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Content 01 IP/IT/Commercial in Germany 04 Experience of our lawyers 07 Your contacts 08 Our offices
IP/IT/COMMERCIAL IN GERMANY 01 IP/IT/Commercial in Germany The world of business is increasingly global all markets and regions have become connected and the internet continues to build links between corporations, markets, business partners, customers and competition. Content, data and information can be accessed worldwide, passed on thousands of times and shared instantly with others, resulting in businesses being subject to an ever growing list of national and international regulations. Protecting critical corporate assets such as business titles and trademarks, creative solutions and designs, technical knowledge, know how and company secrets is becoming more important and more of a challenge. Here, ideas in development, production, trade and distribution, as well as the complex legal areas of copyright law, intellectual property law (IP), information technology (IT) and the laws governing unfair competition are becoming increasingly important. Watson, Farley & Williams international offices host a number of experts in commercial and distribution law, intellectual property law, copyright law, competition law and information technology. Experienced lawyers in Munich, Hamburg and Frankfurt, each with particular skill sets, work closely with colleagues in IP/IT/Commercial across the firm s international offices as well as those in trusted local partner firms to deliver first class cross border legal advice. Simply considering this issue in a national way is no longer sufficient. Strategic planning adopted with an international mind set can be crucial to a company s success.
02 IP/IT/COMMERCIALINGERMANY Ourlawyersʹadviceincludes: Intellectualpropertyrights,copyrightlaw andunfaircompetitionlaw > National,internationallyregistered(IR) andcommunitytrademarksand registereddesigns(application, monitoring,oppositionandcancellation proceedings) > Conductingofcasescoveringthe infringementofindustrialproperty/ productprotection(suchastrademark law, designandcopyrightlaw,patents andutilitymodels,plantvarietyright, supplementaryprotectionofcreations undercompetitionlaw). > Employeeinventionlaw > Protectionagainstpiracyofproductsand parallelimports,inparticularthrough seizureattheborder > Adviceondesigningandexecutionof advertisingcampaigns > Conductofcasesinunfaircompetition matters > Protectionofknow how(adviceonhow besttoprotectbusinessandindustrial secretsaswellashowtotakemeasures againstunauthorizedutilization, particularlyinmattersinvolvingformer employees) > Licencingofindustrialpropertyrights, copyrightsandknow how > TechnologytransferandR&Dagreements > Anti trustlawinthefieldoflicencing Watson,Farley&Williams IP/IT/CommercialinGermany
IP/IT/COMMERCIALINGERMANY Commerciallaw > Distributionlaw(salesrepresentativeand distributionagreements,manufacturing anddeliverycontracts,franchising) > Structuringandreviewofgeneralterms andconditions(b2bandb2c) > Primecontractorandprojectcontracts Informationtechnology > Acquisition,implementationand distributionofcomputersystems > Softwarecontracts(development, applicationandprotection) > Outsourcing > Protectionofprivacy 03 E commerce > Onlineandelectronictradeand distribution > Lawofcontractforinternetservice providers > Domainnames > Protectionofprivacy,dataprotection Mediaandentertainment > Righttopublishandlawsgoverning thepress > Internationalmovieandtelevision productions > Financingandmarketingofmovies > Internationallicenceagreements (e.g.programmeandprogramme packages,formats) > Right(s)tobroadcastsportingand otherevents > Moralandpersonalrightsprotection Watson,Farley&Williams IP/IT/CommercialinGermany
04 EXPERIENCE OF OUR LAWYERS Experience of our lawyers* German Pharmaceutical Group German Automotive Supplier Robert Bosch GmbH / Bosch Group Advising the client in Germany, Hong Kong, Vietnam and Myanmar on commercial, contract and distribution law as well as on R&D, manufacturing and supply cooperation agreements. Ongoing advice to the German automotive industry group of companies in Germany, Thailand and Malaysia. Advising on the IP and technology transfer for the sale of Bosch s international foundation brakes business to the US private equity investor KPS Capital Partners. Leading International Sport and Event Rights Marketer Leading US Based International IT Company Strategic Value Partners (SVP) Group Carte Blanche Greetings Ltd. Advising on general IP, trade and distribution law. The advice included sports marketing and licencing as well as advising on an international fashion exhibition project. Advising the multinational dispute resolution team of a leading US based international IT company on German civil law in relation to a major international arbitration proceeding in London, UK. Advising entities belonging to the Strategic Value Partners (SVP) Group in contentious trademark and competition law matters in Germany, concerning the naming rights for real estate projects. Advising Carte Blanche Greetings Ltd. in relation to ongoing prosecution of product piracy cases. Sumitomo Corporation Advising the Sumitomo Corporation in Germany on industrial property rights and enforcement of property rights before courts, in particular advising on a patent law dispute regarding the offering, import and sale of safety glass from China in Europe. Leading German Health Insurance Fund Advising on the development of an IT company covering various health insurance schemes, the outsourcing of the complete IT landscape as well as offering continuous advice for IT development projects. Leading International Publishing Group Advising an international publishing group specialising in scientific and academic publications on the planned joint venture acquisition of the international BertelsmannSpringer publishing group. Apax Partners UK Ltd. Advising Apax Partners UK Ltd. in relation to the acquisition of a majority share in the international IT security company Sophos plc. as well as the indirect purchase of Utimaco Safeware AG. TietoEnator Advising TietoEnator on their intended acquisition of a leading German software developer active in the banking software industry. Leading Supplier of Private Label Products Providing comprehensive advice to the leading supplier of household and personal care products in relation to various judicial and extrajudicial proceedings involving former employees. Skechers U.S.A. Inc. Providing Skechers with comprehensive trademark and design law advice as well as representation and centralised support, with particular reference to the European rights portfolio. Leading German Kitchen Manufacturer Advising various subsidiaries of this group of companies on trademark law, design, copyright and unfair competition law as well as on domain disputes, among others in China. * partially from previous employment
