It has been two years since Austria fully implemented the EU Trademark Directive in order to harmonise national laws with those of its fellow member states. The country chose to introduce these amendments in two stages and the general consensus is that the first – which occurred in 2017 – was far more impactful than the second. However, this is not to say that the consequences of full harmonisation have not been fruitful, as several doors to more innovative brand protection have opened – opportunities which young entrepreneurs have jumped on. Local practitioners have definitely felt the shift, particularly in the technology sector and in the growing digitalisation of the market more generally. On the enforcement front, this has meant that brand owners are now increasingly aware of the need to protect their assets online as well as in physical marketplaces, and lawyers are relishing the opportunity to sink their teeth into new and dynamic legal arenas.
- GEISTWERT Rechtsanwälte
- Schwarz Schönherr Rechtsanwälte KG
- Wiltschek Plasser Rechtsanwälte
- Baker McKenzie
- Binder Grösswang Rechtsanwälte GmbH
- CMS Reich-Rohrwig Hainz
- Freshfields Bruckhaus Deringer LLP
- Gassauer-Fleissner Rechtsanwälte GmbH
- PENDL MAIR
- Puchberger & Partner Patentanwälte
- Wolf Theiss
- Brauneis Klauser Prändl Rechtsanwälte GmbH
- Cerha Hempel Spiegelfeld Hlawati
- Eisenberger & Herzog
- Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
- KWR Karasek Wietrzyk Rechtsanwälte GmbH
- SONN & PARTNER Patentanwälte
- Taylor Wessing
Globally recognised for its innovative services, Baker McKenzie – and particularly its Vienna branch – prides itself on the ample digital expertise behind its doors. It melds a refined understanding of emerging technologies with an efficient, commercially oriented approach to offer 360-degree branding services. Drawing on his own experience as a software developer, “Lukas Feiler provides thoughtful, practical and strategic guidance on how to handle any potential disputes. He has a great understanding of technology and his advice is always easy to execute”. Standing shoulder to shoulder with practice leader Feiler is Martina Grama, who thrives at the crossroads of information technology, intellectual property and unfair competition. She devises protection and enforcement strategies for F LIST while also managing its global portfolio.
Binder Grösswang Rechtsanwälte GmbH
“Top-notch firm Binder Grösswang has a team of excellent lawyers who are approachable, super-easy to work with and know the market inside out. They are also extremely well connected internationally, careful around costs and bring around great results.” Key customers include Harley Davidson and LVMH. The line-up consists of Ivo Rungg, Hellmut Buchroithner and Michael Horak, a tight-knit trio who garner effusive praise from the market. “A brilliant attorney and negotiator, Ivo is really analytical, strategic and has an excellent sense for what companies need.” “Rungg and Buchroithner are always on hand to answer questions, bringing different perspectives to light, as well as possible alternatives, while linking legal issues to other areas, such as tax, to ensure that every angle has been covered. They do not only think legally, but bring in entrepreneurial spirit as well.” Of Horak, one patron enthuses: “He has an impeccable understanding of digitisation, a hands-on mentality and can always be counted on.” Lately, Rungg and Buchroithner have been advising Lausanne 2020, the organisers of the 2020 Youth Olympic Games, and teaming up with Horak to assist Metro Austria.
Brauneis Klauser Prändl Rechtsanwälte GmbH
Making its debut in the WTR 1000 this year is full-service firm Brauneis Klauser Prändl. “Its support across all aspects of trademark protection is stellar – it conducts complex availability searches in short turnaround times for sophisticated brands, and provides comprehensive analyses of both theoretical and commercial risks on the use of marks not only in Austria, but in the whole of Europe too.” “The BKP team has a detailed legal understanding, works towards goals and see business needs as a top priority.” It takes its cue from Martin Reinisch, a “brilliant and responsive lawyer with a sound understanding of different local practices, particularly in the United States and Asia. He is lovely to work with, keeps his clients looped in at all times and is definitely a top trademark practitioner”. He recently went out to bat for Bacardi & Company before the General Court of the European Union and is acting for Spirits International in a case that is set to be heard at the Supreme Court.
