Lawyer Monthly Magazine - June 2018 Edition

JUN 2018 76 Expert Insight www. lawyer-monthly .com Have there been any notable trademark cases that you’ve managed? What was the out- come? I have recently supported a client in a very complex trade- mark issue concerning the name of their very popular cultural event. We had to act with great sensitivity in an ef- fort to avoid any image dam- age of the client’s brand and the respective event. I recom- mended a personal meeting between my client and the opposite party in a first step to discuss the trademark matter amicably. I have perfectly pre- pared my client for this meet- ing and we reached a great outcome in this very first meet- ing! Another client no longer has any worries regarding the name of their business; they had already been on the mar- ket for many years and had be- come a well-known company in the medical sector. However, they did not carefully search for similar trademarks when start- ing 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 obsta- cles and initiated all necessary steps, for example: nullity pro- ceedings based on non-use with a straw man as claimant. Finally, also worth telling, I have helped a client in a very com- INTELLECTUAL PROPERTY plex trademark infringement case between Christmas and New Year. I have reached a perfect settlement of this dis- pute 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 appli- cable law and the registration practice in the respective ju- risdiction is important, on the other hand, the coordination of local specialized attorneys in an effort to achieve a con- sistent trademark strategy is vital. National brand portfolios require only one expert who is responsible for the portfolio management and a consistent trademark strategy. Interna- tional 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 Europe- an Union Intellectual Property Office (EUIPO)? In general, the applicable laws concerning the registra- tion practice of the DPMA and the EUIPO are almost identical. However, according to my ex- perience, the chances to suc- cessfully register a trademark with a rather descriptive mean- ing 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 essen- tial in trademark disputes. This means, amongst others, that they have to monitor the mar- ket and the trademark register for similar brands and to act against infringements. Small businesses are very often con- fronted with, for example, very aggressive cease-and-desist letters sent by bigger compa- nies. These situations are fright- ening 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 advan- tage over them. LM Ursula Bartel, awyer Kirchenstr. 60, 81675 Munich | E: | W: About Ursula Bartel Ursula Bartel provides ex- cellent advice in trade- mark law. She has exten- sive experience in the strategic consulting and administration of both in- ternational and national brand portfolios. In ad- dition, 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 in- ternational law firm Bird & Bird LLP, which enjoys an excellent reputation in the field of intellectual property. 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.

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