Austria opted to implement the EU Trademark Directive (2015/2436) in two stages. While most changes were ushered into law when the first set of amendments came into play on 1 September 2017, the second have come into force more recently on 14 January 2019 to meet the full transposition deadline. With the objective of harmonising national trademark law with those of other EU member states, the additional changes are also designed to increase accessibility for those looking for trademark protection. In general, practitioners agree that the 2017 amendments were more significant, although notable recent developments include: applications for word marks with both lower and upper-case letters being admissible and renewal periods being calculated from the filing date instead of the registration date. Oppositions could previously be based only on prior trademark registrations and applications, but now can be based on earlier trademark registrations on well-known trademarks or those with a reputation within the meaning in Article 6 of the Paris Convention. Austrian trademark lawyers have been keeping themselves busy coming to terms with the new regime and are looking to see how courts will interpret these amendments going forward.
- GEISTWERT Rechtsanwälte
- Schoenherr Attorneys at Law
- Schwarz Schönherr Rechtsanwälte KG
- Wiltschek Plasser Rechtsanwälte
- Baker McKenzie - Diwok Hermann Petsche Rechtsanwälte LLP & Co KG
- Binder Grösswang Rechtsanwälte GmbH
- Freshfields Bruckhaus Deringer LLP
- Gassauer-Fleissner Rechtsanwälte GmbH
- Pendl Mair
- Puchberger & Partner Patentanwälte
- Wolf Theiss Rechtsanwälte GmbH & Co KG
- CMS Reich-Rohrwig Hainz
- Eisenberger & Herzog
- Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
- KWR Karasek Wietrzyk Rechtsanwälte GmbH
- SONN & PARTNER Patentanwälte
- Taylor Wessing
Handling massive trademark portfolios and resolving cross-border disputes is all in a day’s work for Baker Mckenzie’s Vienna outfit. This growing team seamlessly traverses the contentious/non-contentious divide but also possesses the commercial acumen of a transactions specialist. In today’s world, portfolio management can only go so far without technology – the web-based Global IP Manager (combined with its Global IP Support Centres in Manila and Belfast) and managed anti-piracy solutions (MAPS) show that Baker McKenzie is leading the way in trademark innovation. Newly promoted partner Lukas Feiler is at home in the digital arena and “possesses an analytical approach to legal issues but also the skill to provide hands-on solutions, which take into account the specific needs of his clients and the industries in which they operate”. Co-captain Martina Grama is in her element when it comes to handling global trademark portfolios and recently teamed up with Feiler in advising F LIST GmbH on trademark protection and enforcement strategies.
Binder Grösswang Rechtsanwälte GmbH
Binder Grösswang Rechtsanwälte GmbH is a modern, future-oriented side with a sharp focus on digitalisation and a strong international network. This year it has really made its mark with new global clients, acquiring the management of large trademark portfolios and recruiting industry-leading practitioners to its ranks. “The firm garners an excellent reputation in the Austrian market. Companies appreciate its broad IP coverage, responsiveness, cost-efficiency and its entrepreneurial approach to legal matters.” Ivo Rungg and Hellmut Buchroithner form an enviable tag team who are “very knowledgeable, tactically astute and consistently deliver results”. Head of department Rungg “is a bright and perceptive attorney who provides precise advice, sharply tackles problems and finds excellent solutions to perfectly meet his clients’ needs”. Often working in tandem with Rungg, transactions sage Buchroithner is “a solution-driven, practical and reliable attorney”. The marquee signing of the summer came in the form of unfair competition specialist Michael Horak. “A diligent and ambitious IP all-rounder with a pragmatic and calm approach, Horak is an excellent lawyer” who is sure to put Binder Grösswang Rechtsanwälte GmbH on the map.
CMS Reich-Rohrwig Hainz
For multinationals looking for assistance in cross-border trademark disputes, CMS Reich-Rohrwig Hainz is a popular choice where partner Egon Engin-Deniz is the first name on the team sheet. “Engin-Deniz is a strong and competent adversary who is firm but fair in his stance. He is not afraid to tell clients things that they do not want to hear – a rare quality.” Esteemed author of many books and commentaries on trademark law, you would struggle to find a practitioner better versed in the subject.
