Yudu - Lawyer Monthly July 2014

Transactions

JULY 2014

Axel Springer ADVISOR INSIGHT

Lawyer Monthy speaks to Dr. Volker Knies attorney-at-law and founding partner of NESSELHAUF Rechtsanwälte. Volker specialized in all aspects of IP, in particular trademark law, unfair competition law, design law and license agreements. He manages the trademark portfolios of national and international clients and advise in cases of intellectual property infringements. FUNKE Mediengruppe GmbH & Co. KG aA is a long standing client of us and we handle their whole Trademark portfolio since many years.

Please tell us about your involvement in this deal.

We advised FUNKE Mediengruppe GmbH & Co. KG in all aspects relating to IP occurring in the deal. All aspects regarding Trademarks, titles and domains were managed by me, supported by associate Sebastian Carl Schmidt; all aspects regarding copyrights were advised by Dr. Stephanie Vendt, IT-related IP-matters by Sebastian Carl Schmidt (associate) and all aspects regarding media matters by Michael Nesselhauf.

What were the main challenges that arose ?

Besides the high number of Trademarks, titles rights and domains and related agreements insofar the main challenges of the deal were the Trademarks and title rights “BILD”: The title rights - which are separate rights from a Trademark under German law protecting the name of a “work” (e. g. magazine, newspaper, book, movie etc.) - were assigned, but, as Axel Springer SE retained the Trademark “BILD” for the newspaper and also the

Trademarks “BILD” for other magazines, the Trademarks “BILD der FRAU” und “BILD Woche” were not assigned but merely licensed*. In this regard the problem was to consider the interest of Axel Springer SE on the Trademarks “BILD” on the one hand, and the interest of FUNKE Mediengruppe GmbH & Co. KG aA to use the Trademarks and (assigned!) titles on the other hand. This construction and the opposing interests led to various problems which had to be solved

(* Remark: The license on the Trademark

sells several of its best-selling magazine titles to Funke media group