Noerr

Firm overview:

Full service firm Noerr is a leading European independent firm recognized for IP law services, including trademarks, designs, copyright, databases, domain names, performing rights, collective licensing disputes, and the commercial valuation of trademarks in co-operation with Noerr’s advisory service line.

Noerr acts as lead counsel on major trademark prosecution projects for international clients, managing more than 14,000 trademarks and over 2,000 design registrations worldwide. A global client says: “Germany is a source of many high quality firms, we have a good experience with Noerr.”

The firm can point to a broad range of quality mandates for leading brands such as  providing worldwide luxury alcoholic brands producer Sovereign Brands with strategic advice on developing and protecting a worldwide trade mark portfolio and advising footwear company Crocs on trade mark, design and competition law and representing them in border seizure proceedings and proceedings before the German Patent and Trade Mark Office.

In April 2024 the firm announced that due to disappointing growth in central Europe its four CEE offices in Bratislava, Prague, Bucharest, Budapest,  would transfer to regional firm Kinstellar as part of a non-exclusive arrangement in the transaction will be finalised in the coming months after all necessary regulatory and other approvals are obtained.

Team overview:

Noerr has six partners and seven other lawyers focused on trademarks across its offices in Alicante, Berlin, Munich, Valentina, and Dresden.

Key matters:

• Noerr represented Abitron in the trademark/unfair competition dispute against Hetronic et alia. culminating in a case before the General Court of the European Union (T-75/20) but also in the US Supreme landmark decision Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023), limiting the jurisdiction of US courts for damages based on sales outside the US territory (Abitron Austria GmbH v. Hetronic International, Inc.)
• The trademark dispute roots in various M&A transactions and is being fought out before German, European and US American courts, and trademark offices. The central question is who owns the IP rights in the get-up/trade-dress and the trademarks used for radio remote controls manufactured by the parties.
• The decision of the Supreme Court of the United States on the extraterritorial application of US trademark law (Lanham Act) was decided in favour of Noerr’s client Abitron, finding that the Lanham Act does not apply extraterritorially and thus limiting the jurisdiction of US courts for granting damages for sales abroad. A Noerr IP team across Alicante and Germany coordinated the about 20 complex trademark proceedings before US and several German courts, the General Court, the ECJ, the EUIPO and the German Patent and Trademark Office in parallel.

Clients:

Abercrombie & Fitch, Abitron Group, Actelion Pharmaceuticals, Adam Opel, BASF SE, C&A, Cadillac Europe GmbH, Car2Cash, CBR Fashion Group, Coloplast, Création Gross, Crocs Inc. / Crocs Europe B.V., CrossFit, Dalian Wanda Group, Eurofighter Jagdflugzeug GmbH, Fujifilm, Fresenius Medical Care, Henkel, Horizon Hobby Inc., Höffner Möbelmärkte, Hultafors Group, Hydrogenics Corp. (Canada), Käfer AG, Kanebo Cosmetics, Karwendel-Werke, King Digital Entertainment, KUKA AG, LEGO, LaSelva, Ligne St Barth, Linxens Group, Marc O'Polo, Micro Mobility, Oilquick, Polaris Industries, Inc., PLAYMOBIL,  Ravensburger, Regeneron, Schutzverband Dresdner Stollen e.V., SkodaAuto Deutschland, Sonax, Sony Pictures Animation, Trendhaus GmbH, Wirecard, XClinical GmbH