The IP department at DORDA has a keen eye on IT and new media companies and distinguishes itself on the market with its strategic advice in relation to rebranding and restructuring trademark portfolios. Now handling more than 500 trademarks and with three new junior associates joining in 2018, DORDA is at the peak of its powers. “The team at DORDA is quick, straight to the point and has an excellent international network, which facilitates complex cross-border projects. It makes things happen when its clients’ backs are against the wall and has the bench strength and dexterity to maintain quality if another member has to step in at the last minute.” Axel Anderl, along with Andreas Seling and WTR 1000 debutant Bernhard Heinzl form a terrific triad who “are extremely efficient, keep things simple and keep a cool head in emotionally charged and heated situations”. Leader of the pack Anderl is a “vastly experienced strategist with a universal knowledge of IP matters and is a port of call for many in high-profile cases”. Anderl recently teamed up with master technicians Heinzl and Seling in a trademark and unfair competition case representing McDonalds against Lidl, where they successfully enforced Lidl to refrain from further use of infringing packaging.
Eisenberger & Herzog
Setting it apart from the boutiques, Eisenberger & Herzog is adept at handling IP matters that intertwine with broader commercial, M&A and unfair competition issues. Being a full-service law firm, the team is comfortable in a variety of sectors and is particularly seasoned in managing cross-border trademark portfolios. Ahead of the curve in the IT industry, Eisenberger & Herzog is facing the challenges that digitalisation and AI pose and its recent work advising Samsung on an investment in a tech company in the autonomous driving field is a key indicator of this. Front and centre of this transaction was “absolute IP specialist Helmut Liebel. Lauded for solving complex problems promptly and comprehensibly for non-experts, Helmut combines expertise of the overarching legal concepts with the ability to provide concrete results.” Head of the Vienna practice group is IP, IT and unfair competition pro Andreas Zellhofer, who worked closely with Liebel to handle one of the most significant Austrian start-up exits to date for developer Supertreat, where the pair handled the sale of its popular mobile app game Solitaire - Grand Harvest.
Freshfields Bruckhaus Deringer LLP
Getting massive global deals and complex M&A transactions over the line is the hallmark of Freshfields Bruckhaus Deringer’s IP practice. Headline act Christof Pöchhacker is at the forefront of these matters but is also an experienced veteran on the contentious side of things. “A commercially minded, practical and experienced litigator, Pöchhacker has a strong presence in the courtroom and guides his audiences through persuasive narratives.”
Gassauer-Fleissner Rechtsanwälte GmbH
A gateway to the rest of the world, clients benefit from Gassauer-Fleissner Rechtsanwälte GmbH’s extensive network, which it uses to coordinate global filings and handle large volumes of M&A trademark registrations. A blend of a full-service firm and an IP boutique, its “working style is highly professional and focused and delves into the wider implications for clients providing comprehensive legal advice”. Spearheading the team’s attack are the three full equity partners Christian Gassauer-Fleissner, Dominik Göbel and Manuel Wegrostek. “Luminary, teacher, mentor” are but a few of the words used to describe leading light and senior adviser Gassauer-Fleissner who, through his 30 years of experience, has become synonymous with Austrian trademark law. Recently working alongside him in representing tech start-up company Playbrush GmbH was US and Austrian-experienced and transactions leader Wegrostek, with the pair traversing the online/offline product market to handle the termination of a co-branding agreement. Completing the impressive triumvirate is Göbel who, in addition to being “dynamic, smart and reasonable, knows everything there is to know about trademark law. He is a renowned figurehead who has been in the business for many years.”