EXPERIENCE OF OUR LAWYERS 05 DKMS Deutsche Knochenmarkspenderdatei Advising on dispute matters. Manufacturer of storage devices Representation in multinational patent and licencing disputes with members of an international patent pool. GE Capital Corporation Providing comprehensive advice to GE Capital Corporation in relation to a service agreement for the dissolution of the GE joint venture ʺFleet Companyʺ with TÜV Süd. Vinicola Cide s.r.l Advising Vinicola Cide, an Italian wine and sparkling wine producer, in judicial and extrajudicial matters, including the successful conduct of court proceedings against a German food retail chain regarding unfair competition. UniCredit Bank AG Comprehensive advice in the field of IP (trademarks, copyright law, etc.) concerning the acquisition of collateral in IP rights, in the context of the refinancing of the purchase of Home Shopping Europe GmbH. Schoeller Arca Systems GmbH Advice to Schoeller Arca Systems GmbH within the framework of individual customer agreement projects including, amongst others, a framework cooperation agreement with a leading international retail chain. DowJones & Company, Inc. / STOXX Ltd. Ongoing advice in relation to matters of copyright, unfair competition law and trademark law, especially regarding licencing of stock market index data. Cision AB CardFactory AG Palm Europe Thomson Reuters Advising Cision AB, a leading global service provider for media monitoring, on the sale of German subsidiaries to the Danish Infopaq International A/S, with particular reference to IP and commercial matters. Advising CardFactory AG, a leading company group in the field of ʺSmart Cardsʺ, in relation to legal disputes concerning trademark infringement and unfair competition of a competitor. Advising Palm Europe, a former global manufacturer of PDAs, software and mobile computing equipment, in relation to all questions of its marketing and sales activities in Germany. Advising Thomson Reuters on commercial and licencing matters. Privalia Venta Directa S.L. Advising Privalia Venta Directa S.L. and its investors on questions regarding trade and distribution law in connection with the acquisition and financing of dress for less GmbH from Palamon Capital Partners. German Marketing Agencies Advising two German marketing agencies in relation to contentious and non contentious matters against joint venture partners concerning copyright infringement and unfair competition. English Publishing Group Representing an English art book publisher in two copyright court cases against a German collecting society.
06 EXPERIENCE OF OUR LAWYERS Private Equity Investors Advising a group of private equity investors on their joint investment with Saban Capital Group in ProSiebenSat.1 Media AG, Germanyʹs largest television group. Private Equity Fund Advising on the intended acquisition of a leading German specialist publisher. FC Deutschland GmbH / Marketing für Deutschland GmbH Advising on various content, project and licencing agreements for its international campaign (ʹGermany land of ideasʹ) to market Germany internationally in advance of and after the World Cup 2006. International Financial Consultancy Advising an international financial consultancy on insolvency law issues relating to the FIFA World Cup 2006 licence agreement with EM.TV. Electra Partners Europe Advising Electra Partners Europe on its public toprivate takeover of the international advertising agency Scholz & Friends AG. Manufacture of Design Furniture Ongoing enforcement of injunctive reliefs and claims of damages against producers and distributors of counterfeits as well as against online and high street retailers. Tank & Rast Ongoing advice in the fields of purchasing and sales (including advice regarding general terms and conditions and model contracts) as well as data protection. Leading US Software Developer Ongoing advice on complex IT development projects, on the development of customer licences as well as international IT cooperations. German Pharmaceutical Company Varial Software AG / Agilisys Automotive GmbH Another Music Company GmbH Advising in connection with a long term development, licence and supply agreement with a leading US pharmaceutical company. Advising in relation to an OEM software cooperation and in relation to the establishment of standard agreements for software services in Germany. Advising Another Music Company GmbH in relation to an exclusive publishing agreement with Universal Music Group. Piramal Healthcare Group Advising Piramal Healthcare Group in relation to the acquisition of the medical product Haemaccel from PlasmaSelect AG (IP/commercial). Laird Group Advising Laird Group, one of the leading listed technology groups worldwide, on the acquisition of the Cattron Group with its headquarters in the US and a major industrial location in Germany. Navitas Ltd. Advising Navitas Ltd. on the acquisition of SAE Institute GmbH, a leading global private education institute, which offers practiceorientated training and programs in the areas of audio engineering, film, animation, web design and digital journalism. Leading International Automotive Supplier Advising on and coordinating the foundation of an international centralised purchasing cooperation.
