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My main areas of practice
My advice and representation of companies from Europe, the USA and Canada covers, for example, the development and implementation of global trademark and design strategies, worldwide trademark and design searches, the registration and administration of trademarks and designs, the enforcement of their IP rights in court proceedings, as well as the drafting and negotiation of license agreements and all related activities.
I have particular expertise and experience in the enforcement of trademarks, designs, copyrights and competition law claims - especially in the context of the following proceedings:

  • Infringement proceedings before the German ordinary courts
  • Proceedings before the European Intellectual Property Office (EUIPO), the Court of Justice of the European Union (ECJ), the German Patent and Trademark Office (DPMA), and the German Federal Patent Court (BPatG)
  • Domain dispute proceedings before the WIPO Arbitration and Mediation Center and the ADR Court for .eu domains
  • Border seizure proceedings involving plagiarism and parallel imports

I advise my clients in English and German.

Recommendations
I am recommended by various professional magazines and platforms:

  • Recommendation in the JUVE Handbook of Commercial Law Firms 2021/2022 as an expert in trademark and competition law.
    • Quote: "Super in IP, always committed and available.", client.
  • Recommendation by World's Leading Trademark Professionals (WTR1000) 2022 as an expert in trademark law in Germany (silver level).
    • Quote: "Matthias Berger is described by foreign colleagues as 'one of the most commercial and responsive attorneys on the market.' Having studied in the United States, he is well versed in North American law and is a passionate advocate in intellectual property and unfair competition litigation as well as domain name disputes."
  • Recommended in the 2022 annual rankings of Best Lawyers (Intellectual Property Law, Germany) and Who's Who Legal (Global Leader and National Leader Germany, Trademarks).
Publications
I am one of the authors of the English-language standard commentary on the "EU Trade Mark Regulation" (2nd edition 2018, C.H.BECK / Hart Publishing / Nomos).

Personal Engagement
Since 2009, I have been tutoring students from all over the world in courses such as "Advanced Course on Trademarks, Industrial Designs and Geographical Indications" and "Intellectual Property Management" at the WIPO Academy.

I am also involved in the American Bar Association (ABA), the International Trademark Association (INTA), the San Francisco Intellectual Property Law Association (SFIPLA), the German-American Lawyers Association (DAJV) and the American Club of Hamburg.

I am currently a liaison to EUIPO and a member of the CLE Board of the ABA Intellectual Property Law Section and a member of the Trademark Office Practices Committee of INTA.

My background
I graduated from the Faculty of Law at the University of Leipzig in 1999. After my legal clerkship, I completed the graduate program "United States Legal Studies with specialization in Intellectual Property Law" at Golden Gate University, San Francisco (USA) in 2002 and received a Master of Laws (LL.M.) degree with honors.

Prior to joining Fieldfisher, I worked for one of the leading German IP boutiques for nine years.
 

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