Austria

A major trademark market in its own right, Austria also serves as the commercial and legal nerve centre for Central and Eastern Europe. Local practitioners have long been sought after by Western European clients, but now report a surge in demand from North American and Chinese concerns. The EU Trademark Directive is being implemented gradually in Austria as elsewhere, but no upheavals are forecast for the country’s IP legal framework, which underwent significant reform in 2014.

Firms

1
GEISTWERT Rechtsanwälte
Schoenherr Attorneys at law
Schwarz Schönherr Rechtsanwälte KG
Wiltschek Rechtsanwälte
2
Binder Grösswang Rechtsanwälte GmbH
Freshfields Bruckhaus Deringer LLP
Gassauer-Fleissner Rechtsanwälte GmbH
Puchberger & Partner Patentanwälte
Salomonowitz Horak
Wolf Theiss
3
Baker McKenzie
CMS Reich-Rohrwig Hainz
DORDA
Eisenberger & Herzog
Fiebinger Polak Leon & Partner Rechtsanwälte GmbH
Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
KWR Karasek Wietrzyk Rechtsanwälte GmbH
Taylor Wessing
Baker McKenzie
The Austrian member of Baker McKenzie, Diwok Hermann Petsche works hand in hand with the global leviathan’s close-knit network to provide astute stewardship of transnational trademark portfolios. Drawing on the firm’s cutting-edge prosecution management systems, it builds iron wrought protections. It also shows distinctive vision in brokering deals to settle conflicts or extract the full value from intangible assets. Highly skilled lawyers Lukas Feiler and Martina Grama co-head the practice; their top-notch technical knowledge is matched by their personal and attentive service. Tech-savvy Feiler has an especially glittering reputation for working on mandates at the intersection of soft IP and internet law; he represents some of the world’s most prestigious online brands in contentious and non-contentious matters. Previously a mainstay at DORDA, Grama excels in a huge variety of trademark and unfair competition matters.
Binder Grösswang Rechtsanwälte GmbH
“Reliable, fast and accurate”, the soft IP team at Binder Grösswang is a “trusted partner” for a slew of blue-chip companies: it counts Harley Davidson, THQ Nordic and Lensing among its clients. A dynamic general practice with a strong focus on trademarks, the firm – appearing for the second time in the WTR 1000 this year – brings “an excellent business understanding” to every case, shining brightest in IP-heavy deals. Litigation and anti-counterfeiting are other key strongholds for the ensemble, which has also seen an upturn in its portfolio management instructions lately. The department is helmed by Ivo Rungg, who operates with dexterity in contentious matters before Austrian courts, as well as national and European IP offices; he also knows precisely how to extract optimal value from trademarks through judicious transactions. “He has the ability to handle great complexity, while maintaining a practical focus on achieving his clients’ best interests. Rungg has profound legal knowledge and can litigate any soft IP matter effectively. Highly service oriented, he is available personally to answer any questions.” Also handling disputes and agreements with aplomb, Hellmut Buchroithner shows brilliant strategic vision when developing brand rights. He is a “great lawyer – very intelligent, deeply experienced, pragmatic and straight to the point. He is also a team player.”
CMS Reich-Rohrwig Hainz
CMS Reich-Rohrwig Hainz is a compelling choice for domestic and foreign clients with cross-border trademark needs; its stellar international network spans 40 countries. Its squad in Vienna handles the full spectrum of branding matters with poise and has made a name for itself in the fight against fakes boasting particular expertise in the pharmaceuticals, IT and consumer goods industries. Captaining the side, “polished courtroom lawyer” Egon Engin-Deniz pursues brand imitators and parallel importers with unyielding determination. Formerly the head of CMS’s European IP department, he works seamlessly across national borders.
DORDA
An enticing one-stop shop for soft IP needs, DORDA is commended by clients for its “short, precise and to-the-point advice”, as well as its “ability to come up with effective strategies and determination to fight for the best outcome”. Its growing IP team – currently consisting of four partners and three associates – is most renowned for its clear-sighted prosecution strategy and steady-handed rebranding initiatives; it also packs a serious punch in administrative and judicial procedures. Department leader Axel Anderl expertly straddles both sides of the practice; he regularly undertakes clearance searches for McDonalds and also helps the fast food giant to resolve disputes out of court. The internationally minded practitioner’s recent enforcement efforts include tackling infringers in China, as well as a number of European jurisdictions. He has also been kept busy of late coordinating registration efforts in Switzerland, the United Arab Emirates and the European Union for Cyan Mobile. Ancillary expertise in IT, unfair competition and copyright law are further strings to Anderl’s bow.
