Patent Filing, Patent Litigation, Trademark & Unfair Competition

"Offering a wide range of highly qualified lawyers who deliver outstanding-quality work across a range of technical IP fields, this boutique is universally respected for its patent work. Market observers note that the firm is frequently seen in prominent patent litigation cases and works with an impressive client list that includes pharmaceutical company Ranbaxy and also Apple, which the team assists with patent filing and design protection matters. Although the team covers all industries, it tends to focus on IP-rich sectors, such as IT, automotive, pharmaceutical, telecoms and biotech. Highly regarded patent attorney Johannes Heselberger is an authority on patent litigation and licensing matters, and adept at handling both the legal and technical sides of transactions. (...). Possessing years of market experience, Jochen Pagenberg comes highly recommended for his European patent litigation work and is also a recognised name in the trade mark arena. The firm is expanding its focus on this field, handling complex litigation and trade mark filing matters, which are often global in scope and for household name clients such as Coca-Cola and Nintendo."

 

Intellectual Property / Patents

Comment
"A leading firm in patents which is considered one of the strongest patent practices in Germany thanks to its mixed approach. On the one hand, the firm boasts a renowned filing practice, but the work of the patent attorneys and lawyers in litigation is much more prominent, for example for Apple, Salomon and Pliva. The firm’s profile among US companies remains very strong. “Bardehle is the first firm they think of in Europe” were the words of one competitor. The practice has recently seen more growth among lawyers than on the patent attorney side. Bardehle still needs to grow in size somewhat, especially when it comes to patent attorneys. The firm is becoming ever more active in Spain, where it opened an office in Barcelona in 2008 following one in Alicante. (…)

Recommended lawyers: Dr. Jochen Pagenberg, Johannes Heselberger (“excellent patent attorney and lawyer”, client), Dr. Tilman Müller-Stoy (“good persuasive power before the courts”, client). Patent attorneys: Dr. Wolfgang Bublak, Peter Hess (“in-depth expert knowledge”, client), Dr. Hans Wegner.

Practice: All-round IP activity with a clear focus on technical trademarks. Filing on a broad technical spectrum. Close cooperation between patent attorneys and lawyers for cancellation, opposition and nullity suits and infringement litigation, litigation coordination and strategic advice. See trademarks and unfair competition. Clients: often direct connections to heavy industry. Strong international client base. (In Germany: 18 patent attorneys, 29 lawyers)

Clients: Ranbaxy concerning Altovarstatin, AWD and Pliva concerning Olanzapin; all-round patents advice to Apple and Salomon, European litigation coordination for Smartrac concerning smartcards; patents advice to Renault and Peugeot; nullity suits for Eastman Kodak; all-round filing for Boston Scientific, Samsung, Qualcomm, Dell Products, Adidas and Qimonda.

Intellectual Property / Trademarks and Unfair Competition

Comment:
The lawyers from this mixed IP boutique mainly come recommended for their prominent litigation practice in trademarks. Bardehle boasts a renowned name in European trademarks among its ranks in the form of von Mühlendahl, who competitors consider a “prominent and no doubt very fruitful reinforcement”. Indeed, the firm has strengthened connections to a number of large companies as a result of his expert opinion and advisory activity. There is an equal balance between formal trademarks and trademark disputes, with the proportion of international work seen by some partners, such as Pagenberg (especially France), impressively high. In design law the firm has recently benefited from its pre-eminent patents practice, acquiring Apple as a new client. Unfair competition at Bardehle is always largely interweaved with the trademarks practice, and the firm has also long advised several clients, including McDonald’s, on advertising law. One of the litigation highlights was work for L’Oréal concerning smell-alikes.

Practice strengths: Litigation, formal trademarks law, international orientation.

