Intellectual Property (IP)

Salans IPT&C Group is a full service practice, with significant experience across the whole spectrum of intellectual property law and procedure, including:

• trademarks,
• trade names,
• patents and utility patents,
• geographical indications,
• registered designs,
• copyright,
• neighbouring rights, and
• domain names. 

This expertise allows us to advise clients during the entire life cycle of the respective intellectual property rights (IPRs), covering the development, acquisition, exploitation and enforcement as well as the management of their IPRs - not only nationally but on an international basis.

We closely collaborate with other specialised practice groups within Salans, in particular Salans’ Banking & Finance, Competition, Corporate, Employment, and Tax practice groups, to provide our clients with specific, individualised responses to their complex questions.

Salans plays an active role in domestic and international IP communities, in particular in the context of local and international associations such as INTA (International Trademark Association), ECTA (European Communities Trade Mark Association), and ITech Law (International Technology Law Association).

Our IP Services

Agreements

Our lawyers are involved in all aspects of drafting and negotiating commercial agreements relating to IP rights including:

• assignments,
• licenses,
• exploitation of derivative rights,
• co-ownership agreements,
• division of ownership,
• coexistence agreements,
• research agreements,
• confidentiality agreements,
• partnership agreements,
• complex set-ups, and
• legal and tax engineering as applied to IP rights.

This also includes, if necessary, obtaining required authorisations for the exploitation of IP rights and advising on the labelling and designation of products in accordance with the applicable regulations.

We work closely with our Competition Group to ensure full compliance with the applicable antitrust laws.

Contentious Work

Our lawyers have the capabilities to protect intellectual property assets from infringers and to defend against claims of infringement. We are representing clients before judicial courts (national civil courts as well as before the European courts) and before domestic and international alternative dispute resolution forums. Our experience spans many industries and includes handling disputes for all sizes of businesses, from emerging companies to multi-national corporations.

Domain Names / Internet Conflicts

A number of lawyers from the Salans IPT&C Group are specialized in domain name law. We provide for worldwide domain watches including advice on strategic domain name portfolio administration; in addition, we represent our clients both in litigation before the competent national courts as well as in arbitration procedures in particular before the World Intellectual Property Organization (Geneva), the National Arbitration Forum (Minneapolis) and the (European) Czech Arbitration Court (Prague).

Moreover, we have experience in all IP matters relating to Internet law. We advise our clients on the creation of websites, drafting of general terms and conditions, data protection clauses and liability disclaimers on the Internet and supervise short-term web events such as promotions, contests, mass-mailings and other Internet-based marketing measures.

Due Diligence on IP in Mergers and Acquisitions

We represent clients in business transactions such as acquisitions or reorganisations involving intellectual property assets. Our respective services include:

Prevention of Counterfeiting

We have significant experience and expertise in assisting clients from a wide range of industries to develop and implement effective anti-counterfeiting strategies. We employ all the tools available to the IPR owner to tackle this problem - civil litigation, administrative seizures and/or criminal proceedings. All of this with the aim to remove or substantially reduce the counterfeiting threat in the market and to make the counterfeiters pay for their unlawful acts.

Trademark and Patent Filing and Prosecuting

Salans IPT&C Group has established an active intellectual property counseling and prosecution practice, particularly for obtaining patents, trademarks and (in common law countries) copyrights. Together with our clients, we develop filing and registration strategies. We advise our clients with regard to the availability of “defensive filings”, “re-filings” and the registration of “well known trademarks” on a global basis and handle (either directly or through our network of external patent and trademark attorneys) pre-filing clearance/novelty searches as well as applications/filings at Patent and Trademark Offices.

We handle opposition and cancellation proceedings (at national Patent and Trademark Offices, at OHIM, at the European Court of First Instance, and at the Court of Justice of the European Communities). Furthermore, we are regularly advising and representing clients with regard to global settlement agreements (including demarcation and co-existence agreements).

Administering and managing large, global trademark/patent portfolios is one of our core competencies and we have built up respective expertise in the US, in Europe and in the CIS countries.