Cerha Hempel Spiegelfeld Hlawati
A fresh new face in the guide this year is CERA HEMPEL, a contemporary outfit that has been busy bolstering its IP offering with seasoned hires and a newly established IP/IT division that can also handle issues such as outsourcing, software agreements and data protection conundrums with flair. Of late, the side been managing McDonald’s Corporation’s Austrian trademark portfolio under the watchful eye of food law guru Katharina Majchrzak. “An excellent lawyer with vast knowledge in all areas of intellectual property, she impresses with her thorough and well-reasoned opinions, as well as her superb service level. Her advice takes business objectives into consideration and is presented succinctly yet thoroughly, while being easy to comprehend.”
CMS Reich-Rohrwig Hainz
The Austrian outpost of global set-up CMS ascends into the silver tier this year thanks to its high-calibre work and expansive international reach. The troop has been representing industry heavyweights such as Birkenstock and Marriott in application and opposition proceedings respectively, as well as pursuing infringement proceedings against online retailers for Coty and acting for F Hoffmann-La Roche in the first pharmaceutical parallel import case since the new Falsified Medicines Directive came into force. Taking the lead on all four is Egon Engin-Deniz who has spent more than three decades at the IP coalface. “A reliable and analytical thinker”, he publishes extensively on all areas of intellectual property, giving him solid foundations from which to tackle the most complex cross-border matters.
Entrepreneurs and rights holders seeking to make their mark on the Austrian market should look no further than one-stop shop DORDA, which recently launched a digital industries group to add further value to its robust offering. “All of the practitioners at DORDA are extremely skilled, efficient and to-the-point. What truly sets them apart is their intuitive grasp of modern technology and the social networking sector.” Leader of the pack “Axel Anderl guarantees that the whole operation runs smoothly and has a fantastic overview of legislative instruments and business infrastructure.” He often works side by side with Bernhard Heinzl, “who can turn things around insanely quickly. He is pragmatic, to-the-point and has a knack for pre-emptively avoiding potential legal disputes”. “The pair are really responsive, pick up matters urgently and stand out for their appreciation of technology, its technical terminologies and their communication skills.” Rounding off the team is Andreas Seling, a repository of trust for Bose, the Austrian Federal Railway Company and celebrated orchestra Wiener Symphoniker, among others. He counsels across the contentious/non-contentious divide and frequently lectures on trademark law and innovation management.
Eisenberger & Herzog
“For over a decade, E&H has remained one of our top choices,” enthuses one brand owner. “As a corporate firm, it can cover all our bases; its partners know our business model and deliver top-level guidance”. Another satisfied client comments: “E&H has been instrumental in building up a legal toolbox that improves our efficiency. For example, it designed comprehensive and practical templates that aid the creation of complex IP contracts, which truly illustrates its commitment to commercially oriented solutions.” Practice head Andreas Zellhofer and Helmut Liebel regularly link up, assisting companies such as Immofinanz –the country’s largest stock-listed real estate developer – with its global portfolio and tackling infringers for Honda; they were also recently selected as exclusive counsel for Toyota Austria. “Zellhofer has a wealth of experience, and his ability to address legal challenges at the intersection of intellectual property and competition law really sets him apart. His engaging demeanour and gift of repartee are also always well received.” Liebel is in hot demand for his software licensing know-how, courtesy of his computer science background, and has been making waves on the legal landscape: “His meteoric rise to partner at a young age demonstrates his proficiency and dedication to the cause. He is a thorough analyst and attentive counsellor, exceeds expectations every time and is likely to continue this ascendant trajectory for decades to come.”