Since its opening in 2014, IP, IT and technology specialists at GEISTWERT Rechtsanwälte have gone from strength to strength. The hands-on nature of its partners gives the firm a cutting edge and clients benefit from its direct approach, short lines of communication and strong expertise. “Rockstars of the IP scene, this outfit comprises the next generation of lawyers who are young, dynamic and focused and have rightfully reached their place at the very top of Austria’s IP and IT lawyers.” Kicking off the five-strong line up is Alexander Schnider, “an absolute expert in IP matters. He is one of the most tech-savvy attorneys around, who provides crystal-clear and to-the-point advice on what to do, why to do it and how to do it to get the best results. A tough negotiator, tech enthusiast and business-minded attorney, Schnider is ahead of the game, and certainly ahead of his competitors”. Max Mosing and Constantin Kletzer often work together for trademark and domain name disputes and are go-to counsel for gambling giant Novomatic. “Mosing has a profound knowledge of trademark law and is fast, pragmatic and solution-driven,” while “Kletzer is modern, down-to earth, practical and knows what clients need before they even have to ask”. Juliane Messner steps into the ring when it comes to IP transactions. “Juliane has a brilliant mind and is always incredibly focused on clients’ needs. Her advice is always clear and concise, and she is the perfect team player – which is of utmost importance in large international transactions.” Rounding up this all-star troupe is Rainer Schultes, “an extremely knowledgeable, results-focused practitioner who is quick and easy to work with”.
Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
The growing team at full-service law firm Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH cover all aspects of trademark law – managing national and international portfolios and providing a comprehensive IP service, which takes a helicopter views of all aspects of a matter. Key man and talismanic captain Emanuel Boesch is the driving force behind the firm’s success. Benefiting from his private practice and in-house experience, knowledge of myriad industries and wide-reaching connections in the global IP community, he is a crowd favourite and “He operates at an extraordinarily high level and offers practical solutions to complex legal matters. Taking into account all legal and commercial aspects, Boesch thinks outside the box and is well organised, diligent and provides detailed and concise advice to his clients.”
KWR Karasek Wietrzyk Rechtsanwälte GmbH
In addition to its strategic prosecution and contentious work, KWR Karasek Wietrzyk Rechtsanwälte GmbH benefits from its game-changing commercial department to get IP transactions signed, sealed and delivered. Heading up the firm’s IP department is the “solution-driven and committed” Barbara Kuchar who is at ease in high-stakes trademark disputes. Vast courtroom experience and the ability to produce perfect filings go hand-in-hand, and her clients reap the rewards of this. Representing a who’s who of blue-chip industry leaders, “Kuchar is a competent, experienced, enthusiastic and accessible practitioner”. Her recent prosecution work includes representing Apple in trademark filing and opposition proceedings and Austrian fashion designer Lena Hoschek in protecting trademarks in China and the United States, which highlights the scope and global reach of her practice. Her prowess in the contentious field was on show for all to see where she successfully defended individual producer of pumpkin seed oil Gabriele Schmid before the European Court in Luxembourg and the Austrian Supreme Court. Giving back to the IP community where she can, Kuchar is a frequent lecturer, presenter and has appeared on IP specialist panels.
Pendl Mair is an exciting new addition to the WTR 1000 this year and debuts in style, going straight into the silver tier. The growing IP boutique manages a substantial number of trademarks globally for an A-list client base, has an outstanding enforcement success rate and garners excellent feedback from the market: “The firm offers a superb personalised service that is reasonably priced. It also has excellent international expertise and a reliable network.” The stars of the show are Rudolf Pendl and Gerald Mair. Trademark strategy and transactions maven Pendl is “a seasoned professional who responds rapidly to any query and has enormous knowledge beyond trademark law in the commercial and corporate area”. Mair, whose horizons are equally broad, excels in resolving disputes and is appreciated for his “business-minded approach” and “consistent delivery of excellent quality work”. Also deserving of a shout out is Martin Walser, an “extremely committed” rising star who “gets straight to the point with his practical advice”. Alongside Pendl, he recently advised luxury watch brand Carl Suchy & Söhne on all strategic issues in connection with its relaunch.
Puchberger & Partner Patentanwälte
Steeped in history, Puchberger & Partner Patentanwälte has been a fixture for more than a century. Handling approximately 10,000 registered trademarks and designs, the firm is not resting on its laurels and this year has proved to be a particularly significant one for it. The team’s 2018/19 highlights reel include the acquisition of new business, the addition of two new translators to its ranks, the introduction of more streamlined services to cater for cost effective trademark filings and winning prestigious industry recognition for its prosecution practice. Having co-authored a book on proceedings at the Austrian Patent Office, Andreas Gehring is sought out for his knowledge in contentious matters. “Gehring is an extremely experienced practitioner in trademark law who is ambitious in his approach and has consistently delivered sound advice over the years.” Former Austrian Chamber of Patent Attorneys and leader of the firm Peter Puchberger uses his years of industry experience to play a key role in consulting clients across all of their trademark prosecution, litigation and strategy needs. New addition to the WTR 1000 this year is Partner Georg Puchberger who “is highly qualified and a much sought-out attorney in the mechanical engineering sector”. An experienced practitioner, he is a prominent adviser on the start-up scene.