Recommended lawyers: Dr. Jochen Pagenberg, Peter Munzinger (“highly competent trademarks lawyer”, client), Dr. Alexander von Mühlendahl, Dr. Henning Hartwig (“highly skilled trademarks lawyer”, competitor), Dietrich Beier (“professional, quick and client-oriented in trademarks”, client), Claus Eckhartt (“very good trademarks lawyer, competitor).

Practice: All-round litigation in, and advice on, trademarks and design law, as well as unfair competition. Also large trademark registration and administration practice. Work relating to advertising law and on product launches. The firm has its own offices in Paris, Alicante and Barcelona. (6 partners, 9 associates)

Clients: Litigation for L’Oréal concerning Smellalikes; Apple on design law; Apollinaris/Coca-Cola; McDonald’s concerning German trademark portfolio and unfair competition disputes; Almirall. Trademarks litigation for: ESPN/Walt Disney, Mövenpick, Capelli, Nintendo, Public knowledge: trademark registration for Deutschland Card, Reckitt Benckiser, Abtei Pharma.

IP: patents Litigation

Bardehle Pagenberg has the ‘strong’ Jochen Pagenberg, who is a good choice in patent matters. Clients appreciate the expertise of the team, with Wolfgang Bublak being singled out in particular for his ‘competence, efficacy and outstanding availability’. Schuster advised Apple on the iPod’s docking stations and Gambro referred to the firm in patent infringement litigation concerning dialysis equipment. 3D Systems and Salomon also instruct the practice. ‘Very good value for money’, say clients.

IP: patents Prosecution

Bardehle Pagenberg opened up a new office in Barcelona in addition to Alicante, which will strengthen the presence in Spain, where many of the firm’s clients are based. Jochen Pagenberg is renowned for patent law, and Alexander von Mühlendahl, former Vice President of OHIM in Alicante, acts as a senior adviser to the firm. The team advises Apple, Gambro, 3Dsystems, and long-standing client Salomon. The practice is popular with US clients who refer to this firm before others, and it is renowned for its skills in contentious matters.

IP: trade marks

Bardehle Pagenberg manages a number of well-established trade mark portfolios. Clients recommend Peter Munzinger and the ‘responsive, commercially minded and flexible’ Claus Eckhartt. Clients entrusting the firm with the management of their portfolios include Coca-Cola, GlaxoSmithKline, Longchamp, (...), and McDonald’s. The practice acted on to the trade mark-protected name ‘Jimi Hendrix’ in litigation, and also advised DeutschlandCard, L’Oréal, and Nestlé. In addition, the practice receives instructions from international clients from the US and Asia. Clients note the firm is ‘flexible when it comes to fees and fee arrangements’.

PATENTS

"Jochen Pagenberg of Bardehle Pagenberg Dost Altenburg Geissler is the highest ranking German lawyer for patent expertise and a member of our elite group of practitioners. An 'outstanding and highly-respected' lawyer, acknowledged for his experience coordinating multi-lingual, multi-jurisdictional patent cases, but also for his expertise counselling clients on licensing matters. He is chairman of the special committee of the AIPPI on litigation concerning European patents."

TRADEMARKS

“Throughout Europe specialist firms maintain an imposing presence at the high end of the market for trademark work. This is certainly true for Germany: specialist firms such as Bardehle Pagenberg continue to produce the country’s highest nominated lawyers. Name partner, the ‘very strong’ Jochen Pagenberg received the most recommendations in the country in this year’s research. A “big player”, he specialises in litigation and licensing. His colleague, the ‘seasoned and well regarded’ Peter Munzinger also performed well in the research.”

Expert Guides to the World's Leading lawyers - Jochen Pagenberg has been nominated to appear in the guide "Best of the Best" 2008, as a result of being identified among the top 25 patent experts in the world, by in-house counsel and peers following research of Legal Media Group's's Expert Guides editorial team. The research process involves sending over 4,000 questionnaires to senior IP practitioners or in-house counsel in over 60 jurisdictions, asking them to nominate leading practitioners based on their work and reputation.