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The Federal Court of Justice forces trademark owners to tailor their brand strategy and management

On 9 November 2017 the German Federal Court of Justice (BGH) handed down a decision concerning the international jurisdiction of (German) courts in cases of infringement of European Union trademarks (I ZR 164/16). The BGH now asks for an "overall assessment" of the defendant's behaviour to establish the original infringing act, rather than focussing on the various, separate acts of infringement. Therefore, relevant in this context is in which member state the act of infringement has been committed, rather than where the infringement has taken effect.

This decision will probably make it more difficult to bring trademark infringement proceedings based on an European Union trademark in cases of cross border infringements before a German court. Hence, this decision will force trademark owners to tailor their brand strategy and management.

We would be happy to assist you in tailoring your brand strategy and management by implementing our standardized Intellectual Property Impairment Check containing a workshop, standard analysis and evaluation report.

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