Trademarks, designs and unfair competition law

History

COHAUSZ & FLORACK was founded in 1954 by the patent attorneys Werner Cohausz and Wilhelm Florack in Düsseldorf. Their first clients were enter-prises from the steel industry, railway and motor vehicle con-struction, agricultural engineer-ing and textile machine con- struction.

In the seventies and eighties the firm extended its services to the two large and important fields of electrical engineering and chemistry; in the nineties telecommunications and life sciences/biotechnology fol-lowed.

Since 1997 patent attorneys and attorneys-at-law have been associated with COHAUSZ & FLORACK.

COHAUSZ & FLORACK has been a partnership since 2010.

At a glance

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Partnership

Partnership of patent attorneys and attorneys-at-law based in Düsseldorf.

Consulting services

Patent attorneys and attorneys-at-law with specializations in all technical and scientific fields provide consultancy services in intellectual property law, unfair competition law, copyright law and in all related fields of law – both nationally and interna-tionally.

Special expertise

Conception, application, pros-ecution and administration of comprehensive protective rights portfolios for national and inter-national clients, adversary pro-ceedings, contractual matters and arbitration.

The partnership

Intellectual property is a high-value economic resource be-cause it secures competitive advantage. Its protection is therefore essential. The value creation potential of a technical invention or a trademark lies in its protection. This is where COHAUSZ & FLORACK enters the scene.

We see ourselves as a legal management consultancy for intellectual property and oper-ate as a strategic partner of our clients. Our main task: we en-sure that inventions, trade-marks and designs receive the best protection possible, en-force our clients’ property rights and defend them.

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COHAUSZ & FLORACK is a partnership in which patent attorneys and attorneys-at-law of various expertises work together on an interdisciplinary basis. We advise companies of all sizes in matters concerning industrial property rights, unfair competition law and related le-gal areas – both nationally and internationally. In this we are able to draw on more than half a century’s worth of experi-ence.

We develop solutions for tech-nical protective rights, trade-mark rights and design protec-tion that allow our clients the greatest possible freedom of action. Whether in prosecution, enforcement or exploitation – in each case it is our strategic thinking that distinguishes us.

One of our assets is that we do not think merely in technical and legal categories, but also in entrepreneurial and business contexts.

Our comprehensive consulting approach is well known. As attentive companions we make the interests of our clients our own and look after their intel-lectual property in close coop-eration with the decision mak-ers. It is above all this consulting culture that ties us to our clients over decades.

Our style of working, personal bonds, a high degree of accep-tance by both opponents and colleagues, but also our re-spectability and sense of pro-portion explain our growth – and our reputation as one of Germany’s top addresses.

Trademarks, designs and unfair competition law

An overview of our speciali- zations:

• Trademark law (marks, signs and brands, trade names, titles, domains)

• Advertising law and unfair competition law (UWG)

• Design law• Border seizure law• Food law and

pharmaceuticals law• Copyright law• Media law• Contract law• Conducting proceedings and

arbitration proceedings

In the areas of trademarks, de-sign and unfair competition law, COHAUSZ & FLORACK stands for decade-long tradition and experience. We manage more than 10,000 brands at home and abroad and thus are one of Ger-many’s leading law firms in the field of intellectual property law. Our attorneys have been admit-ted before the trademark au-thorities and courts for over 50 years. Presence creates trust. COHAUSZ & FLORACK culti-vates a network with govern-ment authorities, judges and at-torney colleagues that has been developing over decades, and from which our clients profit considerably.

Our law firm culture is distin-guished by numerous long-term client relationships character-ized by trust and mutual re-spect. We want the chemistry between us to be right. For this reason COHAUSZ & FLORACK assembles an individualized team for you from our attorneys and more than 50 further quali-fied employees, which is there to support you continuously.

We support you efficiently and comprehensively. Your econom-ic goals are in the foreground. Because we see ourselves as your advisor and strategic part-ner and want to develop and protect your intellectual prop-erty, you can depend on us.

