Eschersheimer Landstr. 60 - 62
60322 Frankfurt am Main
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We don't always win either. But we handle each mandate with the greatest care and we are particularly pleased about some of the procedures won. A selection of such recent successes is presented here:
Proceedings before the Trademark Offices (DPMA and EUIPO)
- Decision of the German Patent and Trademark Office (DPMA) of 9/19/2023 - The word mark 30 2015 048 636 "Isha" is declared invalid upon our request (not final).
- Bundespatentgericht v. 3.1.2023 - 26 W (pat) 23/22: We represented the trademark owner in trademark nullity proceedings. The application for revocation was rejected by the DPMA. In the subsequent appeal proceedings, the cancellation applicant requested reinstatement in the prior state of affairs. After our comments and the reference of the BPatG, the cancellation applicant withdrew its nullity request.
- EUIPO, Invalidity Proceedings No. ICD ICD 115 912, Decision of 10/26/2022: The Community design 000222070-0006 is declared invalid upon our request.
- EUIPO, Invalidity Proceedings No. ICD 115911, Decision dated 10/18/2022: Community design 000222070-0009 is declared invalid upon our request.
- EUIPO, Invalidity Proceedings No. ICD 115910, Decision of 10/13/2022: Community design 000222070-0003 is declared invalid upon our request.
- German Patent and Trademark Office (DPMA), decision of 10/13/2021: The word mark 30 2015 051 935 "risa" is declared invalid upon our request.
- German Patent and Trademark Office (DPMA), decision of October 13, 2021 The word mark 30 2015 051 635 "Icebound" is declared invalid upon our request.
Legal proceedings (Regional Courts and Higher Regional Courts)
Regional Court Frankfurt am Main, decision of 17.8.2023 - 2-03 O 536/23: In preliminary injunction proceedings, we enforced a claim for injunctive relief against the online edition of a newspaper due to business infringement.
Regional Court of Saarbrücken, order dated 3.3.2023 - 7 O 83/22: Our client had e-bikes manufactured. She defended herself against the distribution of similar e-bikes and against the adoption of the operating instructions by a competitor. After issuing a cease-and-desist declaration with a penalty clause, we brought an action for information about the scope of the infringement. During the court proceedings, the defendant provided information. The legal dispute was declared settled. The defendant had to bear the costs of the proceedings. It also paid the demanded warning costs and the calculated damages in full.
Düsseldorf Regional Court, judgment dated February 16, 2023 - 14 c O 87/22: In preliminary injunction proceedings for infringement of a Community design, we represented one of the two defendants. The latter was accused of having participated in the infringement. The preliminary injunction already issued was lifted upon our opposition.
- Frankfurt am Main Higher Regional Court, judgment dated November 10, 2022 - 6 U 225/21: Our client was wrongly warned about an alleged infringement of competition law. We brought an action for a negative declaratory judgment against the person issuing the warning. The Higher Regional Court of Frankfurt ruled in our favor and dismissed the warning party's appeal against the first-instance conviction.
- Frankfurt am Main Regional Court, judgment of 05.05.2022 - 2-03 O 230/30: In a competition lawsuit, we represented a Swiss stock corporation and its legal representatives as defendants. The plaintiff had accused them of making misleading claims about the plaintiff. Through our questioning of witnesses at the hearing of evidence, the main witness proved to be a commission and fee witness. The claim was dismissed.
- Frankfurt am Main Regional Court, judgment of 19.08.2021 - 2-03 O 519/19: We represented a personnel service provider and its managing director in a trademark law matter concerning infringement of a trademark and a company logo. The Regional Court dismissed the action in its entirety due to a lack of likelihood of confusion.
- Bochum Regional Court, judgment of 17.08.2021 - I-20 O 180/19: We represented an online retailer as defendant in a competition law case. A competitor had sued for payment of a contractual penalty after submission of a cease-and-desist declaration with penalty clause. In an extension of the complaint, the plaintiff also sought an injunction. We filed a motion to dismiss the action. With regard to the extension of the claim, we invoked the statute of limitations. The Bochum Regional Court dismissed the action in its entirety.
- Munich Higher Regional Court, judgment dated August 5, 2021 - 29 U 6406/20: We represented an online retailer in preliminary injunction proceedings. In the first instance, the latter was partially condemned by the Munich Regional Court I for alleged infringement of the trademarks "Isha" and "Risa". We appealed against this decision. Among other things, we pleaded abuse of rights on the grounds of title fraud due to failure to submit our pre-court correspondence. The Higher Regional Court ruled in our favor: In the appeal, the application for an injunction was dismissed in its entirety on the grounds of abuse of rights (evasion of title due to failure to produce our pre-litigation correspondence).
