The Austrian Trademark Protection Act was amended in late 2017 to partly implement the EU Trademark Directive – most notably, the harmonised calculation method for the trademark protection period was transposed; the protection of certification marks was made possible; the official fees were decreased; and aspects of prosecution procedure were streamlined. Further changes will need to occur before January 2019 – the date by which full transposition of the directive is required. There have been no major developments in the law and IP firm market, while in the WTR 1000 rankings for 2019 there are two changes; DORDA has earned a promotion to silver and SONN & PARTNER makes its debut on the list.
- GEISTWERT Rechtsanwälte
- Schoenherr Attorneys at Law
- Schwarz Schönherr Rechtsanwälte KG
- Wiltschek Plasser
- Binder Grösswang Rechtsanwälte GmbH
- Freshfields Bruckhaus Deringer LLP
- Gassauer-Fleissner Rechtsanwälte GmbH
- Puchberger & Partner Patentanwälte
- Salomonowitz Horak
- Wolf Theiss
- Baker McKenzie – Diwok Hermann Petsche Rechtsanwälte LLP & Co KG
- CMS Reich-Rohrwig Hainz
- Eisenberger & Herzog
- Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
- KWR Karasek Wietrzyk Rechtsanwälte GmbH
- SONN & PARTNER Patentanwälte
- Taylor Wessing
Baker McKenzie is the destination of choice for companies with worldwide aspirations. Its Vienna team has the international coordination of portfolios and brand protection down to a fine art, and also offers sophisticated transactional services. The firm’s deployment of innovative legal technology makes it incredibly efficient on all fronts. Co-captains Lukas Feiler and Martina Grama leverage the firm’s network to stay on top of market changes around the globe. As a former software developer, Feiler is a great option for matters arising in the IT sector. He also has a penetrating insight into trademark law. Grama is a tenacious litigator, savvy strategist and unfair competition buff.
Binder Grösswang Rechtsanwälte GmbH
“An ability to deliver top-quality work while handling the most complex matters. The primary focus at Binder Grösswang is clearly the client. Its lawyers are service minded, delightful to work with and have expertise in every legal discipline relevant to brands.” Taking the reins of the trademark practice are Ivo Rungg and Hellmut Buchroithner. “They are reasonable lawyers who look at issues from a practical perspective. Both are strong advocates for their clients and only look for solutions which best suit their business needs. Ivo has a profound understanding of all aspects of intellectual property, he does a tremendous job and is triumphant because he sees his client’s successes as his own. Ivo is a well-respected member of the legal community and has an impressive network of international associates.” “Hellmut has significant experience in trademark matters and combines unsurpassed expertise with a go-getting attitude.” The duo render an A-to-Z service for blue-chips. Rungg and Buchroithner are great when it comes to transactions and recently advised Constantia Flexibles on IT and IP matters regarding the sale of its label division to the Multi-Colour Corporation, a deal which amounted to €1.15 billion.
CMS Reich-Rohrwig Hainz
CMS Reich-Rohrwig Hainz is a go-to for domestic and foreign clients who need decisive strategies for cross-border disputes. Mainstay Egon Engin-Deniz is the backbone of the IP team. He is the author of The Trademark Law and other laws governing Trademark Identifications and regularly writes leading commentaries on the changing legal landscape. Engin-Deniz is a battle-hardened trial lawyer who also understands how to construct ironclad portfolios.
DORDA’s “excellent trademark team” is comprised of “hands-on practitioners who devise solutions that are sensitive to business realities. They also turn work around at phenomenal speed, and give to-the-point advice. Axel Anderl is the strategic mastermind pulling the strings. “He is a leading figure on the IP market, who always finds a way to add value.” Anderl is meticulous and overlooks nothing in his quest for strong trademark protection. His right-hand man Andreas Seling makes his debut in the WTR 1000 this year thanks to excellent feedback. “You can rely on Andreas in critical, complex cases; he works at lightning speed but manages to maintain a high level of quality. Andreas and his team are easy to communicate with, they listen carefully, and respect the concerns and interests of others. Andreas truly understands the needs of his clients and identifies the most effective courses of action.” The ensemble caters to a slew of leading domestic clients and start-ups. “Emerging businesses are in capable hands. The team demonstrates excellent foresight and helps them avoid pitfalls.” Anderl and Seling work with Vienna-based jewellery store Wenn and having nurtured the brand in its early stages, now play a key role in its continuing international expansion.
