SKW Schwarz

Firm overview:

The IP department at “quite dynamic” full-service regional firm SKW Schwarz continued to grow in 2023 with the eye-catching hire of IP partner Dr Rembert Niebel from Baker McKenzie, alongside the addition of several new associates. The department deals intensively with innovations and future topics such as artificial intelligence, medical technology / digital health, ESG / greenwashing and consumer behaviour (e.g. dark patterns) and their impact on the clients' business. In all these topics, the department works closely with the excellent Media & Entertainment and IT & Digital Business departments.

A global consumer products company, struggling with the proliferation of online sites offering counterfeit products, uses the firm in its international game of “whac-a-mole” against these sites. “We use SKW Schwarz to handle the lion’s share of our contentious matters in Germany, on the plaintiff’s side and the defendant’s side. We look for teams that can consistently deliver high quality legal work and advice at a very reasonable price.”

The department has also been able to significantly expand its work in technical IP rights, including in high-tech areas such as 3D printing (EOS), soil preparation (Intrapore). Interdisciplinary cooperation takes place primarily in the focus groups. With groups "Branded Content & Influencer Marketing", "Medical Cannabis", "Esport" and (new in 2023) "Digital Health" being prominent.

Team overview:

Headed by Dr. Oliver Stöckel the firm has 14 partners and 12 other lawyers with significant activity in trademarks across three of its four regional offices - Munich, Berlin and Frankfurt. In June 2023 Dr Rembert Niebel arrived from rival Baker McKenzie where he led the German IP practice for many years bringing a wealth of experience in national and international trademarks and trade secrets matters.

Partner Margret Knitter focuses on the development and defence of trademark and design portfolios, border seizure proceedings and advice on developing marketing campaigns. A client says: “She is very responsive, high-quality work and charges reasonable prices. I would highly recommend her.”

Dr. Magnus Hirsch advises German and international clients on trademarks, designs, copyrights, patents, and unfair competition – in preventative and contentious situations. He has appeared in many Federal District Courts, as well as Courts of Appeal, throughout Germany, and has represented several clients in proceedings up to the Federal Court of Justice. A client describes Hirsch as, “an exceptional IP lawyer of the very highest calibre, very practical, knows our business well, and is extremely responsive to our needs. He is a cut above the rest.” An international client identifies Christoph Wiegand as a go to lawyer in Germany.

In April 2024 it was announced that European law firm Fieldfisher opened a new four-person German practice led by IP litigation specialist Sascha Pres with lawyers Christina Kufer, Tien Nguyen and Laura Krug, all switching from SKW Schwarz to Fieldfisher’s new Berlin operation, joining on July 1.

Key matters:

• Timberland - Frankfurt partner Dr. Magnus Hirsch, and associate Jonas Laszlo Schüler assist US footwear company Timberland with brand enforcement activities including customs (border seizures) and police action.
• Audi AG - Munich partner Dr. Dorothee Altenburg represents car maker AUDI AG in application and opposition proceedings before the German Intellectual Property Office (DPMA) and European Union Intellectual Property Office (EUIPO), inter alia against foreign competitors (including US electric vehicle maker Rivian), assisted by associates Cynthia Smponias, Munich and Dr. Thomas Hohendorf, Berlin.
• Atlantic Natural Foods -  Atlantic Natural Foods v. Veganz for use of the Tuno trademark for vegan tuna. Dr. Sascha Pres, Berlin led a team of Tien Nguyen, Tom Gebel, Jakob Möller and Leon Hensel advised Atlantic Natural Foods, a food company based in Nashville, USA, on an extensive complex of disputes from a total of 13 proceedings before courts and offices. Atlantic Natural Foods instructed the team on a follow up complex matter.
• SKW Schwarz - Margret Knitter, Munich, Intellectual Property, Dr. Ulrich Reber, Munich, Litigation, Cynthia Smponias, Munich, Intellectual Property - provides strategic IP advice to Hologate GmbH, a market-leading immersive media company specialising innovative extended (XR) solutions for entertainment and enterprise with the largest VR network worldwide, on games and VR, market presence support and brand management. This is a strategically important interdisciplinary mandate between the IP and digital business (games / VR) practices, for the development and implementation of complex application strategies under trademark law.

Clients:

Atlantic Natural Foods, Audi AG, Aurelius Group, Famedly GmbH, Hologate GmbH, Nikko Toys Limited, On Clouds GmbH, THE NORTH FACE, Timberland, VANS Inc.