The Chambers Global Guide 2024: Germany has ranked us in Band 2 for Intellectual Property: Trademark & Unfair Competition, and states: “Lubberger Lehment holds a strong track record of assisting brand owners with trade mark, unfair competition and copyright law. Its clients hail from the luxury goods, cosmetics and technology industries. The team has notable expertise in portfolio management and selective distribution matters, further assisting with parallel import cases. The law firm is also well versed in the intellectual property aspects of transactions, including due diligence.”In addition, our partners Dr. Andreas Lubberger, Dr. Benjamin Koch, Dr. Rani Mallick and Eva Maierski have been ranked as individuals.

The full ranking can be found here.

World Trademark Review states: “One of Germany’s best-known, highest-profile and highest-quality IP boutiques, Lubberger Lehment is a well-connected and well-recognised trademark practice. Peers in the market unanimously hail them as skilled litigators in the arena. They are undoubtedly very tough to have on the other side, but they are always fair in their approach. The whole team are good negotiators.”

The full ranking is available here (log-in required).

For several years now, Lubberger Lehment has been representing the honey manufacturer LieBee GmbH in an ongoing dispute with the jam manufacturer Göbber GmbH. The subject of dispute is the allegation of an unfair imitation, which the manufacturer of GLÜCK jam sees in LieBee honey. Lubberger Lehment have already been able to defend LieBee successfully against attacks on a second and third product design (see District Court of Hamburg, judgment of 20 January 2022, case ref. 327 O 44/21, final and binding). With the GLÜCK decision of the Federal Supreme Court of 7 December 2023, case ref. I ZR 48/22, the decision of the Higher Regional Court of Hamburg regarding the first LieBee product design has been overturned. The Higher Regional Court of Hamburg had found the honey jar to be an unfair imitation of GLÜCK jam in the form of indirect deception of origin (mittelbare Herkunftstäuschung). Now the Higher Regional Court of Hamburg has to decide once more.

The decision of the Federal Supreme Court contains new and fundamental guidelines for protection against unfair imitation:

– The German law on unfair imitation does not provide for protection of specific concepts for product designations. The subject matter of protection is the specific design of a product, not the idea behind it.

– The fact that differing product and manufacturer information on products of daily use can rule out a deception about the commercial origin is also applicable in cases in which the design of the packaging clearly stands out from the market environment.

– Product names can have the same effect of indicating origin as clearly recognizable manufacturer names.

– Unfair imitation is not ruled out by the products at issue being different. However, such a difference leads to special requirements for the unfairness criterion, due to the fact that certain categories of indirect deception of origin (deception about a secondary trademark (Zweitmarkenirrtum)) are not applicable to non-identical products.

Our client LieBee GmbH was represented in the proceedings by our Berlin partners Dr. Andreas Lubberger and Eva Maierski. Axel Rinkler represented our client before the Federal Supreme Court.

Here you can find the JUVE press release.

WTR 1000, the World Trademark Review’s guide that identifies the leading trademark professionals around the globe, has ranked Lubberger Lehment in the Gold Band of its 2023 ranking for Germany. WTR 1000 states: “Lubberger Lehment is one of the top boutiques in Germany. The group stands out for its litigious capabilities, particularly against large online platforms and traders, with many of its cases reaching the highest-level domestic courts.”

The full ranking is available here.

JUVE has awarded us with the title of Law Firm of the Year 2022 for Trademark and Unfair Competition Law. The JUVE Handbook of Commercial Law Firms 2022/2023 states: “Hardly any law firm for soft IP has positioned itself so clearly and successfully in the market on the side of manufacturers of branded goods, which it represents in disputes against large trading platforms or trading companies.”, and further: “Lubberger Lehment shows how to build up a successful and sustainable team: In addition to the old master Dr. Andreas Lubberger and experienced partners such as Martin Fiebig, it is more and more a young generation of partners that takes on responsibility for large mandates, such as for example Coty, Shiseido or Würth”.

You can find the excerpt of the JUVE Handbook here. The full list of all award winners is available here.

We are happy to share that we have been nominated for the “IP Law Firm of the Year” Award by JUVE Verlag. Great team effort – a huge thank you to our fantastic colleagues!

More information about the award is available here.

“Keyword advertising – the neglected offspring of trademark law?”: Our Berlin partner Dr. Andreas Lubberger will be speaking on this topic at this year’s DAI annual working conference, which takes place in Hamburg from 26 to 27 November 2021 (currently planned as a hybrid event). Among other things, the talk will deal with the legal classification of keyword advertising, the assessment approach taken by the courts and the online transparency requirement of EU law. The full program and registration information can be found here.

On Thursday, 15.10.2020, the Federal Supreme Court referred a further trademark dispute between Coty and Amazon on the subject of exhaustion back to the Munich Higher Regional Court (OLG). The Federal Supreme Court assumed the proceedings after the judgement against Amazon in order to comment on the only unanswered question about the burden of proof regarding the origin of two Joop! perfumes. After that it looked as though the Federal Supreme Court wanted to take the approach of the OLG Munich, according to which the burden of proof must differentiate between the market partition of selective distribution systems and the market partition of national trademarks. However, in the oral proceedings the Presiding Judge of the 1^st court of appeal, Mr. Koch, made it clear that this was not to be expected. Rather, the Federal Supreme Court regards individual clauses in Coty’s contractual system as problematic. The OLG Munich now has to determine whether the suspicion of a market bulkheading can be derived from this. In this case, Coty would bear the sole burden of proof for the alleged trademark infringement by Amazon. Otherwise, Amazon would have to submit far more information regarding the chain of purchase than they have so far.

With the referral, the general suspicion against selective distribution systems as such is off the table. There are good reasons for the clauses that Coty has used for the last 25 years. The European Commission even distributed a “comfort letter” on an earlier version of the contract with these clauses. In the area of selective distribution hardly any other contract has survived so many court cases as Coty’s, most recently in the much-cited “Coty Judgement” of the European Court of Justice of 6. December 2017 (C-230/16).

This Tuesday, the Higher Regional Court in Frankfurt/Main dismissed the appeal of the liquidator of the assets of the drugstore chain Schlecker, which had claimed damages amounting to EUR 212 million due to an alleged price-damaging information exchange of its suppliers (case ref. Az. 11 U 98/18). Our colleagues Dr. Andreas Lubberger and Dr. David Weller successfully represented one of the defendants. The press article with more insights into this case can be found under this link (only available in German language).

At the Global IP Awards in London which were presented by IAM and WTR, Lubberger Lehment was named “Trademark Litigation Firm of the Year” in Germany. The Global IP Awards recognize outstanding achievement in IP litigation, prosecution and transactional work during 2018. We congratulate our entire team, and are honored to have received this award. The full article on the IAM website is available here https://bit.ly/2TnUyHH, and the list of winners from more than 40 countries can be found here https://bit.ly/2Wuktzu (both only available in English language).