Eisenberger & Herzog
Traditionally known as one of the leading Austrian business law firms, Eisenberger & Herzog has solidified its reputation as a one-stop trademark shop. The recent uptick in M&A and other transactional activity across Europe has kept the IP team busy this year. Andreas Zellhofer acted as lead counsel for Samsung on a strategic investment in TTTech, conducting a due diligence review of the agreements regarding IP and IT content as well as the latter’s IP portfolio. Zellhofer “is an excellent lawyer who takes his clients’ interests to heart and delivers innovative solutions. He is especially experienced in handling sensitive cross-border matters.” Zellhofer is instructed in prosecution mandates by Immofinanz, Austria’s largest real estate developer; BUWOG, the leading full-service provider in the residential property sector; and Haus der Musik, the interactive museum of sound in Vienna.
Freshfields Bruckhaus Deringer LLP
Freshfields crafts strategies which give brand owners a cutting-edge advantage over competitors. The international full-service firm works across cultural and geographical boundaries and is well-poised to guide clients wherever their brands and businesses take them. Renowned trademark lawyer Christof Pöchhacker leads the line-up in Vienna. “Christof is an impressive litigator. He has a pragmatic approach and business acumen. He is one of the best IP lawyers in the country.” An even-keeled negotiator, he handles his fair share of lucrative transactions.
Gassauer-Fleissner Rechtsanwälte GmbH
Neither a boutique, nor a full-service firm, Gassauer-Fleissner offers a unique IP-plus approach. Capable of handling the full spectrum of brand management services, the team is equally experienced in mergers and acquisitions, and spends a considerable amount of time guiding IT companies in contract negotiations involving IP assets. Spearheading the squad is the venerable Christian Gassauer-Fleissner. “Christian is a longstanding figure in the Austrian market and a trademark doyen.” Manuel Wegrostek crafts forward-thinking strategies and is willing to fight tooth and nail to defend brand owners when the going gets tough. Those needing a seasoned litigator turn to Dominik Göbel. He knows how to advance persuasive and resonant arguments to record satisfying wins.
Compact yet first-class boutique GEISTWERT “stands out from the Austrian legal crowd”. It acts as a think tank, sharing infinite knowledge “to deftly guide clients through choppy legal waters”. Alexander Schnider, Max Mosing, Constantin Kletzer, Rainer Schultes and Juliane Messner form a constellation of stars. “An IP all-rounder, Alexander is clever and gives fruitful advice that shows companies how to use their brands to achieve business goals. He is a trademark wizard with some of the best legal knowledge in Austria. When presented with a complex case he drills down on critical issues with ease.” Colleague Mosing is applauded by patrons for his “quick and flexible responses, his clued-in counsel is clear and crisp”. Mosing and Kletzer represent one of the largest global gambling companies, Novomatic, in a majority of its international trademark cases along with developing the brand’s strategy. “Constantin is a familiar face in the courtroom. He is exceptionally bright, but ultimately practical. Unlike a lot of Austrian lawyers, he is less formal and easy to approach.” Kletzer recently conducted a major seizure on behalf of Christian Louboutin, eliminating 2,000 copycat goods from the market. Another contentious hot-shot, “Rainer is a fierce opponent. However, he is always open to serious and reasonable negotiations.” “Juliane is all about solutions; while others are talking problems, she has already resolved the issue. She understands the importance of constructing commercially savvy strategies, thus her advice is given with consideration for economic and business factors. When it comes to transactions Juliane is quick to analyse and determine the core IP aspects and she is efficient in settling matters. Juliane is a formidable and intuitive team-player who knows when to jump in or stand down.”
Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH
Hule Bachmayr-Heyda Nordberg dispenses a comprehensive suite of services. The IP practice stands on its own two feet within the firm, and its nimble set up allows it to be flexible in addressing and adapting to client needs. The lawyers here see the bigger picture and take a holistic approach to craft tailor-made strategies and solutions which address patrons’ individualistic goals. The group acts under the assured leadership of “excellent and diligent trademark lawyer”, Emanuel Boesch. “Emanuel is brilliant and consistently delivers services of the highest calibre. Rights holders can rely on him to provide thorough, practical advice, even at short notice. Emanuel is passionate about what he does; he makes the effort to learn the ins and outs of each business and goes the extra mile to achieve a winning result.” Boesch previously worked at Philip Morris so he understands first-hand the various pressures felt by in-house counsel and makes it his mission to assist his clients as quickly and efficiently as possible.
KWR Karasek Wietrzyk Rechtsanwälte GmbH
KWR Karasek Wietrzyk is a corporate firm with a flair for intellectual property. While recognised for its exceptional litigation and pre-litigation counsel, the outfit also has a bustling prosecution practice which helps protect crown jewel brands. Renowned name Barbara Kuchar runs the show. She has been handling prosecution matters for Amazon Technologies. Kuchar is a frequent visitor of both the Austrian Patent Office and the Court of the European Union, she is a superior litigator who is always one step ahead of her adversaries.