Freshfields Bruckhaus Deringer LLP
The Austrian outpost of Freshfields Bruckhaus Deringer dispenses bespoke services to a high-flying client base, tapping into the firm’s international network to provide joined-up brand protection on a global scale. Hailed by peers as “one of the best IP lawyers in the country”, Christof Pöchhacker captains the Vienna squad. The litigation ace maintains a broad practice encompassing copyright, unfair competition, privacy and media and distribution law, making him a wise choice for multi-faceted briefs. He has a knack for commercialising assets too.
Gassauer-Fleissner Rechtsanwälte GmbH
“The fantastic Gassauer-Fleissner is full of outstanding lawyers who really set the bar when it comes to service.” The highly reputed ensemble combines the best of both worlds, matching a global network and the capabilities of a full-service firm with the close attention and quality of a boutique. “Doyen of trademark law” Christian Gassauer-Fleissner has “tremendous industry knowledge”. The big-picture thinker counsels holistically and weaves commercial threads into everything he does. Also providing leadership to the group are fellow equity partners Dominik Göbel and Manuel Wegrostek. The duo recently defended SHARE Marketing-Trading-Logistik at the EUIPO and won all cancellation actions brought by a Chinese entity. Göbel’s enforcement practice is underpinned by an encyclopaedic understanding of advertising law and marketing methods, as well as new technologies. Peers commend Wegrostek as “an efficient attorney and geographical indication guru who provides accurate and prompt assistance in multi-jurisdictional mandates”.
“A go-to for any and all trademark matters, GEISTWERT changed the face of the Austrian legal landscape when it was set up. Its unique strength comes from its five highly experienced, innovative and ambitious founding partners, who are all absolute stars in their respective specialisations. Their entrepreneurial spirit, ultra-quick response times and the results they achieve instil clients with utmost confidence.” First on the team sheet, “Alexander Schnider is an extremely clever strategist, skilled negotiator and logical thinker, and his courtroom presence is absolutely striking. The great thing about Alexander is that he never sees problems – only solutions. He cuts straight through any white noise and gets right to the heart of the issue”. “Both Rainer Schultes and Constantin Kletzer are extremely knowledgeable, quick and easy to work with. They know what rights holders need even before they do.” Schultes is a technology whizz who handles high-profile cases with ease; while Kletzer “combines a thorough knowledge of statutory and case law with a great business acumen, all to the benefit of his clients”. Max Mosing also comes in for particular praise: “He is a renaissance man in the area of intellectual property and somehow still manages to surprise with the breadth of his knowledge and forward thinking. As a practical and commercially minded litigator, he knows all the tricks when it comes to enforcing marks, while providing a comfortable environment for his clients. He is super-friendly, easy to reach, dispenses with the legalese and is always fun to work with.” Completing the line-up is Juliane Messner: “An outstanding negotiator, she drafts bulletproof contracts and handles corporate matters with great diligence. Her advice gets to the crux of each issue and her solutions are hands-on and business oriented.” Juliane is the first-choice for start-ups as well as established companies in the life sciences and IT sectors.
Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
The talented practitioners at Hule Bachmayr-Heyda Nordberg Rechtsanwälte come armed with “a deep legal knowledge base and the ability to cover any trademark matter down to the smallest detail, while always taking into account the practical implications of a case”. Spearheaded by the immensely popular Emanuel Boesch, the side goes the distance as a matter of course. “Exceptionally thorough when examining materials and jurisprudence, Emanuel achieves excellent outcomes in challenging circumstances by applying an innovative approach to complex legal scenarios. His advice is pragmatic, easily executable and founded on immense knowledge and a great business sense.”
KWR Karasek Wietrzyk Rechtsanwälte GmbH
A-list companies flock to KWR Karasek Wietrzyk Rechtsanwälte for its meticulous prosecution services, uncompromising enforcement strategies and flair for the fine print of commercial agreements. IP veteran Barbara Kuchar manages valuable portfolios for the likes of Apple, Campbell Soup Company and Zippo with a deft touch. Another noteworthy highlight was a recent appearance before the European Court in Luxembourg and the European Court of Justice for Gabriel Schmid, an individual producer of pumpkin seed oil, in a widely publicised case regarding designations of geographical origin. “Kuchar is a very thoughtful, customer-centric attorney, with high responsiveness and efficiency. Her communication is sharp and clear, and she can distil complex issues into easily understandable advice. Barbara’s ability to step into clients’ shoes and resolve complex matters in a pragmatic, creative way, which is why everyone loves working with her.”
