Marc F-XGroebl

Of Counsel

Munich + 49.89.20.60.42.200

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As head of the IP Trademark and Design group in Germany, Marc Groebl works primarily in the field of intellectual property law, focusing on "soft IP." He has extensive experience in prosecuting and litigating intellectual property law matters, including cross-border litigation. Marc renders strategic legal advice to large corporations regarding international trademark, unfair trade practices, copyright law, and internet domain portfolios.

Marc has represented many international companies in court and administrative proceedings and in settlement negotiations for some of the most prestigious brands in the world, including LVMH-Group, The Procter & Gamble Company, Wendy’s, and one of the best known U.S. fashion brands.

Specifically, Marc advised label powerhouse LVMH on numerous key trademark matters; he handled various complex EU design and trademark infringement matters for Procter & Gamble; and he worked to introduce one of the best known U.S. fashion brands as a new label in Germany.

Additionally, Marc represented Koninklijke KPN NV (Dutch telecommunications company) and its subsidiaries in numerous opposition proceedings before the German Patent and Trademark Office. He was the leading counsel for a cross-border litigation of a famous Dutch fashion brand concerning the designation "RAW".

Marc is a member of the Munich Bar (Board of Directors, 2008-present). He is also a member of the German Association for Intellectual Property and Copyright Law (GRUR), the International Trademark Association (INTA) (member of the Famous and Well-Known Marks Committee), and the German-American Lawyers' Association (DAJV).

Experience

  • Verizon acquires incubed ITJones Day advised Verizon Communications, Inc. in its acquisition of incubed IT, the creator of a software platform providing autonomous navigation tools to administer, manage, and optimize mixed fleets of robots in industrial settings.
  • SAP acquires Qualtrics for $8 billionJones Day advised SAP in its $8 billion acquisition of Qualtrics International Inc., the global pioneer in the experience management software category.
  • Madbox obtains ex parte preliminary injunction against a competitor regarding copycat video game on the AppStoreJones Day obtained an ex parte preliminary injunction from the District Court of Berlin on behalf of Madbox SAS, a French video game developer, against a competitor for copyright infringement as part of a worldwide dispute between the parties.
  • Cylance develops worldwide trademark portfolio for cybersecurity softwareJones Day advises Cylance, Inc. on the development and enforcement of its worldwide trademark portfolio directed to leading machine learning-based cybersecurity software and related services.
  • Total sells Atotech to The Carlyle Group for $3.2 billionJones Day advised Total in the $3.2 billion sale of specialty chemical affiliate Atotech B.V., a global manufacturer of high technology plating solutions, to The Carlyle Group.
  • GfK sells animal and crop health divisionJones Day represented GfK SE, a market research provider, in connection with the sale of its global animal and crop health division to a consortium consisting of Inflexion, a private equity investor, and the current management.
  • Asmodee Group acquires Mayfair Games and English language rights to Catan brandJones Day advised The Asmodee Group in its acquisition of Mayfair Games, Inc. and the English language rights to the Catan brand.
  • ACI Worldwide acquires PAY.ON for €180 million (US$200 million)Jones Day advised ACI Worldwide, Inc. (NASDAQ: ACIW), a leading international provider of electronic payment systems, in its approximately €180 million (US$200 million) acquisition of PAY.ON AG, a German corporation that renders services for trading by providing a software-supported basis for communication and settlement to payment services providers as well as to their salespersons and retail customers.
  • XL Airways France completes sale to X-Air AviationJones Day represented XL Airways France in its sale to X-Air Aviation Holding, an entity backed by the Swiss-American investment fund Beachside Capital. 
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    December 2024 Commentary

    SkyKick v Sky: UK Supreme Court Confronts Bad Faith in Trade Mark Applications

    DECEMBER 2024 Commentary

    CJEU Clarifies Copyright Protection for Software Variables

    April 2024 Alert

    UK Court of Appeal Diverges From EU Trademark Law

    March 2024 Alert

    UK Supreme Court Rejects Amazon's Trademark Infringement Appeal

    May 2022 Commentary

    Trademark Revocation Actions for Non-Use: Who Bears the Burden?

    July 2018 Commentary

    CJEU Confirms that Louboutin's Red Outer Sole Can Be a Trademark

    October 2017 Commentary

    European Union Trademark Reform—Further Changes Have Arrived

    April 2016 Commentary

    Overview of European Trade Mark Law Reforms

    July 2015 External Publications

    INTA Bulletin, Vol. 70 No. 12

    July 1, 2015 External Publications

    Lending Color to Trademarks: Protection and Enforcement of Color Marks in the U.S., EU, China and Japan, Reprinted with permission from INTA Bulletin Vol. 70 No. 12, July 1, 2015, Copyright 2015 International Trademark Association

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    Additional Speaking Engagements

    • February 12, 2014
      Legal Protection of Product Designs in Germany and the European Union, University of Washington, School of Law, CASRIP Institute
    • August 2, 2012
      Keywords in Advertising, a US and European Perspective
    • October 2010
      Die Haftung von Internet-Verkaufsplattformen für Markenverletzungen nach Deutschem und US-Recht, (The Liability of Internet Sales Platforms for Trademark Infringements under German and US Law), Markenverband
    • 2008
      Trademarks and Advertising: Fair Use and Parody, INTA Annual Meeting
    • June 2007
      Tipps für Recherchen (Tips for Research), Guidance for Trademark Availability Searches Workshop, INTA Forum for Paralegals
    • 2005
      International Advertising Law Presentation
    • 2001
      The Implementation of the European Views on E-Commerce and Internet Domains - A German Perspective on Key Issues, EYBA meeting

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