Puchberger & Partner Patentanwälte
“Puchberger & Partner is an excellent firm which is easy to work with.” This IP agency specialises in securing protection for iconic brands and has a passionate team of attorneys capable of handling sprawling international patent and trademark portfolios. It is also well versed in opposition and cancellation proceedings. Foreign associates applaud the firm for “anticipating and answering questions before they are asked”. Recognised for his prowess in non-contentious matters, Andreas Gehring “provides invaluable counsel, he is the co-author of a book about proceedings at the Austrian Patent Office, which is regularly cited by the courts. Andreas is a genius in developing arguments and strategies and can confidently go head-to-head with the best. He was retained to act alongside a German lawyer in a high-level patent infringement litigation in Germany, which is a rare occurrence and testament to his level of skill.” Flanking Gehring is prosecution whizz Peter Puchberger. “Cooperation with Peter is always flawless” and his deep experience enables him to alleviate any brand management headache.
Boutique Salomonowitz Horak is a major player in the Austrian market, gifted not only in the trademark field, but also in unfair competition and software law. Sascha Salomonowitz is a powerful litigator. Not one to sugar coat the facts, he cuts straight to the heart of the matter and puts a quick end to disputes. Co-captain Michael Horak “knows more than a thing or two about IP law; his breadth of knowledge and strong academic credentials make him a top choice in intractable brand conundrums.”
Schoenherr Attorneys at Law
“Schoenherr has an impressive IP practice which is among the best of the country.” This gold-studded outfit has cemented its leadership status by flawlessly coordinating cross-border disputes across Central and Eastern Europe. The set has the resources to handle multifaceted cases while also giving undivided attention to each and every client. Talisman Guido Kucsko is “a recognised authority on IP issues. His expertise is second to none and he always exceeds expectations.” “Dominik Hofmarcher is one of the most talented IP lawyers of the younger generation. He unravels complex legal problems and communicates their solutions in a simple manner, drawing attention to what is significant from a business perspective. Kucsko and Hofmarcher are excellent legal guides with a long track record of wins.” A highlight for the pair was defeating a German competitor attempting to enter the Austrian market with a brand similar to HEIDI Chocolat Suisse. One of the busiest in the practice, Christian Schumacher, “strikes fear into the heart of his rivals – he is a challenge to have on the other side in a dispute. He knows how to capture an audience and expertly measures pros and cons to design infallible strategies. Christian is a true IP aficionado who can answer the most convoluted trademark questions.” Newly appointed partner Michael Woller continues to be a fan favourite. “Michael can be relied on to deliver prompt and commercially sound advice and is a go-to for trademark dispute resolution in Austria. He understands what approaches best suit his clients’ business needs and is great, for example, at negotiating favourable settlements and avoiding costly proceedings. He is very knowledgeable and open-minded and gives advice in a hands-on way whenever required.”
Schwarz Schönherr Rechtsanwälte KG
Schwarz Schönherr is a high-profile boutique which consistently operates at the forefront of the trademark scene. It has an impressive bench of lawyers who live and breathe intellectual property – resolute leadership is provided by trademark trailblazer Georg Schönherr. “Georg is a top litigator with exceptional knowledge of IP law. Clients feel comfortable leaving their meatiest cases with Georg; his insight is always spot-on and business savvy. A high energy lawyer, he combines speed with an eye for detail.” Schönherr has been working with Markus Grötschl to protect Fashion One and Fashion Television’s brand rights in ongoing proceedings before the Austrian Supreme Court. The pair are also instructed in non-contentious matters by Novartis Group and Starbucks. Grötschl bears in mind his clients’ commercial concerns, providing guidance that always drives value. He handles the anti-counterfeiting briefs of Giorgio Armani, Lacoste and Gucci, among others. Michaela Petsche is the person to call for prosecution. She is exact and precise in her analysis and can build bulletproof strategies. Thomas Adocker, a new addition to the guide this year, is a trademark guru with a knack for transactional matters and licensing agreements.
SONN & PARTNER Patentanwälte
SONN & PARTNER has a glittering reputation as a “top IP firm”. It has a panoramic perspective of the IP landscape and uses this to protect highly coveted brands and propel them forwards. Rainer Beetz is a name to note in the address book. A lecturer in patent law at the University of Vienna’s law faculty and the Vienna University of Technology, he has a deep-rooted understanding of legal theory. Beetz recently succeeded in defending Quick Restaurants’ mark, Q QUICK HAPPY MEAL, against an opposition by McDonald’s regarding its trademark HAPPY MEAL.
The Vienna office of Taylor Wessing is harmoniously integrated into an international network spanning 20 countries, putting it in pole position to handle international matters. Martin Prohaska-Marchried co-heads the IP/IT group Central and Eastern Europe and is celebrated for his elegant handling of regional cases. “Martin has finely tuned expertise in trademark law. His accuracy and adherence to schedules as well as his understanding of the pharmaceutical industry make him the guy you want on your side.” Prohaska-Marchried is proficient in overseeing all phases of a trademark’s lifecycle; when a case is put on his plate he gets into the nitty gritty details to uncover the essential arguments.