Since PENDL MAIR set up shop six years ago, its star has been firmly on the ascendant. It quickly proved itself to have the legal and commercial chops for a vast range of complex prosecution, international portfolio management and opposition instructions for some of the biggest industry names around. Dynamic duo Rudolf Pendl and Gerald Mair set the tone for the practice. The pair have been managing over 600 marks worldwide for leading steel company voestalpine High Performance Metals, as well as coordinating all its applications and renewals. “A reliable and innovative professional with a great network of trusted legal experts, Pendl expertly handles international matters”; while Mair “knows the market and the judicial systems impressively well, allowing him to provide hands-on, solutions-orientated advice”.
Puchberger & Partner Patentanwälte
“One of the best” and oldest firms in Austria, Puchberger & Partner Patentanwälte “has maintained a prominent position on the market for decades, thanks to its strategic advice, worldwide prosecution capabilities and wonderful management of large portfolios”. Department co-lead Georg Puchberger can shepherd the even trickiest marks onto the register, a feat that earns him warm praise from peers: “He has an outstanding analytical approach to technical and legal issues, coupled with the skill to provide hands-on solutions based on deep industry insight. Georg is a fantastic negotiator too, especially in IP-driven contracts, and is always able to convince difficult parties with his clear-cut technical and business arguments.” The “personable and highly skilled” Andreas Gehring has written what associates describe as “the definitive book on proceedings before the Austrian Patent Office. He is a prudent leader and can truly be relied on”. Meanwhile, Peter Puchberger is one of the main reasons the firm enjoys the status it holds today. He is a font of wisdom for both clients and colleagues, who rely on him for profound sector and legal insight.
“The exceptionally strong IP practice at Schoenherr is among the best in Austria. Its ability to offer advice that considers all aspects, not just trademarks, is what sets it apart.” Its coverage is reassuringly broad, not only when it comes to the services on offer, but also in its geographical reach – the firm maintains 13 additional offices across Europe and can serve as a regional springboard for brand owners seeking a single point of contact into Central and Eastern Europe. It routinely has some 14,000-plus rights under management and recently oversaw a regional EU mark conversion project for a US-based technology company, as well as enforcing a colour mark in Serbia, Croatia and Romania. “A prominent figure in the country, Guido Kucsko is immensely experienced and knows all the case law there is.” Having spent more than three decades in the game, he shares all that he has learned with the next generation of practitioners. Kucsko also edited the third edition of a leading trademark law commentary alongside Christian Schumacher. “Well known and knowledgeable, Christian is precise, responsive and among the leading lawyers in the country. His communication skills are superb too, as he can easily calm things down when parties get riled up.” Completing the quartet of superstars are Dominik Hofmarcher and Michael Woller. The “charismatic and super-bright” Hofmarcher is a whizz at all things non-traditional; while all-rounder Woller has the coordination of multi-jurisdictional mandates down to a fine art.
Schwarz Schönherr Rechtsanwälte KG
Premier boutique Schwarz Schönherr Rechtsanwälte lives and breathes intellectual property. Its lawyers are resolutely committed to finding the most creative solutions, utilising the latest software and saving patrons costs wherever possible. This tried-and-tested approach has attracted the attention of heavy hitters in the pharmaceutical and fashion and luxury brands sectors – a central planks of the practice. For example, hotshot litigator Georg Schönherr successfully represented Fashion One in a dispute against Fashion TV relating to the use of EU mark BELLMEDIA at the Court of Appeal. “Smart and proactive, Georg is an excellent strategist who is always two steps ahead. He is quick and to-the-point, never wanting to waste his clients’ time or resources.” Teaming up with him on this matter was Markus Grötschl. The pair also vigilantly watch over Starbucks’ portfolio and clear the market of fakes for Luis Vuitton and Valentino, to name a few. Joining them on a mandate for one of the most prominent players in the pharmaceutical industry is dispute resolution maestro Thomas Adocker. “Markus and Thomas are simply excellent. They are knowledgeable, easy to approach and great to work with too.” The versatile Michaela Petsche is “a go-to for critical matters. She is well versed in the law, but thinks creatively and develops sophisticated arguments as well as strategies which are crucial to a successful outcome. Michaela is one of the most refined and dedicated attorneys in the country”.
