Q: What have been the highlights for the firm over the past 12 months?
A: We got a brand-new, superb modern office in Dusseldorf – all our other offices are jealous! The Dusseldorf office has also been strengthened with the addition of attorney at law Michael Munsch and patent attorneys Markus Wanke and Constantijn van Lookeren Campagne.
At the turn of the year Meissner Bolte appointed three new partners: Verena Engstle in Nuremberg and Jasper C Werhahn and Florian Meyer in Munich.
What is more, law firm DeAnna-Patent joined the Munich office with European and Italian patent attorney Pier Luigi De Anna and European and German patent attorney Markus Baur, as well as lawyer and European trademark and design attorney Diana Lipecka.
Q: What would you say is the key factor to success when managing a trademark filing practice?
A: Passion! Trademarks need passion, empathy and the ability to put yourself in the client’s shoes to anticipate what they need. The key factor at Meissner Bolte is having a deep knowledge of our clients’ businesses and products. Many of our clients consider us as part of their legal department. This allows us to meet their demands perfectly.
A successful practice needs to define goals in terms of both corporate identity and product development, so that the IP strategy is as closely in line with the company’s business plan as possible over the coming years. Another important factor is alignment with the marketing and communication team on branding elements.
Q: You have a robust filing practice for trademarks, designs and other IP rights. How do you ensure that the firm is positioned to meet the varied filing needs of particular clients?
A: In order to develop an IP management strategy that is also fit for the future, a business and product alignment must be established that includes a protection strategy and registration programme. Industrial designs, copyright and domain names should also be used to create a network of legal protection. Non-traditional trademarks have increased in importance and should be taken into consideration when building an IP strategy. To keep up with the latest developments in these fields, we have established a culture of continuous learning (eg, through internal seminars and training programmes for young attorneys, candidates and legal staff). This ensures up-to-date knowledge, the highest quality services and, above all, motivated and empowered employees.
Q: In terms of the EUIPO landscape, what has been the most significant decision or development over the past 12 months?
A: The most significant development in EU trademark law in 2019 was the implementation of the EU Trademarks Directive (2015/2436/EU). The Trademarks Directive provides an easier way to register unconventional trademarks now that the abolition of the requirement for a graphical representation of a trademark has been implemented in all member states. In Carlos Moreira v EUIPO (T-795/17), the General Court provided further guidance on applications filed in bad faith. In Adidas AG v EUIPO (T-307/17), the General Court sharpened the requirements for invalidity based on non-distinctiveness. One effective and welcome tool of the EUIPO’s aims to unify IP law in the EU member states is the convergence programme, under which the EUIPO has published:
- CP8 on use of a trademark in a form differing from the one registered;
- CP9 on distinctiveness of shape marks containing other elements when the shape itself is non-distinctive; and
- CP11 on new types of trademark – examination of formal requirements and grounds for refusal.
Q: If you could make one change to the EU filing landscape, what would it be?
A: Some kind of extension agreement with Switzerland to enable international registration filings for Swiss-based companies on the basis of an EU trademark filing.