Sören Dahm

Lawyer

VITA

My name is Sören Dahm. I am specialised in intellectual property rights and partner of Kather Augenstein since more than 10 years. During my studies and legal clerkship, I worked for several years in a patent law firm in Düsseldorf and where I gained a deep insight into all areas of intellectual property law.

The focus of my work is on the enforcement of technical property rights. My clients include international corporations as well as medium-sized companies and individual inventors. I have gained practical experience in the fields of automotive, telecommunications, network security technology, chemistry, mechanical engineering and medical technology from more than 100 infringement proceedings I have conducted.

In addition to patent law, I also represent clients in contentious trademark, design and competition law proceedings. Based on my many years of experience, I am convinced that I can find the right solution for your case as well.

My assistant is Daniela Kortmann.

Our focus is on the interest of our client in every case.

Sören Dahm, Partner

In addition to my work in legal advice and litigation, I regularly publish under various trade media. Together with my partner Christopher Weber, I work for The Intellectual Property Society of Australia and New Zealand (IPSANZ) as a correspondent for Germany. I am a member of the German Association for the Protection of Intellectual Property (GRUR) and the VPP.

Representative cases
  • Representation of a start-up in a vindication dispute concerning 11 patent families in the field of electrodynamic direct drives
  • Representation of a US company against several competitors for patent infringement in the field of network security technology
  • Representation of a leading German chemical company in a dispute with a competitor concerning whipping agents for desserts

  • Representing a tire manufacturer in a suit for infringement of a Community design for a truck tire tread (Regional Court of Hamburg BeckRS 2018, 47799 – Reifenprofil II)

  • Participation in a competitive process regarding competitive originality and imitation of natural-stone cobblestones (Higher Regional Court Cologne GRUR 2017, 1159 – Natursteinpflaster)

  • Preliminary injunction proceedings for a major German automotive supplier, obtaining ex-parte injunctive relief for patent infringement by resolution

  • Infringement proceedings for breach of 5 different intellectual property rights at two court venues – dental engineering / chemical

  • Preliminary injunction proceedings for a luxury sports car manufacturer, obtaining injunctive relief for trademark infringement by resolution

  • Series of patent infringement lawsuits for infringement of 12 different standard essential patents at two court locations – mobile phones / LTE

Publications

  • German Federal Court of Justice clarifies requirements for the protectability of shape marks – Federal Court of Justice, decision dated 23 July 2020, I ZB 42/19 – Intellectual Property Forum – IPSANZ, Issue 124 [EN] (together with Christopher Weber)

  • Likelihood of confusion in the case of marks with a weak distinctive character, Federal Patent Court, Decision dated 22.1.2021 – 29 W (pat) 524/18 (DPMA), GRUR-Prax 2021, 139
  • The use of a trademark in such a way as to preserve the rights, Federal Patent Court, Decision dated 31.8.2020 – 26 W (pat) 2/18, IPRB 2021, 9-10

  • Update Germany 2021 – What’s New in German Intellectual Property Law? Intellectual Property Forum – IPSANZ, Issue 123 [EN] (together with Christopher Weber)

  • Change in Jurisdiction on Territoriality? Regional Court of Dusseldorf on Patent Infringement if the steps of a Patented Method are not all done in a Single Country but in Multiple Countries, OLG Düsseldorf, decision dated 28.07.2020, 4a O 53/19, Intellectual Property Forum – IPSANZ, Issue 122 [EN] (together with Christopher Weber)

  • German Federal Court of Justice increases the requirements for FRAND-objection, Report on the Federal Court of Justice’s decision in Sisvel v Haier, Intellectual Property Forum – IPSANZ, Issue 121 [EN] (together with Christopher Weber)

  • Is the famously stringent German Patent Act about to be softened?, Intellectual Property Forum – IPSANZ, Issue 120 [EN] (together with Christopher Weber)

  • Double Identity – Not as identical as you think? Federal Court of Justice discusses the criteria for trademark use of a model name as an indication of origin, FCJ, decision dated 11.04.2019, I ZR 108/18, Intellectual Property Forum – IPSANZ, Issue 119 [EN] (together with Christopher Weber)

  • Federal Court of Justice clarifies criteria for right of private prior use, FCJ, decision dated 14.05.2019, X ZR 95/18, Intellectual Property Forum – IPSANZ, Issue 118 [EN] (together with Christopher Weber)

  • Federal Court of Justice clarifies criteria in determining the protected subject matter of a registered design, FCJ, decision dated 20.12.2018, I ZB 25/18 and I ZB 26/18, Intellectual Property Forum – IPSANZ, Issue 117 [EN] (together with Christopher Weber)

  • Federal Court of Justice clarifies criteria in determining the protected subject matter of a registered design, FCJ, decision dated  20.12.2018 (I ZB 25/18 und I ZB 26/18), IPSANZ, Issue 117, September 2019 [EN] (together with Christopher Weber)

  • Courts clarify Art. 16 of EC Regulation No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks, Intellectual Property Forum – IPSANZ, Issue 116 [EN] (together with Christopher Weber)

  • The territorial scope of the risk of confusion of a multi-syllable union sound mark, Federal Supreme Court Judgment of 12.07.2018 – I ZR 74/17, IPRB 2019, 29

  • European Court of Justice (“CJEU”) clarifies interpretation of Art. 8(1) of Designs Directive, CJEU, deiciosn dated 08.03.2019 – C-395/16 – DOCERAM, Intellectual Property Forum – IPSANZ, Issue 115 [EN] (together with Christopher Weber)

  • HRC Dusseldorf refuses to follow FCJ regarding cease and desist obligations in German patent cases, OLG Düsseldorf, decision dated 30.04.2018, I-15 W 9/18 – Rasierklingeneinheiten, Intellectual Property Forum – IPSANZ, Issue 114, December 2018 [EN] (together with Christopher Weber)

  • Legal consequences of successful FRAND-objection, GRUR-Prax, 03/2017, 67-69

Lectures
  • The Infringement Process, VPP Seminar, 13.10.2022 to 15.10.2022 (co-lecturer Dr Christof Augenstein)

Mr. Dahm is calm in communication, but extremely precise in his approach. He only needs one argument to dig the water out of the opponent in the oral hearing.

Legal 500 EMEA, Ranking 2022