- Regional Court of Stuttgart, judgment of July 13, 2021 - 17 O 559/21: In preliminary injunction proceedings, we represented an online retailer for alleged infringement of the trademark "Frida Kahlo". The injunction application was dismissed.
- Frankfurt am Main Regional Court, judgment dated April 23, 2021 - 3-10 O 20/20: In a competition law case, we represented an online retailer against another online retailer who was in breach of the obligation to indicate the basic price under the Price Indication Ordinance. After we had already obtained a prohibition in accordance with the application in the previous preliminary injunction proceedings, this was repeated in the main proceedings.
- Düsseldorf Regional Court, judgment dated January 13, 2021 - 2a O 241/19: On behalf of the owner of a fashion brand, we took action against unauthorized use of this brand for children's clothing. The Regional Court condemned the trademark infringer as requested.
- Frankfurt am Main Regional Court, default judgment dated December 16, 2020 - 2-06 O 041/20: A client was warned five times within a short period of time by a competitor for various competition law infringements. Following an unfounded warning under competition law, we filed a negative declaratory action. No one appeared for the competitor at the hearing. The default judgment was issued as requested. The competitor discontinued its warning letters.
- Frankfurt am Main Regional Court, default judgment dated November 6, 2020 - 3-10 O 20/20: On behalf of a client who sells food online, we took action against a competitor in a competition law case on the grounds of infringements of labeling regulations. After the preliminary injunction had already been issued in accordance with the application, the defendant did not appear in the main proceedings. The default judgment was issued in accordance with the application.
- Essen Regional Court, court-recorded settlement dated March 18, 2020 - 9 O 60/20: We represented Europe's largest lingerie manufacturer in preliminary injunction proceedings. The manufacturer was confronted with a high claim from a model. Allegedly, the model's photos had been used without authorization. After the model began to warn our client's customers, we applied for a preliminary injunction against the model on the grounds of unauthorized customer warning. At the hearing, the parties reached a settlement. The model submitted a cease-and-desist declaration with a penalty clause. Our client paid an amount equivalent to 6% of the demanded sum.
- Frankfurt am Main Regional Court, preliminary injunction of January 23, 2020 - 3-10 O 7/20: On behalf of a client who sells food online, we took action in competition law proceedings against a competitor for violations of labeling regulations. The preliminary injunction was granted as requested.
- Frankfurt am Main Regional Court, judgment of 21.01.2020 - 2-03 O 214/19: We represented a well-known manufacturer of home textiles. This was warned in 2015 by a trademark owner for trademark infringement. In addition, its customers were also warned. In total, the home textiles manufacturer paid € 16,000.00 in damages and legal fees to the trademark owner. In 2017, the Federal Patent Court found that the trademark had been applied for improperly and that the trademark owner had issued an abusive warning. We sued for repayment of the amounts paid. The District Court ordered the trademark owner to pay as requested. Attorney-at-law Thomas Seifried
- Frankfurt am Main District Court, acknowledgment judgment of 11.12.2019 - 3-08 O 71/19: On behalf of a Swiss stock corporation in the field of health diagnostics, we took action against a German competitor and its managing director in a competition law case. The competitor had advertised with misleading statements. After being advised by the court, the defendants had fully admitted the claim.
- Regional Court of Frankfurt am Main, decision of 21.10.2019 - 3-08 O 115/19: We represented a renowned law firm in the field of alien employment law against a relocation company that offered prohibited legal services related to alien employment law. The company was ordered to cease and desist.
- Regional Court Frankfurt am Main, decision of 30.09.2019 - 2-06 O 410/19: A singer had hired us. The owner of her former agency unlawfully proceeded from a trademark against a concert organizer who had booked our client. She had issued a warning to the concert promoter prohibiting the use of our client's well-known business name and threatened our client with further prohibitions. The agency owner was ordered to cease and desist due to interference with the established and practiced business.
- Düsseldorf Regional Court, judgment dated 26.06.2019 - 2a O 134/18: We represented an online retailer in a competition law case. A competitor had registered his company logo as a trademark and domain. In addition, this competitor advertised in Google Ads in a misleading manner. We sued for injunctive relief, release of the domain, reimbursement of warning costs and asserted a claim for contractual penalties. The action was largely upheld. The costs of the warning and the proceedings had to be borne in full by the competitor. The trademark and domain have since been deleted.
