Burgstaller & Partner Rechtsanwälte

Q. The firm advises clients in all fields of business law. How do attorneys keep abreast of the latest developments in the trademark and design field specifically, at both the EU and national level?

A: Social media platforms have become a very important source of information, especially with regard to decisions from lower courts and best practice discussions with colleagues in different EU countries. However, social media activities cannot replace reading through High Court decisions and legal publications. This is not limited to legal texts but includes the fields of marketing and design to keep up with our clients. We are also involved in ECTA and INTA activities and I am a regular INTA Committee member. The partners in our firm are also very active in the field of publications, lectures and training, which also helps to broaden our horizons. Most demanding, however, are our internal sessions with our legal staff, because no one wants to be embarrassed for not being up to date!

Q. What have been the highlights for the firm over the past year?

A: The fact that our firm is the EUIPO top filer in Austria aligns with the numbers we see, especially in our trademark and design department. In the past year, we have acquired a formidable number of new clients both from Austria and abroad. We are listed in the EUIPO pro bono programme, which gives us a fascinating insight into the IP issues from SMEs in different EU countries. We have also been involved in some interesting trademark litigation cases, which turned out well for our clients resulting either in a favourable court decision or in a satisfactory settlement. I am convinced that we learn from each and every case in which we participate.

Q. What is your assessment of the EUIPO’s performance over the past year, and are there any areas that could be improved?

A: In general, we are very satisfied with the EUIPO’s performance. Trademark and design application procedures are smooth and the forms that the office provide are generally very easy to understand and handle. However, the forms do not cover all requests and content that we need, and it can be challenging to find the correct solution for some requests, and nerve-wracking too, if there are deadlines to meet. I fully understand that fax-communication has been banned, but I would have welcomed this being replaced by another general point of contact. Maybe it exists and I have not seen it yet.

Q. What one piece of advice would you give young lawyers keen to develop a filing practice?

A: Always be open minded. Of course, young lawyers shall learn from their more experienced colleagues and see what works for the clients and how the internal processes run. However, each lawyer and each firm has its own practises and processes, and it is sometimes difficult to make changes. A young lawyer who is not yet influenced or constrained by past experiences can find their own way of handling things. So always be open minded, both to the needs of the clients and to new tools and techniques being offered by offices or by third-party service providers. Also use platforms such as INTA to meet and exchange with colleagues all over the world.

Q. If you could make one change to the European trademarks filing landscape, what would it be?

A: It is so difficult to advise clients with regard to the registrability of trademarks as decisions made by the various examiners differ so much. I understand that the EUIPO cannot be bound by former decisions and EUIPO practice can never be fully harmonised and consistent, but it is hard to explain to clients why one application is rejected and another - with an identical mark and an identical list of goods and services – is accepted. I am aware that there are tools and remedies to reverse those decisions but these are time consuming, costly and still risky. Having said this and complained about it, I have to add that these are the challenges that make the trademark work so interesting and demanding.

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