Trademark creation and name validation

The groundwork for an optimized brand and design portfolio is begun long before the applica-tion is filed. Cooperation with your marketing department, ad-vertising or brand design agen-cy before the actual brand cre-ation has the greatest potential for success and helps avoid un-pleasant surprises. For this rea-son we support you in develop-ing the brand and help you de-termine whether the names or signs you favor are future-ori-ented, sustainable and enforce-able, by means of market re-search and an assessment of their registrability. If your prod-uct is to sound good and have an advantageous name in a for-eign language as well, our ser-vice is rounded off by linguistic assessments.

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Trademark and design strategy

An early consideration of legal aspects of the brand is part of entrepreneurial risk manage-ment. COHAUSZ & FLORACK takes the requirements of an optimized application strategy into account in the early stages of the market launch process, advises you accordingly and keeps in mind all conceivable or typical constellations that could arise during the development and maintenance of your brand portfolio. Thus we ensure that your investments remain within budget and that legal effects re-main calculable.

Often design protection, in comparison with technical and trademark property rights, re-mains in the background of deci-sion makers’ consciousness at least in the manufacturing in-dustry, except in the case of “designer articles”.

The protection options offered by registered design rights are therefore not used optimally in many cases. COHAUSZ & FLORACK always keeps design protection in mind before and during market launches, be-cause it can play a decisive role in product introduction and safeguarding against the com-petition. We therefore carefully clarify the registrability of new product designs with you, de-velop the appropriate filing strategy strategy and if neces-sary prepare the most suitable presentation of your products in our internal drawing office to ensure optimization of design protection.

Registration procedure for trademark and design rights exploitation

COHAUSZ & FLORACK relieves you of all tasks concerned with the application and registration of trademarks and designs. We take care of all your rights, from the smoothest possible regis-tration of your application for trademark and design rights, for which we maintain close con-tact with the authorities, to the acquisition of older trademark rights for the safeguarding of your trademark portfolio, all the way to negotiations with com-petitors, with whom demarca-tions in the market and coexis-tence agreements must be agreed upon.

In all cases in which your trade-marks or designs are to be utilized by third parties, we help you to create and develop the necessary contracts and, if you so wish, attend their negotia-tions with you. Besides classi-cal licenses, all kinds of sales or distribution contracts and also franchising contracts may be considered.

Global support

It goes without saying that COHAUSZ & FLORACK acts not only on a national basis for you but also globally. It is the aim of our attorneys to be at your disposal as a personal contact partner in all matters concern-ing intellectual property law. In cross-border conflicts we will coordinate all necessary mea-sures and take over the entire case management for you. To this end, COHAUSZ & FLORACK presides over a long-standing international network of ac-credited colleagues with whom we work together successfully.

COHAUSZ & FLORACK provides you with the opportunity of pro- tecting and defending your rights centrally in Germany, Europe and in every other coun-try in the world. We are one of the few German law firms to have successfully registered trademarks for their clients in practically every nation in the world.

Portfolio management and trademark value

Regular jour fixes form the foun- dation of our successful coop-eration. At these meetings we fine-tune our strategies for your trademark and design portfolio and discuss and present cus-tomized solutions to your re-quirements. Our goal in all of these processes is to conserve and – when possible – increase your trademark portfolio’s value.

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Trademark and design monitoring

In managing your portfolio we also support you in caring for and increasing the value of your trademark and design portfolio. We do this by including your trademarks in our active trade-mark monitoring system, draw up complete documentation with you for each of your trade-marks with information on trademark history and utiliza-tion, track down product coun-terfeiters with the help of cus-toms authorities and detective agencies and take active steps against plagiarizers and trade-mark and design violators.

Advertising environment

Instruments for company com-munication and sales promo-tion, in other words trademark utilization as well, require legal safeguarding. Therefore we examine your advertising and external communication for possible unfair or non-permissi-ble elements, identify risks and suggest solutions and alterna-tives. Conversely, we enforce your claims against competitors who use non-permissible means of interfering with your sales opportunities or otherwise at-tempt to gain improper advan-tage, e.g. through the unethical use of product designs.

