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Thought Leaders

Thought Leaders

Thought Leader

WWL Ranking: Global Elite Thought Leader

Questions & Answers

The practice of Claus Eckhartt, attorney-at-law and partner of the firm, focuses on prosecution and enforcement of IP rights in the field of trademark, design, copyright and unfair competition law. Related advice includes anti-counterfeiting, licensing, merchandising, franchising issues and transactional support. As head of the firm’s trademark department, Claus Eckhartt is responsible for the management and prosecution of worldwide trademark and design portfolios. His international clients are leaders in their respective industries and come from such sectors as pharmaceuticals, consumer healthcare, household goods, IT, hotel services, banking, and food and beverages.

Describe your career to date.

During my university studies, IP in general and trademark law in particular already fascinated me. Before settling at Bardehle Pagenberg in 1996, I worked at other German IP boutiques. My focus on brand protection work, contentious and non-contentious, has remained the same over the years, but a good part of my time is also devoted to design, unfair competition and domain name issues in an international environment.

What do you enjoy most about working in the trademarks space?

By definition IP is international. I take pleasure in working with a network of other IP practitioners from literally every continent and including all kinds of people, ranging from single practitioners to heads of IP departments of multinational global corporations all dedicated to brand protection. It is interesting to see that the principles of the law we all work with are similar, but there are still surprising differences in the approach.

What have been the key developments shaping trademark law in Germany over the past 12–18 months?

A recent landmark ruling relating to community designs, which has far-reaching implications for harmonised EU trademark law, was pronounced in September 2017 by the Court of Justice of the European Union. The Court was faced with questions arising from a multi-state infringement action and confirmed EU-wide jurisdiction over a co-defendant, joined with the principal defendant. The court decided in favour of applying a single set of laws to claims for relief not provided for in EU legislation, such as claims for damages (joint cases C-24/16 and 25/16, Nintendo v BigBen). In effect, proceedings can now be brought, for example, before a German court for damages, even though the infringement has taken place in France, if the cases are connected. A game-changer, as time will tell.

What are the main challenges associated with protecting 3D product configurations?

The  European Union Intellectual Property Office and the national trademark offices are very reluctant to grant protection for product configurations. If the design features do not depart from the norm of those already on the market, as a rule, registration is rejected on the grounds of insufficient distinctiveness. Brand owners seeking protection for 3D-product configurations are well advised to keep on file images of product configurations of competitors in order to be in a position to prove the “uniqueness” of their product. Alternatively, if a certain product configuration has already been marketed to a substantial extent, and has possibly acquired a secondary meaning among the consumers targeted, then the objections may be successfully met by submitting evidence that the necessary level of consumer recognition has been attained by way of consumer survey results, market shares, sales figures and advertisement.

How important is it for trademark owners to understand the impact of social media on their brands?

The awareness of brand owners to safely navigate and align their brand development and exploitation practice, particularly in relation to corporate social responsibility and sustainability, has increased significantly in recent years. Such issues arise in domain name policy, global brand licensing, and brand extension and product placement issues with a multitude of legal issues to be looked at from the legal, regulatory and business sides. Generally, my impression is that the clients, in particular from the consumer product side, are much more aware of the legal risks involved in using social media.

As head of Bardehle Pagenberg’s trademark department, what are your main priorities for the group’s development over the next five years?

Successful and organic growth requires an investment in people. Over recent years the firm has been able to significantly enhance its attractiveness for younger practitioners, partly due to the comprehensive legal training schedule we offer, but also because of our high-end client portfolio. We will continue to provide outstanding service and results to clients and hence expect further substantial growth in the next two to three years.

What advice would you give to younger practitioners who hope one day to be in your position?

Next to the obvious – in-depth knowledge and expertise, as well as experience – is, of course, passion and dedication. The client must palpably feel your commitment and your drive to attain the best possible results. Clearly identify the business needs and mindset of the client and take a creative and all-embracing approach.

Looking back over your career, what has been your proudest achievement?

Working for over two decades for global leaders in major industries to protect their brands.

WWL Ranking: Thought Leader

Global Leader

Trademarks 2019

Professional Biography

WWL Ranking: Global Elite Thought Leader

WWL says

Claus Eckhartt is "an excellent lawyer" according to sources who "have a lot of time for him" thanks to his top-tier work in trademark prosecution and enforcement proceedings.

Biography

Claus Eckhartt’s practice focuses on the prosecution and enforcement of trademarks, designs and copyright, as well as on unfair competition and related domain name issues. He also specialises in the field of anti-counterfeiting, parallel imports, and the licensing and merchandising of brands.

As head of the firm’s trademark department, Claus Eckhartt has, for almost two decades, been managing the IP portfolios of SMEs as well as multinational corporations and advising them on this matter in a diverse range of industries, including pharmaceuticals, consumer healthcare, household goods, IT, hotel services, banking, food and beverages, and fashion and clothing. His work also involves enforcing and defending IP rights before the European Union Intellectual Property Office, national German courts, the German Patent and Trademark Office, and the General Court in Luxembourg.

Recent major litigation in which he was involved includes a high-profile trademark infringement case concerning bottle shapes. He was also lead counsel in a series of comparative advertising cases of restaurant chains involving litigation between the major competitors in this field.

Claus Eckhartt is an active member of MARQUES, INTA (currently on the Trademark Reporter Committee), PTMG and GRUR. He is also on the advisory board of Intellectual Property Magazine. He frequently speaks at conferences and seminars and regularly produces publications on topics within his areas of practice.

He is listed in WWL: Trademarks as one of two “Thought Leaders” in Germany, and as one of the country’s most highly regarded lawyers. The 2017 edition states: “Claus Eckhartt manages and prosecutes worldwide trademark and design portfolios for international clients from the pharmaceutical, consumer health care, household goods, and food and beverages sectors, among others. He has a long-standing reputation for success and respondents see him as one of the ‘very best trademark lawyers in the market’ and ‘very technically accomplished’.” He is also named in WWL: Germany (2018) as “an ‘excellent lawyer’ praised by sources around the world for his ‘straightforward and no-nonsense advice’”.

Claus Eckhartt is also recommended by Chambers Europe. The 2018 edition states: “Claus Eckhartt offers noteworthy expertise in trade mark prosecution matters, and also regularly advises on anti-counterfeiting and unfair competition law. His highlights include assisting Coca-Cola with trade mark prosecution, cancellation and opposition proceedings.” The 2017 edition states: “Head of the trademark department Claus Eckhartt has built up a strong reputation in both trademark litigation and prosecution, including anti-counterfeit, licensing and copyrights. He also assists with global portfolio management. One source remarks: ‘He is very responsive, gives succinct advice and is always able to weave the business perspective into his analysis.’”

He is also recommended in WTR1000. The 2018 edition states: “He’s an extremely talented attorney who cares a great deal about his clients and is always a pleasure to work with. His opinions and recommendations take into account not only substantive legal issues but also clients’ markets and the practical reality that even big companies don’t have unlimited resources to spend on pursuing IP enforcement. You can always count on him for professional support.” The 2017 edition states, “Comparative advertising sage Claus Eckhartt is ‘very quick to react and business minded. He answers requests quickly and knows how to deal with emergencies. Plus, he is very personable.’”

National Leader

WWL Ranking: Recommended
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