SONN & PARTNER Patentanwälte
“A superb player on the market for prosecution work, SONN & PARTNER is exceptionally skilled and highly professional. The quality of service is always superb and sure to impress, while the team is full of dynamic young professionals who are great to work with.” Practice leader Rainer Beetz is lauded for his “in-depth analyses, clear communication skills and easy-going nature”. There is nothing this IP guru cannot do, as evidenced by recent work highlights such as registering a sound mark for EVN, overcoming an initial rejection at first instance; and developing a filing strategy for BWT concerning its BWT and Water Drop Logo in 22 classes worldwide. Joining him in the guide this year is Elisabeth Zakl-Buchner, another skilled tactician – especially in global scenarios – for whom availability analyses and co-existence agreements are fortes.
Taylor Wessing comes warmly recommended for its “business-minded approach and straightforward advice”. The global outfit operates from 28 bases in 16 countries, has an extensive network of associates and is a potent presence in Vienna too. Its industry insight in the food and beverage sector is a source of praise and has led to an uptick in instructions not only regarding intangible assets, but also in adjacent disciplines. Martin Prohaska-Marchried keeps the cogs turning: “His pragmatic approach leads to quick solutions instead of long-drawn-out processes. He is knowledgeable, experienced and always ready to listen to any questions or concerns.” Prohaska-Marchried is the lead strategic partner for ÖAMTC, the largest Austrian automobile club; another recent highlight was an appearance before the Higher Regional Court of Vienna to secure a landmark decision for Nestlé on its 3D KITKAT mark.
Wiltschek Plasser Rechtsanwälte
Specialising in both IP and European law, Wiltschek is a discerning choice for commercially consequential disputes. Its lean size is key to its success: a streamlined structure and minimal overheads ensure that costs stay low while guaranteeing ample partner attention for each case. The team understands that each industry has different characteristics and requirements and adapts its approach to suit individual needs in the technology, telecommunications and life sciences sectors. Lothar Wiltscheck and David Plasser are the main draws. Wiltscheck has been navigating contentious terrain for over four decades, where his “extraordinary knowledge and experience give companies an edge over the competition”. Litigation is likewise the metier of Plasser, who has hammered out favourable results in copyright, trademark, patent, data protection and unfair competition disputes.
General practice firm Wolf Theiss has maintained a strong footing on the local IP scene for over 20 years and has a glittering client list to show for it: blue-chips such as Colgate-Palmolive engage it for efficient portfolio management and robust representation in opposition and enforcement proceedings. Its Central and South Eastern European presence is also a major advantage, which Glanbia Nutritionals Ireland recently availed of when it instructed the group to convert its EU marks into national applications in the Czech Republic, Hungary and Poland. “Its services are always at the highest level, and responses are quick and super-reliable” – qualities that Georg Kresbach likewise personifies. The division captain nimbly traverses the contentious/non-contentious divide and recently assisted Take Two Interactive Software in opposition proceedings relating to its international IR mark and R device mark. He also appeared in the Viennese Commercial Court to represent PopSockets in more than 40 cases against local retailers.