Court cases and conflict resolution

“Justice is for the vigilant”, “ In court and on the high seas our fate lies in God’s hands” etc. There is no lack of worldly wisdoms on the subject of court cases that were shaped by pain- ful experiences. Seen soberly, though, in certain cases the only correct choice is to resort to the courts.

Judicial enforcement and de-fense of your trademark and design rights and the defense and pursuance of claims con-cerning all aspects of unfair competition law constitute another focus at COHAUSZ & FLORACK. We defend your in-terests in the same way should conflicts arise in connection with licensing and other con-tracts related to intellectual property rights.

In such cases we support you with expertise and dedication. Hereby we demonstrate quick-ness and precision not only when we are obtaining injunc-tions for you at court, but also while assessing and resolving conflicts. We act for you before all the competent national courts or relevant authorities, before the responsible European Union institutions as well as before the World Intellectual Property Organization. In trans-border conflicts, we coordinate all necessary measures through our efficient international net-work.

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No matter what the nature of the dispute or its subject matter, at COHAUSZ & FLORACK we concentrate on early clarifica-tion of the facts and the optimal strategic orientation of each and every case. We pursue lawsuits for our clients in order to solve problems for them and help them assert their econom-ic interests. We focus on a pragmatic resolution of disputes in which litigation can be only part of an overall strategy. We know that alone the long dura-tion of court proceedings can be unacceptable, even if the outcome promises to be favor-able. If it is opportune, our stra-tegic advice in certain conflicts may be consensual dispute res-olution.

COHAUSZ & FLORACK consid-ers it important for all its attor-neys to build up extensive expe-rience in the courtroom over the years and to continue to ex-pand this experience. In addi-tion, we maintain a network that provides for investigative re- search and other services occasionally needed for the successful conduct of foreign cases in particular.

In this way we are able to make sure that the individual client is working with the attorney or attorneys assigned to his con-stant support in consultations prior to the dispute in order to achieve the best possible initial situation. If a dispute then oc-curs, COHAUSZ & FLORACK is already in possession of a great deal of the information needed first of all to avoid having to tie

up personnel resources unnec-essarily for the client and sec-ondly to enable the dispute to be categorized in the client’s overall strategy, as is required for efficient judicial representa-tion.

Examples of our activities

COHAUSZ & FLORACK supports and manages trademark portfo-lios of leading German compa-nies in over 100 countries world-wide, most of them for decades.

Our firm oversaw the merger of a well-known client from the steel industry in the creation of the newly developed company brand, supported the subse-quent name change and paral-lel to this the ensuing world-wide market launching and trademark protection of the newly created umbrella brand.

“All theory is grey, and only the trees and experience are green,” said the German forester Fried-rich Wilhelm Pfeil, loosely quot-ing Goethe’s Faust. We don’t know as much about trees as he does. We can confirm the validity of the allegory, however. So here are a few noteworthy examples of our experience – beyond all theory.

Together with the appointed ad-vertising agency, we secured the desired name for a medium-sized enterprise and safeguard-ed the future viability of this trademark by means of coexis-tence agreements with compet-itors.

COHAUSZ & FLORACK takes care of trademark rights for a motorcycle manufacturer known throughout the world, enforces them in Germany and tends to all matters related to unfair com- petition law. Together with the well-known in-house team, we operate successfully in border seizure proceedings.

We tracked down a counter- feiter ring with the marketing division of a medium-sized cli-ent and by means of injunctions established legal protection within a very short time.

We were successful for a client active in the food industry in stopping consumer deception by competitors, which was dis-covered by food inspections.

Our attorneys regularly repre-sent the manufacturer of one of the world’s best selling toys in trademark infringement pro-ceedings.

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In several cases before the General Court of the European Union we argue for the registra-bility and preservation of our clients’ trademark rights.

Our firm regularly conducts trademark and design registra-tion procedures as well as opposition proceedings for a leading consumer goods company.

We obtained a positive judgment before the Office for Harmoni-zation in the Internal Market concerning the reputation of the umbrella brand of an inter-national IT corporation.

