Gleiss Lutz
Firm overview:
Full service national corporate firm Gleiss Lutz has also long been one of Germany’s leading trademarks law firms. “I like working with Gleiss Lutz, they are very easy to deal with, very commercial,” says a lawyer on the other side. The firm has administered trademark portfolios for longstanding clients for decades and currently manages trademarks in more than 190 countries. Gleiss Lutz advises clients on strategic consulting, trademark creation and selection, to trademark registration and infringement monitoring.
The firm attracts market recognition for its corporate IP practice, with some questioning whether recent departures, a transactional focus and less visibility in the market, has affected its standing. Another question is if the firm is one of a number with a generational challenge to solve in the next five years. “They are strong in transactional, they are good practitioners, smaller team and focus on pure corporate work,” says a peer. Others say the firm is still to be seen in the courts, retains a “top ten reputation”, and that, “their briefs are always impeccable.” Notes one lawyer, “They do EUIPO work and act for manufacturers in Europe, a litigation firm.”
An international referral lawyer agrees: “On anything technical in Germany I would certainly use them. If I know there's going to be an issue with a filing or there's any contentious matters, they’re certainly a key firm to work with. We’ve been helping them with an issue in the UK and they’ve been handling the ongoing aspect in the EU. It has been a nice collaborative project, with them deciding the strategy and making sure it's coherent across the territories.”
Team overview:
Experienced Munich partner Dr Andreas Wehlau, “a very good, technical lawyer” advises on trademarks and unfair competition law, as well as, IT and media law, and patent law. Adds another peer: “Great lawyer, really great lawyer, I enjoyed working with him, and would happily work with him again. He is a real team player and very knowledgeable, I do not have a single negative thing to say about him.”
Stuttgart counsel Marcel Pemsel is an intellectual property and copyright law lawyer with a focus on trademark law. Pemsel provides strategic advice on trademark applications, litigation before German and European trademark offices and courts, and contract drafting, and trademark licensing. Comments a peer: “There's a few there, but Marcel sticks out as being easy to deal with, very practical, commercial. I don't know how he finds the time for his IPKap blogs.”
Key matters:
- GLEISS LUTZ Stuttgart partners Christian Eulenpesch and Dr Johann Wagner advised Schmitz Cargobull AG on the IP aspects of a joint venture with US trailer manufacturer Utility Trailer Manufacturer Company LLC. Cargobull North America (CBNA) enters the North American market as a leader in transport refrigeration, telematics and all-electric transport solutions, meeting the State of California's strict emissions requirements.
- Gleiss Lutz advised PXG Pharma GmbH on its European Union Intellectual Property Office revocation application against figurative EUTM mark No 13 652 731 in classes 35, 40, 41, 42, and 45 related to various golf services..
- The Cancellation Division of the EUIPO upheld the revocation, saying: “the EUTM proprietor has not proven genuine use of the contested mark for any of the services for which it is registered. It failed to demonstrate it had proper reasons for non-use. As a result, the application for revocation is wholly successful and the contested European Union trade mark must be revoked in its entirety.”
- The Cancellation Division revoked the proprietor’s rights as from 17/11/2022 with the proprietor bearing the costs, fixed at EUR 1,080.
Clients:
Andreas Stihl AG, DER KURIER, Fairtrade Labelling Organizations International, Growthway Investments, Gubor Schokoladen, JDA, Lara Westhauser, Paul H. Kübler Bekleidungswerk, Phoenix Pharmahandel, PXG Pharma, Rübezahl Schokoladen, Schmitz Cargobull, Stiftung Gralsbotschaft, Vila Health UG, Wilhelm Layher