Other recommended experts“Intelligent, fair and responsive, Alexander Cizek is dedicated to achieving outstanding results for clients and is an excellent business partner who becomes an extension to in-house teams.” He can be found at CIZEK | IP. Over at Graf & Pitkowitz Rechtsanwalte GmbH, Claudia Csáky has the legal and business nous to settle any qualms wherever they might arise in the trademark lifecycle. Spearheading the life science and pharmaceutical practice at Fiebinger Polak & Partner, Karina Hellbert knows the industry inside out and digs deep to achieve win-win outcomes for patrons. At Schmidtmayr Sorgo & Wanke, WTR 1000 debutant Alexander Koller “has quickly become a major player in the trademark world”; he regularly litigates at the intersection of trademark and unfair competition law. “A straightforward and practical all-rounder, Julia Kusznier dispenses efficient and quick advice. She is solution-oriented and understands what businesses need. Her international focus and excellent network are an added bonus.” She caters to the likes of Lindt & Sprüngli and Toyota Frey Holding from her base at Schindler Attorneys. Sascha Salomonowitz of Salomonowitz Rechtsanwälte Attorneys at Law draws on 20 years of experience to figure out what clients are seeking to accomplish and then sets to this task with brio. “An excellent lawyer with great knowledge in both prosecution and litigation, Katharina Stefanie Schmid and her boutique schmid-ip are an outstanding choice.” A fresh face in the guide this year, “highly experienced and effective communicator” Andreas Weiser has authored a leading commentary on patent law, but is equally savvy when it comes to brand protection too. He is based at Weiser & Voith.
- Axel Anderl - DORDA
- Christian Gassauer-Fleissner - Gassauer-Fleissner Rechtsanwälte GmbH
- Constantin Kletzer - GEISTWERT Rechtsanwälte
- Barbara Kuchar - KWR Karasek Wietrzyk Rechtsanwälte GmbH
- Guido Kucsko - Schoenherr
- Max W Mosing - GEISTWERT Rechtsanwälte
- Christof Pöchhacker - Freshfields Bruckhaus Deringer LLP
- Alexander Schnider - GEISTWERT Rechtsanwälte
- Georg Schönherr - Schwarz Schönherr Rechtsanwälte KG
- Christian Schumacher - Schoenherr
- Lothar Wiltschek - Wiltschek Plasser Rechtsanwälte
- Thomas Adocker - Schwarz Schönherr Rechtsanwälte KG
- Emanuel Boesch - Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
- Hellmut Buchroithner - Binder Grösswang Rechtsanwälte GmbH
- Alexander Cizek - CIZEK | IP
- 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
- Michael Horak - Binder Grösswang Rechtsanwälte GmbH
- Georg Kresbach - Wolf Theiss
- Julia Kusznier - Schindler Attorneys
- Gerald Mair - PENDL MAIR
- Katharina Majchrzak - Cerha Hempel Spiegelfeld Hlawati
- Juliane Messner - GEISTWERT Rechtsanwälte
- Rudolf Pendl - PENDL MAIR
- 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
- Katharina Stefanie Schmid - schmid-ip
- Rainer Schultes - GEISTWERT Rechtsanwälte
- Andreas Seling - DORDA
- Michael Woller - Schoenherr
- Rainer Beetz - SONN & PARTNER Patentanwälte
- Claudia Csáky - Graf & Pitkowitz Rechtsanwalte GmbH
- Lukas Feiler - Baker McKenzie
- Martina Grama - Baker McKenzie
- Bernhard Heinzl - DORDA
- Karina Hellbert - Fiebinger Polak & Partner Rechtsanwälte GmbH
- Alexander Koller - Schmidtmayr Sorgo & Wanke
- Helmut Liebel - Eisenberger & Herzog
- Michaela Petsche - Schwarz Schönherr Rechtsanwälte KG
- Georg Puchberger - Puchberger & Partner Patentanwälte
- Peter Puchberger - Puchberger & Partner Patentanwälte
- Manuel Wegrostek - Gassauer-Fleissner Rechtsanwälte GmbH
- Andreas Weiser - Weiser & Voith Patentanwälte Partnerschaft
- Elisabeth Zakl-Buchner - SONN & PARTNER Patentanwälte
- Andreas Zellhofer - Eisenberger & Herzog