Your European representative

We have an established, significant and permanent base in Munich with German attorneys-at-law

We help our clients in obtaining, maintaining and enforcing EU-wide trade mark rights. We serve and represent our clients in all kinds of proceedings before the European Union Trade Mark Office (EUIPO), from filing European Union Trade Mark (EUTM) applications and the overcoming of Office Actions, to renewals and the enforcement of trade mark rights in opposition proceedings and cancellation actions.

Our team in Munich consists of German attorneys-atlaw (Rechtsanwälte) and German paralegals. All team members have many years of experience in all kinds of trade mark related matters.

In a modern trade mark strategy in the European Union (EU), national trade mark rights are an important and valuable asset. We represent our clients in all trade mark related proceedings before the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt, DPMA) as well as the Federal German Patent Court (Bundespatentgericht, BPatG) in infringement proceedings before the German civil courts.

In cases of infringement, our attorneys-at-law help enforce our clients’ rights with warning letters and, if necessary, the subsequent filing of infringement actions before a civil court. Where appropriate, we make use of the very fast and very (cost) efficient preliminary injunction proceedings in Germany.

In preliminary injunction proceedings, a court decision can be obtained very quickly. In most cases, such a preliminary injunctive order helps to resolve the entire dispute rendering the filing of a main court action unnecessary. By the same token, our German attorneys-at-law provide quick counsel and help in case our clients need to defend themselves against warning letters, preliminary injunctive orders or in main court actions.

The services for enforcing our client’s trade mark rights in Germany and the EU are completed by the management of Customs Seizures. We file and manage so called Applications for Action (AFA) for Germany and/or the entire EU which enable the European Custom Authorities to effectively stop infringing goods at the border. Reports of seizures are quickly and cost-effectively processed by our team, leading to the destruction of counterfeit goods and/or the initiation of infringement proceedings against the involved third parties.

Our German team works seamlessly with our UK colleagues - we are one team working together to best meet our clients’ needs. Our fully established and permanent office in Munich is 100% owned and operated by Mewburn Ellis and has been open since 2017.

Anti counterfeiting advantages

The nature of Mewburn Ellis as a true European firm with offices and professionals in both the UK and in Germany provides significant advantages for clients who seek to protect their trade marks and products against counterfeit goods.

For various clients of the firm, our teams both in the UK and in Germany work closely together to set up and manage respective Customs Applications for Actions with both the UK and the German Customs authorities to monitor for potential counterfeits.

We help our clients to set up effective and robust anti-counterfeiting measures that spread across the European Union and the UK at the same time, striking a balance between cost-effectiveness and providing tailored and targeted information to help customs authorities easily and quickly spot potential counterfeits.

Our approach to this field enables cost- effective filing and managing of the Applications for Actions with the respective Customs Authorities, as well as the pragmatic and effective handling of any reports resulting from these.

Case Study: Enforcement proceedings EU & UK

We work with one of our US-based clients to help them enforce their reputed marks across the European Union and in the UK.

This client’s very innovative and successful business activities are often reported on by the European and UK press and its registered trade marks enjoy recognition. The client sees a lot of third parties trying to register marks which are similar to theirs to various degrees. This happens a lot, often in both the EU and the UK at the same time.

Mewburn Ellis frequently advises on the chances of success of an opposition and recommends steps to challenge potentially infringing uses. Our EU and UK attorneys work closely together as one team to develop pan European strategies and approaches. This means asking the right questions and understanding the client’s UK and EU commercial objectives which may differ from their aims elsewhere, allowing us to provide joined up, coherent and practical advice while importantly taking into account differences in local practice and law.

With our highly trained and very experienced trade mark attorneys in the UK and German Attorneys-at-Law, we represent and pursue the client’s interests in proceedings before the UKIPO and the EUIPO. We are also the client’s main point of contact for trade mark matters in EU Member States other than Germany, where we closely work together with local agents to enforce the client’s rights also on a national level.

Where necessary, our attorneys also draft and send warning letters to third party infringers and represent the client in Alternative Dispute Resolution proceedings against infringing third party internet domains.

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