YOUR CONTACTS 07 Your contacts Axel Löhde Partner Hamburg +49 40 800 084 314 aloehde@wfw.com Marcus Nothhelfer Partner Munich +49 89 237 086 184 mnothhelfer@wfw.com Dr. Torsten Rosenboom Partner Frankfurt am Main +49 69 297 291 250 trosenboom@wfw.com Axel Löhde qualified as a lawyer in 1982 and joined Watson, Farley & Williams in 2013 as a partner in the Corporate Group. He has extensive experience advising and representing owner run, family owned private equity firms and their shareholders on corporate and dispute resolution matters as well as assisting them with succession planning and structuring. Further, he has significant experience advising on national and international M&A transactions and IT projects. His clients include large and medium sized companies from Germany, France, Scandinavia and the US. His core sectors are trade, insurance, chemical, IT and communication. Highly rated in the leading German directory and journal JUVE since 2000, Axel is also regularly appointed as a party representative and arbitrator in ad hoc and institutional arbitration proceedings. Marcus Nothhelfer is a partner in Munich and specialises in intellectual property (IP) and commercial projects/general commercial law. His legal expertise covers a broad range of areas in the fields of M&A/private equity, commercial project law, international trade, joint ventures, manufacturing, franchising, e commerce, as well as intellectual property law, with a focus on licencing, technology transfer, protection of knowhow and business secrets, the law of passing off, trademarks, designs and copyrights. He has extensive experience representing in court. Marcus qualified as Rechtsanwalt in 1999 and is a specialist lawyer (FA) for copyright and media law. Dr. Torsten Rosenboom joined Watson, Farley & Williams as a partner in Frankfurt in August 2013. His advice focuses on M&A/private equity, joint ventures, inter company restructuring as well as on corporate and contract law. His expertise also comprises legal advice in relation to purchasing and distribution (including franchising). He has extensive experience coordinating international projects.
08 OUR OFFICES Our offices UK USA France Germany Italy London New York Paris Hamburg Rome 15 Appold Street London EC2A 2HB Tel: +44 20 7814 8000 Fax: +44 20 7814 8141 1133 Avenue of the Americas New York NY 10036 Tel: +1 212 922 2200 Fax: +1 212 922 1512 26, avenue des Champs Elysées 75008 Paris Tel: +33 156 88 21 21 Fax: +33 156 88 21 20 Jungfernstieg 51 20354 Hamburg Tel: +49 40 800 084 0 Fax: +49 40 800 084 410 Piazza Navona, 49 2nd Floor int 2/3 00186 Rom Tel: +39 06 68 40 581 Fax: +39 06 68 89 2717 Munich Milan Gewürzmühlstraße 11 80538 München Piazza del Carmine 4 20121 Mailand Tel: +49 89 237 086 0 Fax: +49 89 237 086 222 Tel: +39 02 721 70 71 Fax: +39 02 721 70 720 Frankfurt Ulmenstraße 37 39 60325 Frankfurt am Main Tel: +49 69 297 291 200 Fax: +49 69 770 75800
OUR OFFICES 09 Spain Greece Singapore Thailand China Madrid Athens Singapore Bangkok Hong Kong Maria de Molina, 4 28006 Madrid Tel: +34 91 515 6300 Fax: +34 91 563 1630 6th Floor, Building B 348 Syngrou Avenue Kallithea 176 74 Athen Tel: +30 21 0455 7300 Fax: +30 21 0459 4004 6 Battery Road #28 00 Singapur 049909 Tel: +65 6532 5335 Fax: +65 6532 5454 Unit 902, 9th Floor, GPF Witthayu Tower B 93/1, Wireless Road Patumwan, Bangkok 10330 Tel: +66 2 665 7800 Fax: +66 2 665 7888 Units 1703 1707 One Pacific Place 88 Queensway Hong Kong Tel: +852 2168 6700 Fax: +852 2918 9777 All references to Watson, Farley & Williams and the firm in this brochure mean Watson, Farley & Williams LLP and/or its affiliated undertakings. Any reference to a partner means a member of Watson, Farley & Williams LLP, or a member or partner in an affiliated undertaking, or an employee or consultant with equivalent standing and qualification. The transactions and matters referred to in this publication represent the experience of our lawyers. This brochure is produced by Watson, Farley & Williams. It provides a summary of the legal issues, but is not intended to give specific legal advice. The situation described may not apply to your circumstances. If you require advice or have question or comments on its subject, please speak to your usual contact at Watson, Farley & Williams. This publication constitutes attorney advertising. 100 000 2567 HAM 25/06/2014 Watson, Farley & Williams 2014
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