Wiltschek is a heavyweight on the trademark scene; specialising in both IP law and European law, this is the place where high-stakes matters are settled. Lothar Wiltschek and David Plasser are a dynamic duo. “Lothar is a luminary in the field and the inventor of unfair competition law. As a senior statesman he is very clever and knows the tricks of the trade. Lothar’s decades of experience are difficult to match, and he has a commanding presence when he walks into a room.” “David is a remarkable litigator who has perfected his pragmatic approach. His insight into case law is extraordinary, and he is always able to back himself up with profound academic wisdom.” Wiltschek and Plasser never fight for the sake of it but prioritise settling matters out of the courtroom. However, they are ready to take the necessary steps when it comes to an unavoidable IP showdown. Famous Austrian brands seek out the pair for their polished approach to litigation and their stellar filing practice.
General practice firm Wolf Theiss continues to invest in its robust IP practice, welcoming another associate to its team at the beginning of 2018. This commercial powerhouse offers high-end services across the contentious/non-contentious divide. Georg Kresbach sets the tone. He gives “top-notch support and succinct legal advice and responds quickly; he also represents excellent value for money. He coordinates matters throughout Central and Eastern Europe setting a high bar for quality. Georg has a hands-on approach and pulls out all the stops to make sure everything runs smoothly.” “Although Georg is a fantastic litigator, he is so good at negotiating peaceful resolutions that court is often the last resort.” He has been assisting Colgate-Palmolive and Pernod Ricard in prosecution matters.
Other recommended expertsAlexander Cizek runs his own self-titled firm. He is a dedicated lawyer with a wealth of experience to draw on; with Cizek, clients receive high-level expertise without the inconveniences of working through a massive firm. Graf & Pitkowitz’s Claudia Csáky “rolls up her sleeves in complicated cases”. She is a tenacious litigator. “Karina Hellbert is always a pleasure to work with. She delves deep into matters and immerses herself in the issues to deliver the best solutions.” She showcases her top-flight skills at Fiebinger Polak Leon & Partner. The newly minted head of the IP/IT department at Schindler Attorneys, Julia Kusznier runs a cradle-to-grave practice. “Julia is straightforward in her approach. She is quick to address key points and provides guidance which is easy to digest and gives clients comfort that they are on the right track.” Swapping out Wiltscheck for Cerha Hempel Spiegelfeld Hlawati, Katharina Majchrzak is now the co-head of the IP department at this dynamic outfit. “Katharina has a strong focus on trademark law, and always gives legal advice which is concise and well-rounded.” Majchrzak has an unparalleled understanding of the food and beverage sector and acts for McDonald’s. “Martin Reinisch deserves to be ranked highly. He is a likeable lawyer with incredible trademark knowledge who renders valuable services.” He successfully put to rest a 14-year long court case this past year, in which the STOLICHNAYA and MOSKOVSKAYA trademarks were returned to Spirits International. Reinisch also represents the Estate of Maurice White, the founder and brand holder of Earth, Wind & Fire, in an international dispute. This litigation maven can be found at Brauneis Klauser. Katharina Stefanie Schmid operates out of her eponymously titled boutique. While brand management is her bread and butter, she is also a skilled litigator.
- 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 Plasser
- Axel Anderl - DORDA
- 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 Plasser
- Ivo Rungg - Binder Grösswang Rechtsanwälte GmbH
- Sascha Salomonowitz - Salomonowitz Horak
- Alexander Schnider - GEISTWERT Rechtsanwälte
- Rainer Schultes - GEISTWERT Rechtsanwälte
- Thomas Adocker - Schwarz Schönherr Rechtsanwälte KG
- 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 Rechtsanwälte GmbH
- 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
- Dominik Hofmarcher - Schoenherr Attorneys at Law
- Julia Kusznier - Schindler Attorneys
- Katharina Majchrzak - Cerha Hempel Spiegelfeld Hlawati Rechtsanwälte GmbH
- Martin Prohaska-Marchried - Taylor Wessing
- Peter Puchberger - Puchberger & Partner Patentanwälte
- Martin Reinisch - Brauneis Klauser Prändl Rechtsanwälte GmbH
- Katharina Stefanie Schmid - schmid-ip
- Andreas Seling - DORDA
- Manuel Wegrostek - Gassauer-Fleissner Rechtsanwälte GmbH
- Michael Woller - Schoenherr Attorneys at Law
- Michael Woller - Schoenherr Attorneys at Law
- Andreas Zellhofer - Eisenberger & Herzog