Frankfurt am Main Regional Court, acknowledgment judgment dated 18.01.2019 - 3-10 O 125/18: On behalf of an insurance broker, we took action under competition law against misleading advertising by a competitor in a trade union magazine and on a website. After service of the preliminary injunction issued in accordance with the application, the advertising was discontinued. Following an objection to the preliminary injunction, the opponent acknowledged it at the hearing. However, the competitor did not want to pay the costs of the closing letter. He said that he had filed an objection and submitted a closing statement at the oral hearing. We therefore filed an action. In its ruling of 26.11.2019, the Frankfurt Regional Court had also ordered the MItbwerber to pay the costs of the closing letter in the proceedings 3-06 O 37/19.
Gera Regional Court, judgment dated 20.12.2018 - 11 HK O27/18: We represented a textile finishing company that was alleged to have caused damage in the amount of 385,000.00 euros due to allegedly defectively finished fabrics. The case concerned, among other things, the inclusion of the Standard Terms and Conditions for Textile Finishing Contracts (EBTV). The claim was dismissed. Processed by: Attorney-at-law Thomas Seifried
Frankfurt Higher Regional Court, Settlement v. 20.12.2018 - 6 U 113/18: We represented a luminaire manufacturer only in the appeal instance, which was prohibited in the first instance from offering a luminaire due to infringement of a non-registered Community design. After a settlement was reached before the Higher Regional Court during the oral proceedings, the opponent had to pay the costs of the first instance in full and half of the costs of the second instance, in deviation from the decision of the first instance.
Federal Patent Court, judgment of 26 April 2018 - 27 W (pat) 511/17: We represented the owner of the trademark "Mori" to the owner of the trademark "MONARI". The latter opposed the registration of the later mark. The DPMA rejected the opposition. The Federal Patent Court shared the opinion of the DPMA that there was no likelihood of confusion between the opposition mark and the challenged mark and advised the opponent to withdraw the opposition. So did the opponent.
Regional Court of Düsseldorf, judgment of 27 February 2018 - 14c O 133/17: For a fashion manufacturer we took legal action against the distribution of imitations from unregistered Community designs. The infringer was ordered to cease and desist and to provide information.
Higher Regional Court of Frankfurt, judgment of 15 February 2018 - 6 U 247/16: We represented a well-known packaging and display manufacturer in proceedings for reimbursement of costs after a patent vindication. The defendant was ordered as requested. The appeal was dismissed.
Regional Court of Düsseldorf, judgment of 07 February 2018 - 2a O 110/17: We represented the defendant in a trademark dispute. The action was dismissed.
- Higher Regional Court of Frankfurt, judgment of 29 June 2017 - 6 U 231/16: In a trademark dispute, we were appointed as date representatives for proceedings before the Regional Court of Frankfurt am Main and the Higher Regional Court of Frankfurt am Main. At the hearing, we presented documents demonstrating the emergence of a prioritised company mark that was opposed to the action mark. As a result, the action was dismissed. The Higher Regional Court upheld the decision and dismissed the plaintiff's appeal.
- Federal Court of Justice of 14 June 2017 - I ZR 202/16: The BGH has rejected the non-admission complaint against the judgment of the Higher Regional Court Frankfurt 10.03.2016 - 6 U 12/15, with costs (we do not represent before the Federal Court of Justice): We represented a specialist publisher in a domain dispute against an owner of numerous two-letter domains based in the USA. Our client filed a lawsuit for violation of the right to have one of these domains released. The Frankfurt Regional Court sentenced the domain holder in accordance with the application. The appeal was rejected for a fee. Our client now owns the domain.
- Hamburg Regional Court, judgment of 30 Mai 2017 - 406 HKO 10/17: In one case of supplementary protection under competition law (protection against counterfeiting under competition law), specifically the imitation of a hygiene product, we obtained a judgement on omission, information and determination of damages.
- Higher Regional Court of Frankfurt am Main, judgment of 11.05.2017 - 6 U 242/16: For a well-known manufacturer of home textiles we had obtained a preliminary injunction for omission and information because of imitation of a registered design. The appeal against the judgment of the Regional Court of Frankfurt am Main was rejected.
- Higher Regional Court of Karlsruhe, decision of 17.10.2016 - 6 U 22/16 (LG Mannheim, judgment of 22.01.2016 - 7 O 118/15 Kart): We represented a well-known brand manufacturer of home textiles in antitrust proceedings. An online retailer asserted an antitrust claim for delivery against them. The action was dismissed in full. The plaintiff withdrew the appeal filed against this after an appeal and a change of attorney.
