Ursula Bartel is passionate about helping clients out of risky situations and fighting for justice in the interest of her clients.
“It is of special importance for me to have a direct and continuing connection with my clients to provide immediate advice and support. I strive for advising my clients on a very high level and with great care, but also in a very comprehensible manner. Fortunately, my clients highly appreciate the pleasant and very straightforward way I’m managing their trademark matters and disputes.”, says Ursula.
She speaks with Lawyer Monthly about her role as an IP lawyer.
Have there been any notable trademark cases that you’ve managed? What was the outcome?
I have recently supported a client in a very complex trademark issue concerning the name of their very popular cultural event. We had to act with great sensitivity in an effort to avoid any image damage of the client’s brand and the respective event. I recommended a personal meeting between my client and the opposite party in a first step to discuss the trademark matter amicably. I have perfectly prepared my client for this meeting and we reached a great outcome in this very first meeting! Another client no longer has any worries regarding the name of their business; they had already been on the market for many years and had become a well-known company in the medical sector. However, they did not carefully search for similar trademarks when starting the business. Indeed, there have been several prior brands which constituted a high risk for the use of my client’s name. We have developed a strategy on how to overcome these obstacles and initiated all necessary steps, for example: nullity proceedings based on non-use with a straw man as claimant. Finally, also worth telling, I have helped a client in a very complex trademark infringement case between Christmas and New Year. I have reached a perfect settlement of this dispute in a very short time.
In your experience, what are the most prominent differences between creating international and national brand portfolios?
On the one hand, the applicable law and the registration practice in the respective jurisdiction is important, on the other hand, the coordination of local specialized attorneys in an effort to achieve a consistent trademark strategy is vital. National brand portfolios require only one expert who is responsible for the portfolio management and a consistent trademark strategy. International brand portfolios require the management of all brands- hand in hand. Moreover, the expert has to work with and coordinate with various local attorneys, always having in mind a consistent trademark strategy and the exchange of knowledge and experience concerning the brand portfolio between all attorneys.
How difficult is it to register with the German Patent and Trade Mark Office (or DPMA)? How does it compare to the European Union Intellectual Property Office (EUIPO)?
In general, the applicable laws concerning the registration practice of the DPMA and the EUIPO are almost identical. However, according to my experience, the chances to successfully register a trademark with a rather descriptive meaning are slightly higher before the EUIPO compared to the DPMA.
What challenges do you face on the job that are particularly rewarding to overcome?
A major challenge is creating awareness to small businesses for the importance of having a strong trademark (from an IP law perspective) which is essential in trademark disputes. This means, amongst others, that they have to monitor the market and the trademark register for similar brands and to act against infringements. Small businesses are very often confronted with, for example, very aggressive cease-and-desist letters sent by bigger companies. These situations are frightening for the owners and even existence-threatening. I’m passionately fighting for these smaller companies and I love the surprise effect the opposite parties have when my clients are suddenly gaining advantage over them.
Ursula Bartel provides excellent advice in trademark law. She has extensive experience in the strategic consulting and administration of both international and national brand portfolios. In addition, she is an expert in complex trademark infringement litigation as well as cancellation and nullity proceedings. Prior to founding her law firm Bartel Legal in 2016, Ursula Bartel spent many years with the international law firm Bird & Bird LLP, which enjoys an excellent reputation in the field of intellectual property.