Marc F-XGroebl

Partner

(T) 49.89.20.60.42.200

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), INTA (member of the European Amicus CuriaeSubcommittee) and the German-American Lawyers' Association (DAJV).

Experience

SAP acquires Qualtrics for $8 billion
Jones 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 NanoTribe regarding copycat video game on the AppStore
Jones Day obtained an ex parte preliminary injunction from the District Court of Berlin on behalf of Madbox SAS, a French video game developer, against NanoTribe GmbH, a German video game developer, for copyright infringement as part of a worldwide dispute between the parties.

Cylance develops worldwide trademark portfolio for cybersecurity software
Jones 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 billion
Jones 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.

Asmodee Group acquires Mayfair Games and English language rights to Catan brand
Jones Day advised The Asmodee Group in its acquisition of Mayfair Games, Inc. and the English language rights to the Catan brand.

GfK sells animal and crop health division
Jones Day is representing 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.

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 Aviation
Jones Day represented XL Airways France in its sale to X-Air Aviation Holding, an entity backed by the Swiss-American investment fund Beachside Capital. 

Speaking Engagements

  • May 30, 2017Legal Protection, Licensing and Enforcement of Product Designs in Germany and the European Union, Keio University.
  • February 12, 2014Legal Protection of Product Designs in Germany and the European Union, University of Washington, School of Law, CASRIP Institute
  • August 2, 2012Keywords in Advertising, a US and European Perspective
  • 2008Trademarks and Advertising: Fair Use and Parody, INTA Annual Meeting
  • June 2007Tipps für Recherchen (Tips for Research), Guidance for Trademark Availability Searches Workshop, INTA Forum for Paralegals
  • 2005International Advertising Law Presentation
  • 2001The Implementation of the European Views on E-Commerce and Internet Domains - A German Perspective on Key Issues, EYBA meeting
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