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.

The Legal 500 states: “Lubberger Lehment is a renowned IP boutique firm with a focus on trademark law; their service portfolio includes trademark law aspects of M&A transactions, the management of trademark and design rights portfolios and the fight against product piracy, which is particularly availed of by clients in the luxury goods segment.” Further, The Legal 500 mentions: “Lubberger Lehment is one of the leading law firms in contentious disputes and places a special focus on assisting with proceedings concerning Internet-related issues.”

In the field of trademark law, our founding partner Dr. Andreas Lubberger has been placed in the Hall of Fame, and our Berlin partners Eva Maierski and Dr. Rani Mallick are seen as “Names of the Next Generation”. Further, our Berlin associates Dr. Julian Erfurth and Leonard Pietsch have been named as “Rising Stars” in both trademark law and unfair competition law.

The full ranking for trademark law is available here, and the ranking for unfair competition law 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).

Online sales environments may also be detrimental to the luxury image: Higher Regional Court of Dusseldorf confirms sales ban of Issey Miyake and Shiseido products on real.de.

Ban on distribution of luxury brands on online-platform real.de confirmed: After a long-standing dispute, Shiseido Germany GmbH have achieved a significant success in their fight against grey market products. In 2022, the District Court of Dusseldorf found that the presentation of Shiseido and Issey Miyake products on the real.de website harmed the luxury image of these cosmetic and perfume brands and is therefore not permitted. Upon Real’s appeal, the Higher Regional Court has now confirmed the luxury image of the Shiseido and Issey Miyake brands, as well as the detrimental sales environment of the discounter online platform real.de.

The court particularly pointed out that also in the online world, diverse sales experiences are possible and appreciated by the consumer; as well as online shops which lack any prestigious character, there are also online shops with various levels of prestigious character. According to the Court, the presentation of Issey Miyake and Shiseido products in the usual, functional and non-prestigious way that is typical for the discounter platform real.de is therefore damaging to the images of the brands and thus infringes the respective trademarks.

We consider this decision to be a remarkable success for the owners of luxury and prestigious brands since it extends the case law on prestige-damaging sales environments in retail stores in the online world. Congratulations to our Berlin colleagues Eva Maierski, Dr. Rani Mallick and Luca Kowalewski who represented our client in this case.

The press release can be found here.

Lubberger Lehment has been involved in a series of disputes with the discounters ALDI Süd and ALDI Nord on behalf of its client Coty for the past six years. The issue in dispute dealt with the question of whether Coty was entitled to prohibit the discounters from selling Coty’s Calvin Klein and Joop! brand fragrances based on the discounter – and, from Coty’s point of view, prestige-damaging – sales environment at ALDI. This long-running dispute has now come to a successful end for Coty – with two remarkable court decisions:- In the first decision dated July 27, 2023, the German Federal Supreme Court dismissed another non-admission appeal [Nichtzulassungsbeschwerde] by ALDI against a ruling by the Higher Regional Court of Berlin [Kammergericht]. The Berlin ruling prohibited Aldi Nord from selling Calvin Klein perfumes in the typical ALDI rummage boxes.

– Secondly, in its decision dated June 30, 2023, the Higher Regional Court of Dusseldorf ruled in favour of Coty and prohibited the presentation of perfumes in the rummage boxes typical of Aldi and in glass display cases in all Aldi Süd stores. Aldi decided against a non-admission appeal [Nichtzulassungsbeschwerde] against the ruling of the Higher Regional Court of Dusseldorf, thus rendering the decision final and binding.

As a result, Coty has successfully defended itself before three higher courts, with one case partially confirmed by the German Federal Supreme Court, against the distribution of its Joop! and Calvin Klein perfumes in ALDI stores and the typical discounter sales environment there.

We consider the decisions to be not only a great success for Coty, but also a real ray of hope for many rights holders: they affirm that rights holders do not have to accept a sales environment for their branded goods that is incompatible with the brand image they have painstakingly built up. They also show that the possibility of taking action against prestige-damaging sales environments on the basis of trademark infringement is not per se reserved for brands which fall in the top luxury category.

The proceedings were conducted for our client Coty by our Berlin partners Eva Maierski and Dr. Rani Mallick.

Chambers has ranked us in Band 2 in Germany in the field of “Intellectual Property: Trade Mark & Unfair Competition” in its 2023 ranking. Chambers 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.” It is a great acknowledgement of our team that we have been ranked by Chambers for 16 consecutive years now. Further information is available here, and the full ranking is available here.

The Legal 500 has listed us in the in the 2023 ranking for Germany in Tier 1 in the field of trademark law and in Tier 2 for unfair competition law. The Legal 500 states: “In addition to numerous lawsuits, Lubberger Lehment’s advisory portfolio also includes advice on trademark law in corporate transactions; the IP boutique enjoys a particularly good reputation in the luxury segment, but its core clients also include companies with digital business models. The firm’s expertise includes the management and structuring of trademark and design portfolios as well as anti-piracy and unfair competition matters.”

In trademark law, our founding partner Dr. Andreas Lubberger is placed in the Hall of Fame, and our Berlin partners Eva Maierski and Dr. Rani Mallick are seen as “Names of the Next Generation”. It is great to see that, with Eva Maierski being recognized that way for the first time this year, a further young female partner of our firm has joined the club of next generation lawyers.

Thank you, Legal 500, and also to our clients, for this great recognition of our work! The full ranking is available here.

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.

Our colleagues Dr. Rani Mallick and Eva Maierski achieved a great success for our client Shiseido against the real.de platform. Shiseido had filed two complaints against Real seeking injunctions concerning the sale of its SHISEIDO and ISSEY MIYAKE perfume and cosmetic products on the real.de platform.

In both cases the District Court of Düsseldorf (decisions of 29 September 2022, case nos. 37 O 183/19 and 37 O 177/19) held that SHISEIDO and ISSEY MIYAKE are luxury brands that have a prestige image. Selling products of those brands on the platform real.de, which features a discounter-like sales environment, impairs the prestige image of those trademarks. Therefore, Shiseido has legitimate reasons to oppose further sale and distribution of the products pursuant to Art. 15 (2) EUTMR, preventing Real to rely on the principle of exhaustion.

The decisions are not yet final and binding.