Verena von Bomhard

Verena von Bomhard has been involved with EU trade marks from the very beginning, having founded her former firm’s office in Alicante in early 1996. She has extensive experience in all matters relating to prosecution and enforcement of EU trade marks and designs, in handling proceedings before the General Court and the Court of Justice of the European Union in Luxembourg, in multijurisdictional trade mark clearance, portfolio management, as well as advising on complex IP conflicts in the European Union, on effective dispute settlement strategies, and on the protection and enforcement of non-traditional marks.

Verena holds a doctorate in law from the University of Munich. She is co-editor of two leading commentaries (in German and English) on EU Trade mark Law, has authored and co-authored numerous books and articles on EU trade marks and design, and is a frequent speaker on these topics. She teaches European trade mark law at the Magister Lucentinus – the IP Master Program of the University of Alicante.

A very active member of INTA, Verena has been on the Board of Directors, has co-chaired an Annual Meeting, has been chair of the Programs Committee, OHIM Subcommittee (twice) and the Trade mark Office Practices Committee, and currently serves on the Trade mark Reporter Committee. She received the 2014 Volunteer Service Award for the Advancement of Trade mark Law from INTA. She is also a member of the Expert Committee for Trade mark and Competition Law of GRUR, as well as of ECTA, PTMG, and ASIPI.

Apart from her native German, Verena is fluent in English and Spanish and can read French and Italian.

Verena also enjoys life beyond trade marks. If you want to read more about her, you may enjoy the spotlights and interviews published in the INTA Bulletin in 2008 and 2014 and her interview with James Nurton of MIP published in Alicante News in 2007.

Education

1994: Doctorate Degree s.c.l. and Bar admission

1985 – 1989: Ludwig Maximilian Universität Munich (law)

1983 – 1985: Universities of Würzburg, Salamanca and Heidelberg (languages, art history)

Work Experience

Since 2015:   BomhardIP

1999 – 2014: Boesebeck Droste, then Lovells, then Hogan Lovells, Partner

1994 – 1998: Droste, then Boesebeck Droste Rechtsanwälte, Associate

Publications

SELECTION – ENGLISH

2021 Wrap up – EUTMs in Luxembourg, Kluwer Trademark Blog, December 2021

MONOPOLY et al. – News from the EU General Court January – April 2021, Law, Lore & Practice, PTMG, May 2021

Gömböc—stand upright!—CJEU on the functionality of shapes, Journal of Intellectual Property Law & Practice, Volume 15, Issue 8, August 2020, Pages 580–581, Oxford Academy, Published on 24 July 2020

Gömböc—stand upright!—CJEU on the functionality of shapes, Law, Lore & Practice, PTMG, June 2020

Verena von Bomhard (contributor), in: Annette Kur / Martin Senftleben – European Trade Mark Law, Oxford University Press, 2017 (here)

Unregistered Trademarks in EU Trademark Law, with A. Geier, INTA Trademark Reporter, May-June, 2017 Vol. 107 No. 3

Charles Gielen, Verena von Bomhard (co-editors, co-authors): 2nd edition Concise European Trademark and Design Law, 2016

Co-editor of Kluwer Trademark Blog (here)

Charles Gielen, Verena von Bomhard (co-editors, co-authors): Concise European Trademark and Design Law, 2011 (here)

INTA Oppositions Guide (regularly updated) – EUTM chapter (here)

Licences in OHIM Practice, with Hugh O’Neill and Anat Paz – INTA Trademark Reporter May-June, 2009, Vol. 99 No. 3

Dormant Trademarks in the European Union — Swords of Damocles? – INTA Trademark Reporter September-October, 2006 Vol. 96 No. 5

Sweet & Maxwell’s European Litigation Handbook (Chapter on Community Trademark), 2002

 

SELECTION – GERMAN

SKY v SKYKICK, Sic! online, Published on 7 August 2020

Markenrecht (Albrecht / Kur / v. Bomhard), Munich 2017 – Also: Beck’scher Online Kommentar Markenrecht, frequent updates

Nicht eingetragene Markenrechte (with A. Geier), MarkenR 2016, p. 497 et seq.

Beck’scher Online Kommentar Markenrecht (Albrecht / Kur / v. Bomhard), Múnich 2014

Zwischenrechte im europäischen Markenrecht, MarkenR 2008, 291 ff.

