Scenario - Cease and Desist Letter After Several Years of Market Activity

Our client had been successfully operating in the market with a product for several years when they received a cease and desist letter alleging trademark infringement. Initially, they attempted to resolve the matter without external legal assistance but eventually sought our help. 

Our Analysis - Trademark Filing in Bad Faith

In our initial consultation, it became apparent that the opposing party had filed numerous similar trade marks with dubious intentions within a short period. Such behavior can be deemed abusive. Consequently, we recommended filing a cancellation request with the DPMA based on malicious intent. 

In the meantime, the opposing party had also applied for an injunction to prevent our client from selling their products. This injunction was initially rejected. In the subsequent appeal process, we argued for the invalidity of the opposing party's trade mark. 

Outcome - Amicable Resolution

Ultimately, we were able to reach an amicable resolution, allowing our client to continue selling their products under their familiar trade mark, avoiding a prolonged sales stop. 

Scenario - Freedom to Operate Jeopardised by a Newly Granted Patent

Due to our patent monitoring services, we were able to alert a long-standing client in the diagnostics field to a potentially troublesome patent held by a competitor. 

Our Analysis - Patent Not Legally Valid

We first conducted a detailed assessment to determine whether our client's products genuinely fell within the scope of the patent (Freedom-To-Operate) and assessed the legal validity of the patent in question. Our analysis of the relevant state of the art revealed vulnerabilities in the patent. As the patent holder did not respond to our request for a free license, we filed an opposition to the grant of the patent with the EPA on behalf of our client.

Outcome - Patent Revocation

Both in the first and second instances, the EPA granted our request for patent revocation in full. A previous cease and desist letter from the applicant for patent infringement was thus rendered irrelevant. Consequently, our client achieved freedom to operate across the entire European Economic Area (EEA) through a relatively cost-effective legal process.

Scenario - Counterfeit Products from China

Our client, a leading manufacturer of hair clipping devices, has been battling counterfeit products from China for years. To enable direct action against the producers, we initially filed a patent in China on their behalf. 

Our Analysis - Evidence Collection via Private Investigator

Upon patent grant, we engaged a private investigator through our extensive network of foreign partner law firms. This investigator traced the origin company of several counterfeit products that we had obtained through test purchases. After notarizing the evidence, we, with the assistance of our Chinese colleagues, filed a patent infringement lawsuit at the IP Court in Guangzhou. 

Outcome - Claims Fully Recognized

In the first instance, our client's claims were fully recognized, and a six-figure sum was awarded as compensation. The appeal process is ongoing.