- Regional Court of Frankfurt, judgment of 20.07.2016 - 2-06 O 422/15: For a well-known textile manufacturer we took action against imitations of designs through an online shop. This is one of Europe's largest retail groups. The proceedings were conducted as main proceedings after previous injunction proceedings had been won. The operator of the online shop was convicted as requested. The counterclaim for annulment of the designs was rejected. According to information, damages were paid.
- Higher Regional Court of Düsseldorf, settlement of 05.07.2016 - I-20 U 137/15, judgment of the LG Düsseldorf of 25.09.2015 - 34 O 109/14. In a complicated trademark case, we represented the plaintiff, a supplier of electrical equipment, against an electrical equipment wholesaler. The core of the legal dispute concerned trademark exhaustion. The Düsseldorf Regional Court accepted exhaustion and dismissed the action. We appealed against this because we still assumed that no exhaustion had occurred. The Higher Regional Court of Düsseldorf agreed with us and recommended a settlement that included the requested ban and obligated the opponent to pay the costs of litigation and settlement. The settlement was closed.
- Higher Regional Court of Stuttgart, 17.03.2016 - 2 U 140/15: We represented a real estate agent. A competitor filed an application for an injunction against the latter on the grounds of a complaint which, in the competitor's opinion, violated the "buyer's principle" (§ 2 Paragraph 1a) WoVermittG). This was also issued by the Stuttgart Regional Court. We appealed against this and appealed the judgment both under substantive and procedural law due to the lack of urgency. In any case, the Higher Regional Court also considered the urgency to be refuted. The competitor had withdrawn its request for disposition.
Regional Court of Düsseldorf, 08.03.2016 - 14c O 166/15: We represented a fashion label in a design infringement case. The opponent claims to have an unregistered Community design and had first obtained an injunction and then filed applications for a fine and periodic penalty payment. We challenged the restraining order on the grounds of legitimacy and lack of service. At the hearing, the court was of our opinion on this matter, which meant that the opponent could no longer win the injunction procedure. In the subsequent settlement, we were able to reduce the original claim for damages by about 2/3 and persuade the opponent to withdraw the administrative and penalty payment proceedings and the main proceedings, which have meanwhile been instituted. In addition, the opponent undertook to pay substantial court and lawyer's fees.
Regional Court of Gießen, Kostenbeschluss v. 26.03.2015 - 6 O 57/14: We represented a wholesaler for electronic articles against a mass dissuader, represented by "warning lawyers". Following our statement of defence, in which we gave a comprehensive account of the abuse of rights, the action was withdrawn.
OHIM Cancellation No 8811 C (Invalidity), 11.05.2015: The Community trademark (today: Union trademark) of our clients has been attacked in nullity proceedings based on an earlier Cypriot, Greek, Italian and an earlier Community trademark. The application for annulment was rejected in its entirety.
Regional Court of Frankfurt am Main, judgment of 10.06.2015 - 3-08 O 8/15: Our client was annoyed by a provider of earphones who advertised his earphones as "high-end technology" in his online shop. In fact, these were technically simple Asian imports. The regional court followed our opinion that this was a deception.
Regional Court of Düsseldorf, decision of 23.10.2014 - 38 O 103/14: We represented a trademark owner against a wholesaler in preliminary injunction proceedings for infringement of the trademark and the company logo through the sale of electrical appliances. The wholesaler was fully convicted and issued a final declaration.
Higher Regional Court of Frankfurt, decision of 05.11.2014 - 6 U 183/14: We represented a wholesaler for electronic articles against a supplier of in-ear headphones (earphones) in a large wave of warnings on the defendant side in the first and second instance. He claimed that the earphones and their packaging had various labelling defects. Already in the first instance (LG Gießen, judgment of 10.09.2014 - 8 O 29/14), the order for a resolution initially issued against our client was revoked in full. The Higher Regional Court of Frankfurt had confirmed the ruling and dismissed the appeal.
Regional Court of Frankfurt judgment of 12.11.2014 - 2-06 O 239/14: We represented a personnel service provider in an online directory for violation of his company registration number. The claims were acknowledged at the hearing.
Regional Court of Krefeld, judgement of 27.05.2014, Az. 12 O 96/13: We defended a fashion manufacturer against the accusation of having offered counterfeit winter jackets and coats for women. The action brought by another fashion manufacturer based on the so-called supplementary protection of performance under competition law was rejected in its entirety.