COHAUSZ & FLORACK was successful in fending off claims of alleged design infringements and unfair competition claims regarding product design for an elevator manufacturer.

We fended off industrial design infringement and unfair compe-tition claims concerning a melt-ing and dosing device and were able to secure patent licenses and thereby the access to new markets in subsequent settle-ment negotiations for our client.

An overview of our services

• Drafting, filing and prosecu-tion of patents, trademarks and designs

• Strategic counseling, for instance in the systematic development of an intellectual property rights portfolio, the conception of an internal corporate protective rights system or in due-diligence proceedings

• Representation in all court and administrative proceedings related to intellectual property rights and the adjoining fields of law

• Attack, defense and enforce-ment of trademark rights

• Searches and expert opinions on protectability and legal validity of intellectual property rights

• Freedom-to-operate analyses

• Monitoring of intellectual property rights in regard to conflicting rights and third party infringements

• Expert opinions on the infringe-ment of protective rights and on standard essentiality

• Support in contractual matters such as licensing, R&D con-tracts and trademark demar-cation agreements

• Management and maintenance of intellectual property rights portfolios

• Arbitration, Alternative Dispute Resolution

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We are patent attorneys and attorneys-at-law, specialized in industrial property law, unfair competition law, copyright law as well as related fields of law – nationally and internationally. Our expertise covers all techni-cal and scientific fields. In the best sense of the word we work as attorneys, but also as strate-gic business and management consultants for the legal as-pects of your brand and inno-vation policies.

What our clients appreciate most about COHAUSZ & FLORACK is our dimensional flexibility. It ranges from the well-founded answer to your quick question to complex in-fringement litigation in the inter-national arena. As patent attor-neys and attorneys-at-law we represent our clients before the German Patent and Trademark Office, the Federal Patent Court, the European Patent Office, the Office for Harmonization in the Internal Market (OHIM), the World Intellectual Property Organization (WIPO) and in in-fringement disputes before the courts.

Why us?

Many years of experience

Since 1954 we have been devel-oping effective measures with our clients to prevent third par-ties from copying their protect-ed products or brands – on top of this, we provide strategic advice that benefits their exclu-sive position in the market, their lead in technology and design as well as the value of their brand and company.

Broadly based know-how

COHAUSZ & FLORACK excels with special expertise in appli-cation, tracking and manage-ment of comprehensive patent and brand portfolios for national and international clients. We enforce our clients’ protection rights and defend them.

We think ahead

COHAUSZ & FLORACK stands for a difference in quality. We are regularly asked for advice in matters in which others have given up. We thus ensure the greatest possible freedom of action for our clients in the exploitation of their inventions, trademarks, designs or their know-how.

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We work on an interdisciplinary basis

COHAUSZ & FLORACK is char-acterized by an interdisciplinary company culture. In our firm patent attorneys and attorneys-at-law develop pragmatic and user-oriented solutions together.

We operate globally

COHAUSZ & FLORACK is at home in Germany. Outside the German market we have at our disposal a network of foreign associate attorneys from all relevant jurisdictions that was built and cultivated over de-cades – worldwide.

We use the latest information technology

COHAUSZ & FLORACK provides professional online services. For rapid and direct information transfer in monitoring the prop-erty rights activities of competi-tors, for instance.

A mutual path

Whether you require specific legal services or want to in- corporate them permanently in your company is not simply a question of mentality. Experi-ence teaches us that the early consideration of relevant intel-lectual property topics is by far the more intelligent and, in particular, more economical variant. Because this saves not only nerves and time but also money, avoids bad investments and results in solid, fur ther reaching claims.

We already follow such a mu-tual path with our clients and guarantee them maximum in-novation and brand protection. And, by the way, quite regularly in cases in which others have given up. We look forward to a further mutual path – at your side.

Patent Attorneys and Attorneys-at-law

Bleichstraße 14 · D-40211 DüsseldorfTelephone +49 211 90490-0 · Telefax +49 211 90490-49mail@cohausz-florack.de · www.cohausz-florack.de