Bird & Bird

Firm overview:

Known for its technology focus, and operating in Germany for 20 years, international firm Bird & Bird has over 250 lawyers based in Dusseldorf, Frankfurt, Hamburg and Munich. The firm works on complex trademarks disputes, as well as non-contentious matters, across its network in Europe, the Middle East and Asia. Bird & Bird is recognised as a leading trademarks firm and one of the most present international firms in the German market. “They have a strong IP practice and their briefs are among the best in the market”, say peers, who also acknowledge, “a good filing practice, with very strong lawyers”. The firm advises electrical vehicle manufacturer Tesla internationally and recently successfully acted for German supermarket chain LIDL in the UK in a landmark infringement and passing off Court of Appeal case against rival Tesco. A client adds: “We have worked with the firm for many years and I would recommend them.”

Team overview:

With a team of 10 partners, 7 counsel, 21 associates and 1 of counsel, Bird & Bird’s German trademarks lawyers work closely with their colleagues in firm offices across the world. The team includes well-known trademarks lawyer Richard Dissmann, an IP litigator with 20+ years of experience, focused on all non-technical IP matters like trademarks, designs, copyright, unfair competition, internet and domain names and defamation law. Peers naturally name him among Germany’s leading trademark lawyers. A client comments: “From time to time we work with Richard Dissman at Bird & Bird. He is very flexible and highly strategic and professional. Richard is a strong and tough litigator.”

Frederik Thiering is active on trademarks for car maker VW and its subsidiary Skoda Group, and also acts for Audi on unfair competition. Says a peer: “He is author of one of the standard commentaries on trademarks law and for that alone he should be ranked highly!” Dr. Markus Koerner, a founder of the Munich office, specialises in trademarks litigation and licensing and is a member of the firm’s management committee. Says a peer: “He always  looks for the best solution. He is an excellent negotiator, a complete lawyer, I learned a lot from him.”

Key matters:

• Bird & Bird Munich partner Dr. Richard Dissmann and associate Dr. Laura Jones won a court battle for the European Commission in 2021 on jurisdiction of national courts in trademark infringement proceedings against EU institutions. Brussels relationship partner Jean-Christophe Troussel referred the case.
• The Regional Court of Düsseldorf unilaterally issued an interim injunction against the European Commission for alleged infringement of an EU trademark by way of urgent legal protection.
• The European Commission objected, claiming: i.) The national courts of the Member States do not have jurisdiction under the rules of the EU Treaties in proceedings brought against EU institutions, ii.) Such claims must be brought before the courts of the European Union in Luxembourg.
• In a ruling (ref. 34 O 8/21), the Düsseldorf Regional Court decided that it had no jurisdiction over the matter and revoked its own interim injunction due to The Treaty on the Functioning of the European Union (TFEU) providing that only the Union courts may rule on actions for damages in the area of non-contractual liability of the European Union or one of its institutions. The regional court accepted that the concept of damages, non-contractual relief and claims for injunctive relief would be interpreted in accordance with the provision.
• Bird & Bird represents Monster Energy on a multi-jurisdictional prosecution and recently won an opposition decision against ACER in a German court.
• Bird & Bird Munich trademarks partner Dr. Markus Körner, with associates Soeren Alborn and Yvonne Schaafs, advised Group14 Technologies, the leading global manufacturer and supplier of advanced silicon battery technology, on the acquisition of Schmid Silicon Technology Holding GmbH.

Clients:

AIDA Cruises - German Branch of Costa Crociere S.p.A., Brown Bag Films Unlimited FWU, gematik, Group 14 Technologies, The European Commission; LIDL, Monster Energy, MULTIFIT Tiernahrungs, Skoda Group, Steigenberger Hotels, Tesla