Representation in trademark law before EUIPO and the European Court of Justice

• A trademark lawyer is already helpful for the trademark application at an office, but not absolutely necessary. However, such a trademark lawyer from Germany I can already provide valuable information in order to avoid a rejection of the application. I, for example, check whether a sign (logo, designation, etc.) is protectable under trademark law at all or on the scope of protection of word/figurative marks. Especially in the case of compound trademarks, I can help to point out non-distinctive or misleading components. I can also support you to establish protection strategies for different countries within Europe.
• Before filing a trademark application, it is imperative to conduct a trademark search. This is because the very filing of such an application can cause a trademark infringement. In order to be able to carry out a trademark search at all, one must know which earlier rights can collide with a trademark to be applied for. This is not possible without in-depth knowledge of trademark infringement.

Do you need a trademark lawyer in trademark infringement cases?

•  In trademark opposition proceedings and cancellation proceedings before the offices (DPMA, EUIPO) and the Federal Patent Court, the engagement of a lawyer is not mandatory. However, it is strongly recommended to do so in order to avoid legal disadvantages, e.g. by failing to raise a non-use objection. A trademark cancellation lawyer can help you with their expertise in such cases.
• It is also helpful to hire a trademark lawyer for advice and representation in cases of trademark infringement and trademark piracy. It is true that a patent attorney can also pursue such infringements out of court with a warning letter with cease-and-desist declaration in trademark law. However, if the opponent does not issue a cease-and-desist declaration with a penalty clause and the trademark infringement becomes pending before a court by way of a lawsuit or preliminary injunction, it is imperative that you hire a professional trademark lawyer. This is because patent attorneys are not allowed to appear before the competent (district) courts without a lawyer.
• It is also helpful to hire a trademark lawyer for advice and representation in the case of infringements of company names and work titles and infringements through Google Adwords or search engine optimization (SEO), as well as in the case of advice and representation in the case of geographical designations of origin (e.g. “Made in Germany”).
• Whether there has been a breach of a cease-and-desist agreement following the submission of a cease-and-desist declaration with a penalty clause can often only be reliably assessed by a trademark lawyer. He can check whether a cease-and-desist agreement has been concluded at all and whether the contractual penalty claim is justified.

Author: Thomas Seifried, trademark lawyer Europe and trademark lawyer Germany