Eisenberger & Herzog
Having established itself in recent years as one of Austria’s top business law outfits, Eisenberger & Herzog has developed a significant presence in the trademark arena. Working deftly across the spectrum, it performs best as an outsourced in-house counsel for major brands, shaping IP strategy and executing prosecution campaigns. Dynamic and passionate, its specialist practitioners also possess keen business awareness and a cosmopolitan outlook – most cut their teeth at major international law firms. Former Freshfields lawyer Andreas Zellhofer provides assured leadership; he works proficiently across the board, managing the national and continental portfolio of Immofinanz, Austria’s leading real estate developer; and doggedly pursuing unauthorised resellers for Honda and Nikon. Trademark-heavy deals are another strong point: Zellhofer lately acted as lead counsel for German media giant ProSiebenSat. 1 PULS 4 Group in its acquisition of ATV; he also brokered a cooperation agreement on behalf of Vienna’s Haus der Musik. Flanking him is the equally versatile Julia Kusznier, a level-headed prosecutor – for major patrons such as LexisNexis and Megatech Industries and an assiduous enforcer.
Fiebinger Polak Leon & Partner Rechtsanwälte GmbH
Prized for its adept cross-border portfolio development, Fiebinger Polak Leon & Partner is called on by prominent domestic brands in need of trademark protection at home and abroad. Long established in the IP world, the firm is particularly popular with pharmaceutical companies – whose industry its team knows in microscopic detail – and in recent years it has also built a strong foothold in the fine arts sector. Overseeing the side is life sciences sage Karina Hellbert, who is well versed in all facets of intellectual property, as well as regulatory matters.
Freshfields Bruckhaus Deringer LLP
With enviable international support and sterling local practitioners, Freshfields Bruckhaus Deringer dispatches the meatiest instructions with ease. Spearheading the Viennese IP team is the highly acclaimed Christof Pöchhacker. While sure footed in trademark-rich deals, he is most enthusiastically praised for his prowess in contentious matters: “He is extremely knowledgeable and has polished litigation skills; Christof has a good courtroom presence, pleading convincingly and in plain language. He’s also very active and has earned a great deal of experience in soft IP disputes.” Advertising, unfair competition and internet law are his other specialist subjects.
Gassauer-Fleissner Rechtsanwälte GmbH
Well connected internationally, but intimately familiar with the national marketplace, Gassauer-Fleissner is highly sought after by a wide range of rights holders. Although it covers all trademark angles, the illustrious general service firm is notably accomplished in IP-led transactions and hard-fought litigation. Its branding team is praised for the “consistent excellence of its lawyers”. “Soft IP doyen” Christian Gassauer-Fleissner adopts a 360-degree perspective on intangible assets. “He has done everything and knows the subject inside-out,” avers one peer. He mainly focuses on resolving thorny trademark, unfair competition and advertising disputes; of late, he acted for Redwell against Redpur in a successful EU Intellectual Property Office (EUIPO) opposition concerning likelihood of confusion, before having the decision upheld by the EU General Court. A key figure in his team is Dominik Göbel, a hawkish litigator and even-keeled negotiator of licensing agreements. Boasting supplementary expertise in media matters, he advises a number advertising agencies on their campaigns. The firm’s prosecution work has also expanded recently, partly because of the return of Manuel Wegrostek, who now leads the non-contentious practice. The hotshot portfolio manager is trusted by world-famous brands, as well as a whole host of local start-ups. Time spent working in New York for Ladas & Parry means that he takes a patently international approach to briefs.
