Legal Areas


Industrial Property, Copyright & Advertising Law

“BEITEN BURKHARDT provides ‘what clients need, from pragmatic solutions to a legal tour de force’ and the ‘extraordinary high level of service’ and ‘very good consideration of the economic context’ likewise contribute to the good reputation of the Team.”

Legal 500 Germany 2018

Creativity and innovation are valuable assets and need protection. We handle the comprehensive protection and enforcement of your intellectual property. We ensure that it is secure and enforce your rights vehemently against any infringing party. We draft and negotiate licencing and technology transfer agreements and analyse and evaluate patent, trademark and copyright portfolios as part of transactions. In addition, we review advertising measures and statements for their admissibility and assist when competitors act unlawfully.

Our experts for trademark and design law and for competition law are recommended.
(JUVE Handbook of Commercial Law Firms 2017/2018)

“The Team from BEITEN BURKHARDT is ‘very strong’ and ‘very broadly positioned,’ has a focus on sport and entertainment and is recommended for its “practical advice’ and ‘good value for money.’”
(Legal 500 Germany 2017 & Legal 500 EMEA 2017)

IP litigation

Intellectual property rights are good, but they are worth little if they are not enforced. With decades of experience, we assist our clients - when necessary - in court:

  • Infringement proceedings with respect to trademarks, patents, designs, etc. (including claims for injunctive relief, damages claims)
    • By means of interlocutory procedures, in particular
  • Disclosure and inspection proceedings
  • Procedures at trade fairs
  • Developing plans of attack and defence strategies for complex disputes
  • Defence against pirated goods (seizure of goods at the border)
  • Trademark screening procedures and platform monitoring to help combat couterfeit imports

IP strategy; Management of trademarks

An intelligent IP strategy will achieve the best possible protection for the commercially most important products and trademarks, within the available budget:

  • Analysing and optimising trademark and patent portfolios
  • Simultaneous applications for the registration of intellectual property rights worldwide (trademarks, designs, patents)
  • Monitoring trade marks
  • Registering and monitoring domains
  • Representing clients in international domain disputes (e.g. UDRP)
  • Analysing IP portfolios and risks in companies
  • Protection against new generic Top Level Domains (gTLDs) (registering trademarks and validating them with the Trademark Clearinghouse)

Drafting agreements

The grant of licences for the use of intellectual property rights is of significant economic value. We assist our clients with the drafting and negotiation of agreements for the grant of IP rights.

  • Licencing agreements (including antitrust and tax law aspects)
  • Multi-tier licencing models within the corporate group (bundling of trademarks and compliance with licences)
  • Research and development agreements with universities or private institutions
  • Coexistence agreements for trademarks and titles
  • Confidentiality agreements and the protection of rights in contractual negotiations (letters of intent, non-disclosure agreements)
  • Advertising contracts, in particular:
    • Offsetting transactions and volume deals
    • Media and advertising agency contracts
    • Affiliate and white label agreements

Copyright

We draft and negotiate agreements and represent our clients in court in all copyright-related matters, in particular:

  • Protection and acquisition of content (text, images, music, software, databases)
  • Exploitation of content (including syndication and agency structures)
  • Licencing agreements with content holders or licensees (e.g. author or photographer contracts)
  • Buy-outs and disputes related to compensation
  • Laws applicable to collecting societies
  • Laws pertaining to film production and exploitation

Advertising law

We protect you from any unlawful advertising measures or actions taken by your competitors. We also provide assistance with the realisation of your own marketing ideas, ensuring that they comply with relevant laws, and provide you with advice, especially on the following issues:

  • Law applicable to advertising in digital media (influencer marketing, programmatic advertising)
  • Providing conceptual advice on the development of marketing concepts (including competitions, personalised advertising)
  • Providing ad hoc advice on the implementation of individual measures and procedural protections (caveats)
  • Advising on the design of the company’s internet presence, in line with the relevant laws (website, Facebook page, use of social media)
  • Providing protection against the actions and statements of competitors, e.g. in the case of
    • misleading advertising or aggressive commercial practices
    • industrial espionage
    • poaching of employees
    • counterfeit products and advertising measures without any special protection

IP transactions

In many cases, intangible assets account for the largest part of company value. We provide support with respect to: 

  • Sale and purchase of IP portfolios
  • Asset deals (sale and purchase of databases, magazines, websites, platforms)
  • IP law aspects of M&A transactions
  • Assessment of industrial property rights held by the company

Interplay

Russia

BEITEN BURKHARDT’s experienced, Russian IP Practice advises on and assists with all aspects of the protection of industrial property, copyright and the advertising law from our St Petersburg and Moscow offices. This includes the registration and administration of trademarks, the sale and purchase of IP rights, licencing agreements, agreements with employees and service providers, as well as protection against counterfeiting and the enforcement of anti-counterfeiting measures.

China

The protection of intellectual property, especially the protection against brand piracy and counterfeiting, is a focus of our work in China.

We arrange (with the support of Chinese trademark agencies, if appropriate) for the registration of trademarks, designs and copyrights, draft licencing and technology transfer agreements, and represent our clients in negotiations and arbitration proceedings to ensure the enforcement of their rights. We carry out legal due diligence reviews for corporate law transactions and draft the relevant agreements.

Our clients include medium-sized companies and international groups from various sectors and jurisdictions.

At a glance

  • Registering trademarks, designs and copyrights (with the assistance of Chinese trademark agencies)
  • Assisting with transactions and performing legal due diligence assessments
  • Licencing agreements
  • Technology transfer agreements
  • Providing assistance with negotiations and representation in arbitration proceedings
  • Strategies for the protection of intellectual property