15 December 2021
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Stephan Hoefs is an associate and Attorney at Law, specialising in trade marks. In September, he joined our Munich office from a renowned German law firm. He tells us about his experience advising on revocation matters, why he enjoys litigation and his upcoming secondment to the London office.

How did you become a specialist in trade mark law?

I studied law at university and my traineeship was with a fashion brand. IP issues were common and meant much of my time was spent sending out cease and desist letters to individuals and businesses who were infringing the company’s brand or designs. This sparked my interest and when I qualified, I decided IP law, and trade marks in particular, was the area I wanted to specialise in.

Can you tell us about the most interesting IP issues you have advised on?

One of the areas I have particularly enjoyed working on are revocation matters resulting from misleading trade marks. It’s an interesting and unusual area of trade mark law. One matter related to a number of trade marks owned by a competitor brand. The company used wording such as ‘100% oriental tobacco, Munich’. We argued that given the EU had long since prohibited products containing 100% tobacco and that the product was no longer made in Munich, these trade marks were misleading and should be revoked.

What has been your biggest career challenge so far?

My ongoing challenge is deadlines. When you are juggling several cases at once, gathering the evidence you need to support each one and ensuring it is all submitted on time means you must be very organised.

Contract negotiations are also tough. It’s a real skill to figure out what both sides actually want and to then set out a compromise, especially when working to tight time constraints.

Which person within the legal profession inspires you most?

German IP lawyer, Verena von Bomhard has been advising on EU trade marks since the inception of EU-wide intellectual property rights. She moved from Germany to Spain in the nineties and set up her own IP firm in Alicante not long after the EUIPO was established there. She is highly respected in the field and publishes in legal journals. I really value her knowledge and insight.

If you weren’t a lawyer, what would you choose as an alternate career?

I would have liked to have been a novelist, perhaps writing historic fiction.

What made you choose Mewburn Ellis?

Mewburn Ellis is well known for its trade mark expertise so its reputation, combined with the opportunity to work with the UK team, attracted me to the role. I’m currently based in Munich but in March next year I will be moving to London for a year to work with the trade mark team there.

What are you looking forward to getting involved in at Mewburn?

I’m keen to work on litigation – I enjoy the unexpected twists and turns of working on disputes. I would also like to write more articles for journals and have one planned on the procedural trips to avoid when engaged in cancellation proceedings.

From a personal perspective I am looking forward to moving to London next year, to catching up with my cousin who lives there and taking in some of the tourist attractions. Top of my list are visiting Borough Market, watching some horse racing and enjoying a tennis match at Wimbledon.

What do you like to do away from your job to relax or have fun?

I play a lot of tennis and like to go hiking. I also love to travel and had a fabulous trip to Venice last year when the city was emptier than it has ever been. I’d love to go again.

Stephan is a German attorney-at-law (Rechtsanwalt) and a member of our trademark team. He is also author of several publications on trademark law. He advises clients in all matters of EU and German trademark law and represents them in particular before the Court of the European Union, the European Union Intellectual Property Office and the German Patent and Trademark Office. Stephan studied law at the European University Viadrina, Frankfurt/Oder, Germany. He completed his legal clerkship at the Higher Regional Court of Düsseldorf and worked four years for a renowned Munich hard and soft IP boutique before joining Mewburn Ellis in 2021.
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