Germany Trademark Prosecution Firm of the Year: Grünecker

Q: Can you tell us about your trademark practice (eg, team size, practice focus and key individuals)?

A: Our trademark team comprises six partners and 30 associates and counsel. In 2018 we handled roughly 400 enforcement matters, including more than 60 court cases. In addition, we were in charge of more than 600 prosecution proceedings. The outfit represents international clients all over the world and across many fields – mainly the automobile, developing technologies, fashion and sports industries. Patrons range from start-ups all around the world and in the Bay area to multinational corporations. Maximilian Kinkeldey, Nicolás Schmitz, Anja Franke, Holger Gauss and Martin Aufenanger lead the trademark group.

Q: What are the keys to success for your team?

A: First of all, we love trademarks and we are often our client’s biggest fans. The key to success is not only a complete understanding of all legal aspects of the field, but also the individual needs and approaches favoured by our clients. We seek hands-on, business-oriented solutions. Of course, if necessary, we litigate with full force to protect their business interests, although most of the time we are able to find practical, out-of-court solutions. We understand our patrons’ corporate cultures and adapt our strategies and approaches according to their individual needs and budgets.

Q: What are some of the advantages of working in an IP boutique firm?

A: Grünecker has a wealth of experience in all fields of intellectual property – it has been our DNA for 90 years. The beauty of being an IP boutique is that we do not compete internally with colleagues in other legal fields. Our structure allows us to work together with a worldwide network of local counsels around the world. We are not bound to work with our own branch offices in other countries and can therefore select whichever local counsel will be most effective in any given situation, depending on the client’s needs, strategy and costs.

Q: What is the biggest challenge currently facing trademark attorney firms?

A: With the development of new technologies, the world is moving at a faster pace, creating increased time and cost pressure. In addition, there is more competition than in the past, which means that we are constantly pushing ourselves to stay ahead of the curve. There are a considerable number of legal service providers specialising in certain fields. We therefore focus on providing a bespoke service that is based on quality, experience and team work. The biggest task for us is to adapt to these new developments and to the related cost pressure. However, there will always be a need for clear and structured advice based on both experience and the specific situation and requirements.

Q: Is the job of the trademark attorney becoming easier or harder – and why?

A: The job of a trademark attorney has not only become more challenging, but also more interesting. Clients’ expectations are far more diverse and they therefore demand a more individual and personalised approach. It is neither possible to meet their needs with standardised procedures, nor with pro forma advice. We work hard to develop and optimise our approaches. In addition, the development of new technologies is bringing greater possibilities to provide more immediate, detailed and specific advice. We see the changing landscape as an opportunity and we strive to excel among our peers.

Left to right: Maximilian Kinkeldey, Anja Franke and Holger Gauss, attorneys at law

Q: How have advancements in technology, including AI, helped or hindered trademark practice?

A: New technologies and AI will no doubt support the work of trademark attorneys, but we do not see technology posing a threat to trademark practices – AI is simply not an adequate replacement. New technologies will allow us to handle bigger projects with lower manpower. In particular, trademark clearance searches, which include searches for genuine use of older marks, will become quicker and more effective. Technology has helped and will allow us not only to free up capacity to focus even more on the tasks that require a human law expert but also allows our clients to save money in the process.

Q: How different, and in what ways, do you think future trademark practice will be?

A: Of course, labour-extensive work will require fewer people, but it will remain necessary to provide advice that takes into account all aspects of a case, including the concrete situation and the client’s expectations. In the end, IP practice is built on personal trust and interpersonal experience. In some fields, and perhaps for some firms, technology will be a threatening disruption. However, there will be no digital substitution for open-minded and forward-thinking practices that combine their high-quality work with the possibilities of the future.

Q: What are the main IP challenges facing rights holders, specifically in Europe?

A: First, there are obvious tendencies to further liberalise the secondary markets (eg, spare parts) and it has become harder for brand owners to combat parallel imports. In addition, freedom of expression and freedom of speech have played a significant role in recent case law with regard to defending trademark use. Further harmonisation of trademark law in the European Union is necessary and high standards must be met when bringing this forward. Last but not least, the opinions and referrals of the UK High Court after Brexit will be greatly missed, especially since the UK approach has always been a useful counterpart to the German Federal Supreme Court’s approach.

Q: If you could make one change to the trademark world what would it be?

A: If this were a perfect trademark world, prosecution procedures would be harmonised and standardised across the globe – this would include a unique approach towards describing goods and services. In our opinion, this would take into account only third parties’ rights upon opposition and not ex officio. Finally, a standard worldwide practice would allow for the same requirements in terms of deadlines, procedure and evidence of use across all national offices and facilitate the case management of our patrons’ worldwide IP rights portfolios.

Q: Finally, what advice would you give to young practitioners looking to pursue a career in trademarks?

A: Get out, travel and gain international experience in other jurisdictions. Do in-house internships to understand patrons’ needs. Work hard; get better every day, and when you reach the top, work even harder to stay there. Be dedicated and willing to go the extra mile. Regularly reflect on your strengths and weaknesses. Never forget that you will learn throughout your entire career. Be humble, correct yourself when you are wrong and learn from it quickly. Develop a mindset of growth and a balanced sense of curiosity to be able to recognise when an opportunity strikes and manage the risk involved, instead of seeing only the potential pitfalls. And most importantly – enjoy what you do, every single day.