GEISTWERT Rechtsanwälte
“Rockstar boutique” GEISTWERT progresses into the gold tier this year following glowing feedback from clients and peers. With five top-notch IP-focused partners – each with their own niche specialisms – the firm has unrivalled firepower and the wherewithal to tackle the thorniest disputes. It also serves up sage strategic counsel across the trademark lifecycle. “GEISTWERT is like an IP think tank – among the very best in terms of legal know-how. It has a great team approach and if one partner is unavailable, another can step in to help.” Litigation whizz Alexander Schnider is “extremely efficient and pragmatic, one of the cleverest and most forward-thinking lawyers on the market”. Unfair competition and digital law are his strong suits, and he is praised for his granular understanding of the video games industry, among others. Another key ally in contentious circumstances is time tested and “results-oriented” Rainer Schultes. Perhaps best known for his gilt-edged patent work, the perceptive strategist is also a dab hand in soft IP matters, especially in the pharmaceuticals sector. Recent highlights include acquiring and enforcing trademarks for BTV Bank against BTV-Bezirks TV and overturning a cease and desist order from the Austrian Wine Authority against Weingut Schmied. “First-class lawyer” Constantin Kletzer is in great demand among world-famous names. The skilled portfolio manager is also supremely experienced in opposition proceedings. “He provides practical, value-adding advice that can be implemented without further ado. Responsive and friendly, Constantin quickly comprehends technical matters, but also the client’s needs.” IT and IP maven Max Mosing “is a brilliant legal mind who grasps issues promptly and comes up with creative legal and business solutions”. With Kletzer, he guides prosecution matters for Novomatic: Mosing has acted for the gaming giant in EUIPO oppositions and successfully defended it against a German ‘trademark troll’; he has also assisted it in sealing a number of licensing and co-existence agreements. Working alongside Mosing on these deals was Julianne Messner, a perceptive transactions counsellor with a firm grounding in commercial law. “She thinks not only of what the law says but looks at every matter in a broader business perspective; she is willing to dig down into the commercial situation which surrounds a deal. Julianne has hybrid expertise and can advise on both the IP and corporate aspects of a transaction, when this would usually take two lawyers.”
Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
Continuing to garner plaudits for its first-rate, A-to-Z brand rights offering, Hule Bachmayr-Heyda Nordberg makes its sophomore appearance in the WTR 1000 in 2018. With all-encompassing IP know-how and an enviable grounding in adjacent legal disciplines, the lawyers at this eminent full-service firm see each trademark mandate in panoramic perspective. Standout performer and “brilliant, hard-working attorney” Emanuel Boesch “goes to great lengths to get results. He’s not only a legal expert, but has an extraordinary level of general education – he speaks English, Spanish, German and French – and is a fantastic human being”. Having worked as an in-house attorney at Phillip Morris, he is finely attuned to his clients’ needs and adapts his approach accordingly.
KWR Karasek Wietrzyk Rechtsanwälte GmbH
Illustrious business law firm KWR Karasek Wietrzyk has become a force to be reckoned with in Austrian soft intellectual property in recent years: blue-chip brands are constantly flocking to it, especially for litigation and pre-litigation counselling. Its laser-focused experts interact seamlessly with their colleagues in other departments to produce a trademark service with true commercial flair. The driving force behind the firm’s prevailing success is Barbara Kuchar, a problem solver with a proven track record in all types of IP and unfair competition matters. “She is the ideal partner for patrons – responsive, creative, pragmatic and highly skilled. Barbara knows what she is doing, puts you at ease with her vast experience and makes sensible suggestions throughout.” Amazon Europe and Reckitt Benckiser figure among her star-studded list of clients.
Puchberger & Partner Patentanwälte
Dexterous IP agency Puchberger & Partner secures airtight protection for heavyweight brands; with devoted practitioners and well-oiled back office systems, it manages the largest portfolios with composure and acquits itself well in opposition and cancellation procedures. Having made huge strides of late on the soft IP side – the firm took over Casati & Itze’s trademark portfolio in 2015 – it makes its debut in the WTR 1000. Clients and associate law firms appreciate its professionals’ “great legal skills and efficient, hands-on approach”. Leader of the pack Peter Puchberger is “an effective advocate and an incisive analyst. Timely and efficient, he’s always willing to go one step further”. The versatile practitioner excels in convoluted multi-jurisdictional matters. Similarly impressive, Andreas Gehring possesses “masterful legal knowledge and honed strategic instincts; he provides shrewd evaluations about the probability of getting a trademark granted”. The slick prosecutor “executes cross-border strategies flawlessly” and is also lauded for his “target-oriented approach and dedication to client needs”.
