Morrison Foerster

Firm overview:

Clients cite the US full service firm as “a high quality firm”. From the Berlin office a small team advises domestic and foreign companies and start-ups in all areas of technology and IP law, including on domestic and cross-border trademark conflicts and other technology-related disputes. The firm has represented clients in trademark, copyright, and competition law matters before the ordinary courts, the German Patent and Trademark Office (DPMA) and the European Union Intellectual Property Office (EUIPO).

Team overview:

Morrison Foerster’s Berlin office contains a counsel and associate with a focus on trademarks matters.

Key matters:

• Morrison Foerster has advised a German bank in complex trademark litigation proceedings, including several cancellation actions.
• Morrison Foerster’s Berlin office represented Shift Commerce Limited, a software publishing business based in Barnsley in the UK, in an appeal relating to The First Board of Appeal, European Union Intellectual Property Office Opposition Proceedings No B 3 107 134 (European Union trade mark application No 18 110 784).
• Shift Commerce Limited opposed a 21 August 2019 application by Next Pathway Inc., an automated cloud computer company from Toronto, Canada, to register the word mark SHIFT on 13 March 2020 for class 9: Computer software) and class 42 (Software as a service (SaaS) based on its existing marks including the word mark SHIFT COMMERCE.
• On 17 November 2022, the Opposition Division upheld the opposition for all the contested goods and services on the grounds that the signs and the contested goods and services were identical. On 16 January 2023, the applicant (‘appellant’) filed an appeal against the contested decision, requesting that the decision be entirely set aside.
• On 3 April 2023, Shift Commerce Limited withdrew the opposition, following an amicable settlement reached by the parties, indicating that a decision on costs was not necessary.

Clients:

Alti Asset Management Holdings 2, Ashcombe Estates, Lightspeed Management Company, Radio Echo, Remote Europe Holding, Shift Commerce, Tialis Essential IT, Traferox Technologies, Visku Solution, Zero Proof International