Schoenherr Attorneys at Law
An IP boutique within a full-service regional firm, the team at Schoenherr has the perfect blend of youth and experience and its specialist side is among the largest in the region. Through its other offices, Schoenherr acts as a both a one-stop shop and a gateway into Central Eastern Europe. One of the distinguishing factors of its practice is its links to other specialisations, which allow clients to benefit from a fuller, more rounded IP service. “Schoenherr has, without any doubt, the broadest trademark practice, which justifies its top position in the market.” Providing efficient, cost-effective and tailored advice with a strong academic focus, Schoenherr is a “group of excellent young lawyers who are appreciated for their responsiveness, proactivity and professionalism”. You would struggle to find a trademark quartet better than Christian Schumacher, Guido Kucsko, Dominik Hofmarcher and Michael Woller. Schumacher is a Rolls-Royce litigator; “friendly but tough, he considers every detail, understands how everything is connected and thoroughly assesses the different implications of cases. He knows it all and simplifies legal jargon in a way that is easily accessible.” Schumacher and Kucsko produce legal publications and commentaries, which are often referenced by the Austrian Supreme Court. For many “there is nobody better in Austria for trademark litigation matters. A luminary, Kucsko is a brilliant lawyer who possesses a deep-rooted knowledge of trademark law and garners praise for his mentoring role in teaching young people about intellectual property.” “Hofmarcher is one of the most talented IP lawyers of the younger generation.” His recent work includes the protection and enforcement of shape marks for renowned players in the luxury goods and pharmaceutical industries. Another next-generation lawyer is co-head of the practice and international trademark portfolio strategist Woller, who is “an excellent communicator, is extremely efficient and provides effective advice”.
Schwarz Schönherr Rechtsanwälte KG
The two cornerstones of Schwarz Schönherr Rechtsanwälte KG’s practice are the pharmaceutical and fashion and luxury brands sectors. Intellectual property courses through the veins of the troupe and the firm remains a top choice for many. Offering a quick and efficient service, clients appreciate the personal involvement of its leading practitioners. Heading up the IP department, all-rounder Georg Schönherr “is a strategic thinker who always has a pragmatic and business-oriented approach. He always provides clear advice and is hands-on and direct. A natural born leader, he finds the right people to handle specific tasks and is great at knowledge sharing.” Schönherr often teams up with hot-shot litigator Markus Grötschl in handling large volumes of infringement, anti-counterfeiting and unfair competition cases for a host of household fashion industry giants. “Grötschl is a standout expert when it comes to trademark enforcement and online infringements and is a go-to practitioner for design law issues. He responds to queries immediately and provides fast and effective input.” Former associate and prosecution guru Michaela Petsche provides a “seamless, smooth and direct service” and teams up regularly with Grötschl and Schönherr in administering portfolios and handling trademark searches and applications for Starbucks. Thomas Adocker completes this fantastic ensemble and is an “excellent attorney in the IP and unfair competition sector who is incredibly knowledgeable and easy to work with”. Schwarz Schönherr Rechtsanwälte KG’s prosecution work for pharmaceutical giant Novartis Group is very much a family affair as all four of its leading practitioners are heavily involved.
SONN & PARTNER Patentanwälte
“SONN & PARTNER Patentanwälte is one of the biggest players in the market and boasts eye-watering filing numbers.” Prosecution sage Rainer Beetz is the main man and is a go-to for clients at home and abroad. Renowned lecturer, author of numerous publications and member of numerous IP associations, he is a prominent figure in the Austrian IP scene.
