2 May 2023
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As part of our 'meet the team' series, we talked to Jan Rether, partner in the Munich office, about the international nature of trade mark work, the importance of negotiation in IP disputes and why he enjoys making repairs and fixing things in his spare time.  

Jan always wanted a legal career. Growing up he was inspired by an uncle who worked as a lawyer and decided to apply to the University of Konstanz to study law.

“My uncle was an important role model for me, and I was keen to follow his example. For as long as I can remember, it was what I wanted to do and if I hadn’t become a trade mark attorney, I would have definitely gone into another area of the law,” says Jan.

He developed an interest in IP quite early on in his studies after being taught by a professor who specialised in the field and was a well-known trade marks expert.

“His lectures sparked a real passion for the subject. When I read about landmark decisions and important cases, more often than not, big consumer brand names were involved. I could see how closely this technical, legal topic related to real life – to high street brands and products we all use.”

Jan decided to specialise in IP and trade mark law in particular.

“I love the international nature of the work,” says Jan. “A lot of my clients are international, and others are German clients looking for advice on expanding elsewhere in the world. The job has given me the opportunity to develop a worldwide network of peers and because trade mark law is so similar across the world, we are able to discuss our work with each other and share experiences.”

High stakes

The part of the job he enjoys the most is litigation. “I have the greatest respect for German judges and the courts,” he explains. “They have the highest level of expertise in trade mark law so it feels like a real achievement when you have been able to construct an argument strong enough to convince them of your case. For clients the stakes can be very high.”

Standout cases for Jan include acting for a Californian internet brand defending a high profile trade mark infringement. “This case demonstrated the importance of negotiation,” says Jan. “We met the German company bringing the action and were able to reach a settlement that worked for everyone, avoiding court.”

Jan encourages clients to look at reaching a settlement, particularly in cases that are less clear cut. “Many cases get resolved this way. As well as being expensive, court action often becomes limited to one or two key points of the conflict. In a negotiated settlement, however, you can look at more aspects of the matter and resolve the situation more broadly. You need to put yourself in the shoes of the counter party and ideally find a solution that makes everyone happy.”

Virtual worlds

Virtual worlds are the hot topic of the moment for trade mark experts, says Jan. “Clients’ desire to cover virtual goods and NFTs (non-fungible tokens) as part of their trade mark portfolio is the most talked about issue amongst my peers. Although no one really knows the extent to which virtual worlds are going to take off, clients want to prepare and make sure they don’t miss out on the potential opportunities.”

Another trend Jan has observed in recent years is the move towards registering national marks in EU member states instead of, or in addition to the registration of EU trade marks. “In the EU we have a dual trade mark system,” he explains. “Companies can either register an EU trade mark and cover all 27 member states, or just register in Germany and any other countries they want to trade in.

“These days a lot of companies go for the EU mark, thinking it will be more cost effective than registering in multiple jurisdictions and will give them better protection. This isn’t always the case, particularly when you only really need coverage in two or three countries. It is a trade-off but there is an argument for reverting to national marks instead.”

If a registration is straightforward, says Jan, an EU mark can be cheaper but if there is a problem and oppositions start to come through, it is often much more complex and difficult to resolve at the EU IPO than at a national level. “People need to realise that an EU mark is not always the best solution,” he says.

For Jan, one of the hardest parts of the job is juggling competing demands. “I am generally working across a number of different clients and matters at any one time. Now I am a partner, I also have management and business development responsibilities so balancing it all can be quite challenging.”

When he’s not focused on the demands of the job, Jan’s time is taken up by his two young children. “I don’t have as much time for the sports and cycling I enjoyed before I became a parent, but I still get out on the bike when I can,” he says. “I also find working with my hands relaxing – I enjoy fixing things around the house, making things and making modifications and repairs to my bikes. It’s satisfying to see the results of your hard work and also a very useful hobby to have.”

Jan is a member of the trade mark team, with vast experience in all trade mark related matters from general strategic advice, clearances, filing and prosecution to enforcement of trade marks in opposition and court proceedings. His work includes negotiation of trade mark related agreements including out of court settlements, and managing Border Seizure applications. He also has experience in design and copyright matters.
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