order to be able to file an objection within the short time limits in the case of conflicting trademarks.
This is not only necessary for the trademarks registered with the German Patent and Trade-mark Office, but also for the "European Trademark Office", the Office for the Harmonisation of the Internal Market ) - OHIM - and for all national trademark offices of the Member States.
Furthermore, the time limits for the extension of the trademark protection for all registered trademarks must also be monitored, so that the trademark protection does not end due to accidental non-observance of a time limit for trademark extension.
Another important aspect of looking after a trademark portfolio is to ensure that, in consultation with the trademark owner, third-party trademarks with an older priority, which could fit into the client's portfolio or would expand the protection, are monitored for opportunities for deletion or expiration of the protection. Frequently, trademarks are no longer extended after the expiration of the protection period and therefore become available for new registrations. Or, a trademark is no longer used by a competitor and the opportunities for deleting the trademark must be discussed with the client. In this way, existing trademarks can either be expanded with additional - previously occupied - classes or can be protected even more extensively through the addition of corresponding trademarks.
With the growing number of trademarks, the company's own legal department can often no longer keep track of all of this and the cooperation with a law firm that specialises in trade-mark law becomes necessary, in order to always be able to react quickly and effectively.
We can take responsibility for the overall management of your trademark portfolio, but are also pleased to work together with your legal department, in order to provide support and relief in this area.
With the outsourcing of production to low-wage countries in Asia, business criminality has also grown enormously. Often, the falsified products cannot be distinguished from the original products at first glance, which increases the profit margin of the falsified products and pro-motes sales.
The trademark owners naturally suffer losses from this in the form of a decline in sales. However, the trademark image can also suffer, if expensive luxury products are being offered at a fraction of the normal sale price and turn up on every street corner. A third aspect is frequently overlooked with the debate about product piracy:
Where it involves the production of important functional parts, e.g. brake parts for cars, etc., the falsified products are not subjected to the safety controls that an original product must go through. If personal injury is suffered due to material failure of the falsified products, the reputation of the trademark can suffer significantly.
In order to prevent this, the import of pirated products should be combated with customs seizure proceedings.
We have already put this into practice successfully for several clients and have thereby been able to significantly reduce the import of falsified products.
Relevant protection rights that lead to the application of the Product Piracy Ordinance and thus make seizure proceedings possible by the customs authority are:
- Registered trademarks
- Utility models
- Indications of origin and geographical origin details
Copied products, as well as unlawfully produced products are seized.
It is important to supply the customs authority with extensive identifying features for the products within the context of the application, so that the authorised import of original products is not hindered. It has often proven to be purposeful and helpful to present the relevant goods and identifying features to the customs authority, as this makes the officials' work much easier and increases the success rate.
In addition to the customs seizure, it is also always necessary to carry out trade fair inspec-tions together with the customs authorities at the relevant trade fairs, in order to have falsi-fied products directly seized.