With a vast global footprint and strong relationships with numerous ‘best friend’ affiliations, Taylor Wessing is making a concerted effort to strengthen its offerings in Central Eastern and Southern Eastern Europe. “With an extensive international network and A-list clients to go with it, the firm is fast becoming established in the region” and its recruitment of three new associates into its IP and IT team this year highlights its ambition. “Taylor Wessing provides business-minded, pragmatic and straight-to-the-point advice.” The heartbeat of the practice is the sensational Martin Prohaska-Marchried. In line with the side’s international slant, Prohaska-Marchried “has a strong global network and therefore has local advice and expertise at his fingertips, irrespective of geographical location. He advises in a timely manner, pre-empting any challenges or issues along the way. His explanations are clear, concise and easily understandable to those from a non-legal background.” His recent work includes assisting global paper producer Zellstoff Pöls in a world-wide trademark roll-out and, on the contentious side, he represented the A1 Telekom Austria Group in a standout complex unfair competition case.
Wiltschek Plasser Rechtsanwälte
Clients choose to work with Wiltschek Plasser Rechtsanwälte because it provides sound advice in a cost-effective manner, has a unique combined knowledge of IP and European law and its partners are heavily involved in matters from the beginning until the end. This versatile troupe has a strong sector focus and particularly stands out in matters involving the food, retail and technology industries. The combination of Lothar Wiltschek and David Plasser is a recipe for success. “The impressive Wiltschek is a grand veteran and is part of the furniture in the Austrian IP scene. He is a brilliant litigator with extraordinary experience in trademark law and the undisputed top lawyer in unfair competition matters.” Plasser follows in his footsteps and is a terrific practitioner in his own right: “Prudent, with strong communication skills and a strong grasp on trademark law, Plasser is an ambitious, skilled litigator who is a real star and is doing an excellent job.”
Wolf Theiss Rechtsanwälte GmbH & Co KG
With more than 20 years’ experience and a gold star client roster, Wolf Theiss Rechtsanwälte GmbH & Co KG is a domestic hub for clients but also provides a passage into the wider Central and Southern Eastern European region. The growing outfit works across a wide spectrum of industries and is led confidently by Georg Kresbach. An IP all-rounder, the scope of his capabilities is reflected in his recent work, where Kresbach and his team successfully advised on the alleged unlawful use of a famous trademark for Facebook and also gained a positive result for PopSockets LLC in a preliminary injunction in the Commercial Court in Vienna in a trademark and registered community design infringement and unfair competition case. “Kresbach not only has a broad knowledge in the field of trademark issues, but he also provides swift and substantiated advice and excellently manages his troupe of motivated young lawyers.” With another new hire joining its ranks this year, the next generation of lawyers at Wolf Theiss Rechtsanwälte GmbH & Co KG are ready to take the market by storm.
Other recommended experts“With highly specialised knowledge and longstanding experience with big firms,” Alexander Cizek of CIZEK | IP does not simply rush into litigation if it is not a good idea. With methodical thinking and a clear strategy, he provides sound advice and equips his clients with the best tools to decide the most appropriate next steps. Claudia Csáky heads the team at Graf & Pitkowitz Rechtsanwalte GmbH where she is deeply appreciated for her “practical and hands-on approach and is a pleasure to have on the other side of a case”. Captaining the life sciences and pharmaceutical law department at Fiebinger Polak & Partner Rechtsanwälte GmbH, Karina Hellbert will get deep into the nitty gritty of her clients’ businesses and industries to find the best possible solutions. Legal and tax advisers Schindler Rechtsanwälte GmbH has added an IP and IT feather to its cap in recent years – spearheading this push is counsel and head of the practice group Julia Kusznier. Providing an A-to-Z IP service for her clients, she is “very collegial, quick, comprehensive, thorough and her advice is always to the point and with commercial sense. She is a proactive and straightforward practitioner who is highly recommended for trademark matters, particularly for prosecution and trademark agreements”. “Katharina Majchrzak is putting food and beverage specialist CERHA HEMPEL Rechtsanwälte GmbH on the map. The firm is much more visible and this is largely down to Katharina. Good to work with or against, she really knows what she is doing; unfair competition sage Majchrzak is a rising star in the market.” Product piracy specialists Brauneis Klauser Prändl Rechtsanwälte GmbH step up to the plate when it comes to trademark management and do so with care, quality and affordable prices. Captain of the ship Martin Reinisch is a seasoned litigator; recent work includes representing Moët Hennessy Österreich GmbH in protecting the famous Dom Perignon champagne against two imitators and handling trademark infringement and anti-counterfeiting work for cosmetic producer Shiseido. Sascha Salomonowitz continues to deliver strong work in his own right at Salomonowitz Rechtsanwälte Attorneys at Law. With more than 20 years’ experience, he “is very well connected and is an excellent lawyer”. schmid-ip is a specialist IP boutique with a real focus on trademarks. With a personal approach, team captain Katharina Stefanie Schmid “provides a unique blend of legal advice balanced by commercial and practical considerations – first-class service with a real understanding of trademark prosecution, searching and enforcement. She is unflappable and a delight to work with.”