Salomonowitz Horak
An apex predator in Austrian intellectual property since its establishment in 2011, this compact boutique continues to go from strength to strength. Known for its “outstanding academic credentials, broad experience, practical acuity and impeccable service”, its team is a magnet for weighty instructions on both sides of the contentious/non-contentious divide. The side can unpick the trickiest brand rights conundrums with great skill and outclasses its rivals where trademark issues intersect with unfair competition law. Soft IP devotee Michael Horak is admired for his “in-depth understanding and straightforward advice”. He is also “diligent and embraces a challenge; clients are in good hands with him”. Fellow name partner Sascha Salomonowitz performs equally well in high-value transactions and hard-fought disputes.
Schoenherr Attorneys at law
“The very best IP department in the country”, Schoenherr has a rich history of trademark practice and remains at the zenith of the market. Combining boutique-like expertise with the resources and infrastructure of a general-service firm, it outshines competitors in cutting-edge soft IP instructions. The team is a vital ally when it comes to acquiring and enforcing non-traditional marks; it also has a unique talent for maximising the economic value of intangible assets. Although elder statesman Christian Hauer retired recently, Schoenherr still lays claim to many of the country’s most revered specialists. “There is nobody better than Guido Kucsko for litigation or transactions,” enthuses one foreign associate. Another comments: “He surpassed our expectations despite his reputation being second to none. His attention to detail and professionalism are first rate. Guido’s a great advocate with many cases under his belt.” Attracting similarly emphatic praise is Christian Schumacher, an “outstanding player with an incisive understanding of trademarks and a quick mind. He is firm on the merits, but also very diplomatic and open to settlements”. Schumacher is the author of several prominent trademark commentaries. He currently represents an international confectioner in a multi-faceted dispute before the Austrian trademark office relating to a non-conventional packaging and colour mark. In this matter, he has been working side by side with energetic young lawyer Michael Woller, who offers clued-up counsel on all brand rights matters, from soup to nuts. Most celebrated for his expertise in digital matters, Woller resolves domain name disputes in a plethora of jurisdictions. He also lately had success defending a Portuguese food supplement company against infringement allegations before Vienna’s High Court.
Schwarz Schönherr Rechtsanwälte KG
Attracting an all-star clientele, the IP lawyers at Schwarz Schönherr exhibit commercial flair in every instruction: “They have a deep legal understanding but also a clear sense of trademarks as business assets; they provide thorough and practical analyses and are responsive to patrons’ needs. Cooperating with them is easy and they are good at reaching favourable settlements.” The “very professional and dedicated” Michaela Petsche “can be trusted with difficult briefs and makes sure that everything goes smoothly”. The industrious portfolio manager has a penchant for EU law and knows how to get rights granted. On the contentious side, Markus Grötschl is an essential contact: “He is a tremendous litigator with a down-to-earth, non-lawyer way of speaking. His solutions make sense from a strategic as well as a legal perspective.” Battle hardened in civil and criminal proceedings, he is a resolute campaigner in the war against counterfeits, especially for top fashion brands such as Giorgio Armani, Hugo Boss, Lacoste and Louis Vuitton. Name partner and 20-year veteran Georg Schönherr provides inspired leadership across the board; he works with Grötschl and Petsche to manage intangible assets for major drug companies Novartis Sandoz and Hexal and also provides insightful prosecution guidance to Starbucks in Austria. Schönherr has acted for Formula One in cancellation proceedings before the national trademark office; he also won an Austrian Supreme Court decision for Duff beverage against Twentieth Century Fox.
Taylor Wessing
Adopting a bird’s-eye view on all trademark instructions, Taylor Wessing’s Austrian team works in harmony with colleagues across 20 countries and it is also the fulcrum around which the firm’s Central and Eastern European practice turns. Although often collaborating with the Munich office on prosecution projects, the Viennese ensemble is most highly reputed for its adroit handling of cross-border litigation mandates. The standout figure is Martin Prohaska-Marchried, head of the regional IP and IT group and an expert in manufacturing industries. “He serves up profound and detailed advice quickly and professionally.” He has recently been involved in an EUIPO invalidity action for Eternit Österreich and successfully obtained a preliminary injunction from the Vienna Commercial Court against Hutchison 3 for A1 Telekom.
