TALIENS

Firm overview:

TALIENS is a European IP, technology and media law firm with offices in Munich, Paris and Madrid (where TALIENS cooperates with the law firm Baylos). TALIENS was founded in 2017 by Dr. Monika  Stöhr and Dr. Thomas Lynker (Munich) and Clara Steinitz and Jean-Frédéric Gaultier (Paris) as a novel cross border spin-off of IP specialists.

The firm provides strategic advice on trademark and competition law, in particular development of filing strategies and management of trademark and design portfolios worldwide proceedings before the Court of Justice of the European Union Court of First Instance and the Court of Justice of the European Union. The firm combats product piracy, in particular border seizures in Germany, EU and international and works on contract drafting and licences. An international client with customs enforcement and infringement challenges in Germany comments: “We certainly refer to TALIENS for any IP activity in Germany.” A fashion client adds: “They are experts for Fashion Brands. They registered our trademark in Europe and other countries and helped me in litigations.”

Team overview:

The Munich office has grown to 12 professionals, 5 partners, 1 of counsel, 1 counsel and 5 associates, plus two paralegals for trademark and design administration.

The two trademarks partners Dr. Federica Togo and Dr. Tobias Malte Müller are admitted to the bar in both Germany and Italy, enabling the firm to secure mandates from major Italian companies (e.g. Pirelli, Stellantis [Fiat, Alfa Romeo, Lancia and others], Unicredit, DIESEL (Marni, Jil Sander, Maison Margiela), ENEL, Geox, Salvatore Ferragamo, Perfetti van Melle [Mentos, Chupa Chups and others], AUDITEL, Kelemata).

Dr. Tobias Malte Müller, is respected by peers, “I know him very well, a great guy, he is a good lawyer, eager.” A client comments: “He always has a very clear strategy and in all cases finds the best solutions for our company.” Malte Müller holds a French university degree (Maitrese en droit) and has an additional focus on South America where he grew up. Dr. Federica Togo holds a doctorate in international law and European Union law from the  University of Florence, Italy, with a scholarship from the Max Planck Institute in Munich. The two partners are arbitrators at international institutions for domain disputes, such as WIPO [Geneva], ADNDRC [Hong Kong], Czech Arbitration Court [Prague], MFSD [Milan]).

A client notes: “Tobias and Federica are extremely valued as our entrusted partners for any IP issue in Germany. Tobias’ advice is often sought in respect of general IP issues. As local contacts they are in charge of the anti-counterfeit services in Germany, in coordination with us.”

Key matters:

• TALIENS represented Pirelli Tyre S.p.A. (Milan) in two trademark proceedings before the European Court of Justice (ECJ) against Japanese tire manufacturer Yokohama Rubber (Joined Cases C-6/19P and C-818/18P). The ECJ handed down its judgment in these two cases in June 2021. The case against Yokohama Rubber was recently settled amicably, while the determination of costs against the EUIPO is still ongoing.
• TALIENS represented ZTE Deutschland GmbH against LG Electronics Inc. in active  EU trademark invalidity proceedings before the General Court. The EGC ruled in favour of our client on  15.02.2023 (Ref. T-741/21). The case is currently before the ECJ (Case C-250/23 P). This case is of great  importance for another complex (see below) and is also important for the registrability of alphanumeric  EU trademarks (here: "V10") in the field of smartphones/tablet computers.
• TALIENS represents Geox Deutschland GmbH in a passive main action (preceded by preliminary injunction proceedings) against Birkenstock for alleged imitation of a sandal (design right, unfair competition law).

Clients:

Geox S.p.A. , DIESEL S.p.A., Westwing (Group), Groupon (Group), Perfetti van Melle S.p.A. (Mentos,  Chupa Chups), Les Éditions Albert René SARL  (Asterix & Obelix), Stellantis (formerly FCA) (Fiat, Alfa  Romeo, Lancia), Pirelli Tyre S.p.A., A.T.U. Auto Teile Unger Handels  GmbH & Co KG, Capri S.r.l., Enel S.p.A., Salvatore Ferragamo, HOTHO Oberflächentechnik GmbH  & CO KG, delta pronatura Dr. Krauss & Dr.  Beckmann KG, ZTE Germany GmbH, Auditel s.r.l., New Era Cap Company Limited, Mondrian Lab Inc (NY) Kelemata S.r.l., KTN Group milon industries GmbH, Lucaffé Venturelli Gian Luca S.r.l., Invincible Brands GmbH, (HelloBody, Mermaid + Me, Banana Beauty and others), Rise Up Fashion GmbH, (oceansapart), Unicredit