- Axel Anderl - DORDA
- Christian Gassauer-Fleissner - Gassauer-Fleissner Rechtsanwälte GmbH
- Constantin Kletzer - GEISTWERT Rechtsanwälte
- Barbara Kuchar - KWR Karasek Wietrzyk Rechtsanwälte GmbH
- Guido Kucsko - Schoenherr Attorneys at Law
- Max W Mosing - GEISTWERT Rechtsanwälte
- Christof Pöchhacker - Freshfields Bruckhaus Deringer LLP
- Alexander Schnider - GEISTWERT Rechtsanwälte
- Georg Schönherr - Schwarz Schönherr Rechtsanwälte KG
- Christian Schumacher - Schoenherr Attorneys at Law
- Lothar Wiltschek - Wiltschek Plasser Rechtsanwälte
- Emanuel Boesch - Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
- Hellmut Buchroithner - Binder Grösswang Rechtsanwälte GmbH
- Egon Engin-Deniz - CMS Reich-Rohrwig Hainz
- Andreas Gehring - Puchberger & Partner Patentanwälte
- Dominik Göbel - Gassauer-Fleissner Rechtsanwälte GmbH
- Markus Grötschl - Schwarz Schönherr Rechtsanwälte KG
- Dominik Hofmarcher - Schoenherr Attorneys at Law
- Michael Horak - Binder Grösswang Rechtsanwälte GmbH
- Georg Kresbach - Wolf Theiss Rechtsanwälte GmbH & Co KG
- Julia Kusznier - Schindler Attorneys
- Gerald Mair - Pendl Mair
- Katharina Majchrzak - CERHA HEMPEL Rechtsanwälte GmbH
- Juliane Messner - GEISTWERT Rechtsanwälte
- Rudolf Pendl - Pendl Mair
- Michaela Petsche - Schwarz Schönherr Rechtsanwälte KG
- David Plasser - Wiltschek Plasser Rechtsanwälte
- Martin Prohaska-Marchried - Taylor Wessing
- Martin Reinisch - Brauneis Klauser Prändl Rechtsanwälte GmbH
- Ivo Rungg - Binder Grösswang Rechtsanwälte GmbH
- Sascha Salomonowitz - Salomonowitz Rechtsanwälte Attorneys at Law
- Rainer Schultes - GEISTWERT Rechtsanwälte
- Andreas Seling - DORDA
- Thomas Adocker - Schwarz Schönherr Rechtsanwälte KG
- Rainer Beetz - SONN & PARTNER Patentanwälte
- Alexander Cizek - CIZEK | IP
- Claudia Csáky - Graf & Pitkowitz Rechtsanwalte GmbH
- Lukas Feiler - Baker McKenzie - Diwok Hermann Petsche Rechtsanwälte LLP & Co KG
- Martina Grama - Baker McKenzie - Diwok Hermann Petsche Rechtsanwälte LLP & Co KG
- Bernhard Heinzl - DORDA
- Karina Hellbert - Fiebinger Polak & Partner Rechtsanwälte GmbH
- Helmut Liebel - Eisenberger & Herzog
- Georg Puchberger - Puchberger & Partner Patentanwälte
- Peter Puchberger - Puchberger & Partner Patentanwälte
- Katharina Stefanie Schmid - schmid-ip
- Manuel Wegrostek - Gassauer-Fleissner Rechtsanwälte GmbH
- Michael Woller - Schoenherr Attorneys at Law
- Andreas Zellhofer - Eisenberger & Herzog