HARTE-BAVENDAMM

Firm overview:

“A nice, prestigious and good law firm, I would definitely recommend the firm,” says a peer. HARTE-BAVENDAMM Rechtsanwälte, founded in 2008 as a spin-off from Allen & Overy, is a boutique law firm specialising on IP/IT and related fields of law, including copyrights, media/entertainment and unfair competition law as well as related litigation and alternative dispute resolution, contracts and transactions throughout Germany and on EU level. HARTE-BAVENDAMM closely cooperates with IP-focused firms (“best friends”) worldwide.

All partners have a background in large international law firms and combine their experience in IP-related commercial matters, transactions and strategic advice with a strong litigation practice. The firm has a strong reputation for committed representation in all kinds of trademarks  litigation on a national and on a European level. Harte-Bavendamm’s lawyers actively contribute as members of expert committees to the analysis and further development of trademark law. The firm has represented clients in various cases resulting in landmark judgments of the German Federal Court of Justice and the Court of Justice of the European Union.

Team overview:

The firm has six partners, two counsels and five associates, advising and representing clients from various industry sectors, such as food, fashion, publishing and media/entertainment, games, automotive, eCommerce and IT, pharmaceuticals. The firm’s work is equally split into contentious and non-contentious work. Leading members include Andrea Jaeger-Lenz who is “highly recommended for trademarks”, Dr Michael Goldman, Dr Malte Lieckfeld and Cathérine Elkemann.

An international client who has used Goldman and Elkemann on matters ranging from defending a major trademark litigation infringement claim to web based takedowns by reason of infringement, describes the firm’s lawyers as: “Excellent. Thoughtful, responsive and sharp. I would not use another law firm on trademark matters; this firm is very good.” A peer says of Dr Malte Lieckfeld: “We shared a client and I thought he did a good job.”

Key matters:

• Thom Browne is a luxury fashion brand based in New York, which was recently purchased by the fashion house of Zegna for 500 million USD. Harte Bavendamm lawyers Michael Goldman and Cathérine Elkemann filed a trademark infringement lawsuit for Adidas against Thom Browne in December 2021 in Germany. Adidas alleged that Thom Browne was infringing various three stripes trademarks owned by Adidas through offering upper body garments with a four bars design.
• The lawsuit covers a number of interesting points, such as should a sportswear company should be able to monopolise three stripes, the potential scope of trade mark protection acquired by Adidas either through registered trademarks or through right acquired by use, arguments of forfeiture (as Thom Browne has been using his designs since 2008).
• The Germany lawsuit is part of a series of international lawsuits in the US, UK, Benelux and before the European Union Intellectual Property Organisation (EUIPO).
• Harte Bavendamm represents Société des Produits Nestlé S.A. (and affiliated companies) on the prosecution of trademarks and designs of all brands for the Nestlé group of companies on the EUTM and CD level, including Nescafé, Perrier, Smarties, Nespresso, San Pellegrino, Buitoni, Maggi, KitKat and Purina. The firm represents the Nestlé-Group in all EUTM and CD application, opposition and invalidity proceedings at the EUIPO and before the European Courts. The firm provides comprehensive trademark, design and unfair competition dispute resolution and litigation in Germany for the Nestlé group of companies.

Clients:

Desitin Arzneimittel GmbH, Deutsche Bahn AG, Deutsches Rotes Kreuz, DIGIMONDO GmbH, FARMA-DERMA s.r.l., HARIBO, Levi Strauss & Co., nobilia-Werke J. Stickling GmbH & Co. KG, Procter & Gamble, Société des Produits Nestlé S.A., Thom Brown Inc., Säkaphen GmbH, Samsøe Samsøe, ZH Crafts AG (Pelikamo)