Wiltschek Rechtsanwälte
Gold-tiered IP and European law shop Wiltschek is a top choice for must-win trademark battles; it also has a polished filing practice. “Seasoned and razor-sharp academically”, its close-knit team has a talent for resolving the most complex and intractable cases. Determined, diligent and hands on, name partner Lothar Wiltschek leads the pack; a luminary of Austrian intellectual property, he exploits unsurpassed experience and expertise in soft IP and unfair competition matters. He is flanked by dynamic young specialists David Plasser and Katharina Majchrzak. Plasser is “a perfect blend of the theoretical and practical. He understands all the most challenging questions of trademark law, produces strong arguments and expresses them well. He is serious and hardworking, but always approachable”. Up-and-coming star Majchrzak makes her first appearance in the WTR 1000 for 2018; the food and beverage ace is applauded for her “pragmatic and business-orientated approach”. Like Plasser, she is incredibly well versed in EU law.
Wolf Theiss
Intellectual property has emerged as a key focus for celebrated general practice Wolf Theiss; its Austrian IP unit acquired two new lawyers this year, bringing the total to nine, plus support staff. In addition to the firm’s wide-ranging commercial law capabilities, its trademark lawyers make full use of a peerless Central, Eastern and Southeastern European network to provide an all-inclusive brand protection service to an assortment of global clients. All-around IP lawyer Georg Kresbach helms the “professional, proactive and efficient” team. “He provides top-notch and concise legal counsel and is also a superb litigator”. Kresbach currently manages the Hairdreams portfolio – which contains more than 300 word and image marks – across dozens of jurisdictions and handles prosecution for Colgate-Palmolive. The digital-savvy lawyer also acts for Intelligent Apps in trademark and domain name disputes. High-value transactions are another of his fortes: he recently assisted OBI Group Holding – a leading DIY chain – on its acquisition of 67 bauMax stores in Austria, the Czech Republic, Slovenia and Slovakia.

Individuals

Christian Gassauer-Fleissner - Gassauer-Fleissner Rechtsanwälte GmbH
Barbara Kuchar - KWR Karasek Wietrzyk Rechtsanwälte GmbH
Guido Kucsko - Schoenherr Attorneys at Law
Christof Pöchhacker - Freshfields Bruckhaus Deringer LLP
Georg Schönherr - Schwarz Schönherr Rechtsanwälte KG
Christian Schumacher - Schoenherr Attorneys at Law
Lothar Wiltschek - Wiltschek Rechtsanwälte
Egon Engin-Deniz - CMS Reich-Rohrwig Hainz
Andreas Gehring - Puchberger & Partner Patentanwälte
Markus Grötschl - Schwarz Schönherr Rechtsanwälte KG
Michael Horak - Salomonowitz Horak
Constantin Kletzer - GEISTWERT Rechtsanwälte
Georg Kresbach - Wolf Theiss
Juliane Messner - GEISTWERT Rechtsanwälte
Max W Mosing - GEISTWERT Rechtsanwälte
Michaela Petsche - Schwarz Schönherr Rechtsanwälte KG
David Plasser - Wiltschek Rechtsanwälte
Ivo Rungg - Binder Grösswang Rechtsanwälte GmbH
Sascha Salomonowitz - Salomonowitz Horak
Alexander Schnider - GEISTWERT Rechtsanwälte
Rainer Schultes - GEISTWERT Rechtsanwälte
Axel Anderl - DORDA
Rainer Beetz - SONN & PARTNER Patentanwälte
Emanuel Boesch - Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
Hellmut Buchroithner - Binder Grösswang Rechtsanwälte GmbH
Alexander Cizek - CIZEK | IP
Claudia Csáky - Graf & Pitkowitz
Lukas Feiler - Baker McKenzie - Diwok Hermann Petsche Rechtsanwälte LLP & Co KG
Dominik Göbel - Gassauer-Fleissner Rechtsanwälte GmbH
Martina Grama - Baker McKenzie - Diwok Hermann Petsche Rechtsanwälte LLP & Co KG
Karina Hellbert - Fiebinger Polak Leon & Partner Rechtsanwälte GmbH
Julia Kusznier - Eisenberger & Herzog
Katharina Majchrzak - Wiltschek Rechtsanwälte
Martin Prohaska-Marchried - Taylor Wessing
Peter Puchberger - Puchberger & Partner Patentanwälte
Martin Reinisch - Brauneis Klauser Prändl Rechtsanwälte GmbH
Katharina Stefanie Schmid - schmid-ip
Manuel Wegrostek - Gassauer-Fleissner Rechtsanwälte GmbH
Michael Woller - Schoenherr Attorneys at Law
Andreas Zellhofer - Eisenberger & Herzog
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Issue 74