Baker McKenzie Rechtsanwaltsgesellschaft mbH

Firm overview:

“A good firm,” says German peers of global firm Baker McKenzie’s trademarks practice. While many of the firm’s competitors have pared down their IP departments, IP remains central to the firm’s strategy of providing a broad range of practice areas to clients. Baker McKenzie provides strategic advice in transactional IP and representation in litigation, such as trademark infringement and product piracy cases, including border seizure proceedings. The firm regularly successfully litigates on behalf of clients against the distribution of trademark infringing products.

The firm’s clientbase includes a major Chinese technology company, an American multinational automobile manufacturer headquartered in Detroit, a British multinational pharmaceutical and biotechnology company headquartered in London, and a leading provider in the fields of nutrition, infusions, pharmaceuticals and medical devices. Additionally, a leading US manufacturer of gas, charcoal and electric barbecues (anonymized publishable), a major luxury goods manufacturer and a Germany-based international beverage distribution company.

Team overview:

Baker has three partners and seven other lawyers in Germany with a focus on trademarks including Head of Department Michael Fammler, who lectures at the University of Konstanz, and counsel Markus Hecht who covers the full range of intellectual property law with an emphasis on trademark, design, domain name and unfair competition law litigation. The move by partner Rembert Niebel to local rival SKW Schwarz represents a significant dilution of trademarks and trade secrets capability from the firm. Globally the firm has trademarks capability in Washington D.C., Chicago, Palo Alto, New York, Beijing, Hong Kong, Singapore, Sydney, Taipei, London, Frankfurt, Warsaw, Barcelona, Milan, Madrid, Paris, Vienna, Brussels, Amsterdam and Stockholm.

Key matters:

• In Germany, Baker McKenzie advises BAT (British American Tobacco) and Batmark, the company managing the intellectual property of BAT in all trademarks matters, including strategic issues, opposition and cancellation proceedings. The firm represents BAT in all German trademarks at the DPMA (German Patent and Trademark Office). Baker McKenzie represented BAT in a complex, multi-jurisdiction trademark cancellation action with a large German company on the other side. Team: Lead, Michael Fammler (partner, Frankfurt), Markus Hecht (counsel, Frankfurt), and Anela Winzig (associate, Frankfurt).
• Baker McKenzie assists Calvin Klein in all aspects of enforcing its trademark portfolio. The team recently represented Calvin Klein in a contentious trademark enforcement matter with litigation before the District Court of Hamburg following the seizure of 128.000 units of counterfeit men's underwear. Team: Lead, Michael Fammler (partner, Frankfurt), Markus Hecht (counsel, Frankfurt), and Andreas Jagusch (associate, Frankfurt).
• Baker McKenzie provides ongoing advice to US biopharma CSL Behring on trademark law. The firm has become a close strategic advisor to CSL Behring on complex trademark matters, and continues to advise CSL on parallel import cases involving pharmaceuticals. On the contentious side, Bakers is advising and representing CSL in a worldwide dispute concerning one of its core brands, coordinating and conducting opposition proceedings before several trademark offices. Team: Lead, Michael Fammler (partner, Frankfurt), Markus Hecht (counsel, Frankfurt), and Andreas Jagusch (associate, Frankfurt).

Clients:

BAT, Calvin Klein, E.ON, CSL Behring, Leica, SAP, Unilever, Netflix, Abbott, Fedex, Hasbro, GE, Abbvie, Cassina, Grundfos