Intellectual Property
In a dynamic business environment that is increasingly digital and international, protecting intellectual property is essential to commercial success.
We specialise in securing, commercially exploiting, defending and enforcing your intellectual property and have extensive and long-standing experience in all the relevant areas.
Our expertise includes managing international trade mark and design portfolios, providing strategic advice on the worldwide development and registration of IP rights, representing our clients in national and international disputes before IP authorities and courts and advising on IP-related contracts, including but not limited to research & development agreements, technology transfer agreements, design and brand licence agreements, coexistence agreements and complex IP-related transaction and restructuring agreements.
Our services
IP strategy
- Developing global IP strategies
- Worldwide IP portfolio management (trade marks and design)
- Worldwide trademark and design registration
- “Freedom to operate” research and analyses
- IP landscaping to develop innovation and marketing strategies
- Employee inventions
- R&D contracts and joint ventures
IP litigation
- Lead counsel in multi-jurisdiction IP litigation (including patent, trade mark, design, antitrust/competition and trade secrets)
- Proceedings before the EGC and ECJ in Luxembourg
- German and cross-border patent infringement proceedings
- Enforcing standard essential patents, including antitrust/competition issues (FRAND)
- German and European trade mark and design infringement proceedings
- Patent nullity and opposition proceedings before the German Federal Patent Court, the German Patent and Trade Mark Office and the European Patent Office
- Trade mark and design proceedings before the German Patent and Trade Mark Office and the European Union Intellectual Property Office (EUIPO)
- Wide-ranging measures to combat piracy (border seizures, trade fair proceedings, online surveillance)
IP licences
- Developing and implementing complex IP licensing models
- Patent pools and technology partnerships
- Insolvency-proof IP licensing solutions
Domain law
- Providing strategic domain advice
- Registering, monitoring and researching domains
- Representing clients in international domain arbitration proceedings, particularly UDRP proceedings
- Depositing trade marks and proof of use with the Trademark Clearinghouse as protection from infringement by the new gTLDs
Copyright and media law
- Please see the Digital Business practice group for more information
Advertising and marketing
- Please see the Digital Business practice group for more information
IP transactions
- Supporting international IP transactions
- Innovative IP financing solutions
- Commercial valuation of IP rights
Antitrust and competition law (German Unfair Competition Act)
- Providing in-depth advice on developing marketing strategies, advertising, sweepstakes, websites and other advertising media
- Protection from imitations based on the concept of supplementary protection under competition law
- Protecting trade and business secrets and know-how
- Working together with our regulatory experts to provide representation in regulatory legal disputes that involve a breach of competition law
- Agreements with advertising agencies
Selected projects
- Abercrombie & Fitch
Advising the lifestyle retailer on trade mark matters, representing it in proceedings before the EUIPO and advising on IP contracts - BASF
Advising on international trade mark strategies and providing representation in several cases before the EUIPO and the German Patent and Trade Mark Office - BMG Rights Management
Providing wide-ranging advice during trade mark disputes and on acquiring the publisher R2M Music from US investment firm Fortress - Crocs
Providing extensive advice to the manufacturer of these popular shoes on trade mark, design and competition law and representing them in border seizure proceedings and proceedings before the German Patent and Trade Mark Office - Data Scape
Providing advice in regard to patent infringement actions involving several disputed patents against several defendants regarding cloud/database/server technology - Fédération Internationale de l’Automobile
Advising the international umbrella automobile association and organiser of well-known motor sport races in various EU disputes regarding FORMULA and defending them before the EUIPO Board of Appeal - Grand Slam Tennis Properties
Providing worldwide trade mark advice, licensing and domains, proceedings before the EUIPO, coordinating national proceedings, negotiations and worldwide trade mark strategy - King
Advising this mobile game studio on worldwide trade mark registrations and international strategy and providing support in proceedings - KRKA, TAD Pharma
Successfully representing clients in temporary injunction proceedings of immense legal and commercial significance against US pharmaceutical group Gilead Sciences, Inc., with the result that generic HIV medications can be marketed in Germany - MedTech Development
Representing the client in various infringement actions regarding medicinal patents - Parker Vision
Advising the technology company on patent infringement actions against several defendants in relation to several patents regarding mobile communications/RFID chip technology - Sovereign Brands
Providing the worldwide well-known producer of high-end alcoholic beverages (luxury brand in more than 100 countries) with strategic advice on developing and protecting a worldwide trade mark portfolio - Sound United, D&M
Defending against patent infringement actions by Philips on standard essential patents regarding audio compression and coding - Thomson Licensing
Representing the client in patent licensing dispute proceedings against Pioneer Corp. before Munich Regional Court; licensing; dispute regarding use and legal validity of numerous licensed patents; repayment of licence fee - TLI Communications
Representing the client in several patent infringement cases regarding a communication system and proceedings on taking and managing digital pictures - Volvo Trademark Holding
Providing worldwide enforcement and defence of the umbrella brand “Volvo”, including proceedings before various trade mark offices and courts - WiLAN
Advising the technology development and IP licencing company on patent infringement actions before Mannheim Regional Court involving several patents regarding LTE mobile telephony (technologically complex standard essential patents, FRAND offers)
Share
“For anything trademark related, Noerr is as good as it gets. The quality of service is fantastic, and the team is knowledgeable, responsive and professional. Simply put, it is the best.”
World Trademark Review’s WTR 1000, 2023 (Spain)Insights
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“In trade mark and competition law, Noerr has established an outstanding reputation in the last few years, primarily in international proceedings. The fact that new clients are continually (…) relying on the team shows that it has mastered the entire palette of soft IP.”
Juve Handbuch Deutschland, 2022 Well
informed
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