Die Gemeinschaftsmarke (v. Mühlendahl / Ohlgart / v. Bomhard), Munich 1998

Numerous smaller contributions to various publications

Recent Speakings Engagements

2021, June – International Law Talk Podcast: “Bad Faith in European Trademark Law” – here

2019, March – EUIPO Education Programme, Alicante, Spain [Proceedings before the GC and CJEU]

2018, October – IPIC 92nd Annual Conference, Vancouver, Canada [Trademark Trolls]

2018, September – EUIPO Education Programme, Alicante, Spain [Characteristics of the EUTM]

2018, June – EUIPO Webinar [Unitary character of EUTM]

2018, April – AIPPI Annual Conference, Tel Aviv, Israel [Designs and Trademarks in the EU]

2018, February – Frankfurter Forum Designrecht, Frankfurt, Germany [3D Marks and Designs in the EU]

2018, February – Markenrechtstagung 2018, Deutsche Richterakademie, Trier, Germany [The New EU Trademark Law]

2018, February – ECTA Round Table, Alicante, Spain [Unitary character of EU Trademarks]

2017, August – INGRES Workshop, Ittingen, Switzerland [Reputation in EU Trademark Law]

2017, June – IP Case Law Laboratory at EUIPO, Alicante, Spain

2017, May – Bereskin & Parr Webinar “Expanding your Brand in Europe: A Primer for Canadian Businesses”

2017, January – EUIPO Tertulia: Onus of Proof in EUIPO proceedings, Alicante, Spain

2016, November – XI. Conference of the EUTM Courts Alicante, Alicante, Spain

2016, June– Heidelberg Akademie, Munich, Germany [The new EU Trademark Regulation]

2016, June – “Trademark and design breakfast” at NIPO, Oslo, Norway [EU Trademark Procedures]

2015, December – ECTA Workshop on the EU Trademark Reform

2015, December – CLA Lecture on the EU Trade Mark Reform, London, United Kingdom

2015, November – XIX Congreso de ASIPI, Cartagena de Indias, Colombia [What to expect from the Madrid Protocol]

2015, March – WIPO, SCT – Side Event Nation Branding, Geneva, Switzerland [Nation Branding, A practitioner’s perspective]

2015, August – INGRES Workshop, Ittingen, Switzerland [Practice of EU Courts on Distinction between Facts and Law]

Spotlights & Interviews

2017 Diez de diez: Verena von Bomhard

2014 INTA Bulletin Interviews with Award Winners

2008 INTA Bulletin Member Spotlight

2007 James Nurton Interview in Alicante News

Contact



Vcard


Rankings & Awards

2024 WTR 1000 (Gold Ranking: “Verena von Bomhard is a globally renowned leader with more than 20 years’ experience in EU IP law. She has authored two of the leading commentaries on the subject and knows virtually all there is to know about the EUIPO.”) – Social card here


2024 Best Lawyers in Spain – here


2023 Best Lawyers in Spain – here


WIPR Leaders 2023 Spain – here


MIP IP Star 2023 – here


Managing IP´s Top 250 Women in IP 2023 – Spain


2023 WTR 1000 (Gold Ranking: “Verena von Bomhard is well known and respected in the IP field. Adored by peers and clients alike, she has an excellent track record in EU-related work.”) – Social card here


2022 WTR 1000 (Gold Ranking: “The insightful and bold Verena von Bomhard is a role model and mentor to many in the industry. Her breadth of knowledge and experience is virtually unmatched”) – Social card here


2022 Best Lawyers in Spain


2021 WTR 1000 (Gold Ranking: “Verena is an absolute star of the trademark world and a leading authority on the subject of EU trademarks.”) – Social card here


2021 Chambers Global 2021 (PDF)


Who’s  Who Legal: Thought Leaders: Global Elite 2021 (PDF)


WTR Global Leaders 2020 (Private practice) – Spain


Managing IP´s Top 250 Women in IP 2020 – Europe, Middle East & Africa


2020 WTR 1000 (Gold Ranking: “Verena von Bomhard sits at the top table of global trademark practice leaders and is famous for her encyclopaedic knowledge of EU trademark and design law. Her strategically sharp mind, outstanding advocacy skills and international network, make her the essential choice for complex multi-jurisdictional matters.”) – Social card here


Acritas Stars Nomination 2020: “She’s sharp as a tack, knows her subject matter well, always offers very timely and brilliant advice, and she’s worked with us a long time so we have a very long-standing collaboration with her. She’s a brilliant litigator, very precise in her opinions, her results are stellar, and she is able to come up with creative solutions for us. We really love working with her.”


Best Lawyers 2020


WIPR Leaders 2020 Spain


WIPR influential Women in IP 2019


Who´s Who Legal: Trademark 2019 – Spain (PDF)


WIPR Leaders 2019 Spain


2019 WTR 1000 (Gold Ranking: “Verena von Bomhard is the ensemble talisman. “She is highly adept at all aspects of trademark work and an awesome litigator with exceptional written and oral advocacy skills. She provides legal advice that can be easily implemented in a business context.”)


2019 Chambers and Partners: “Interviewees recognise Verena von Bomhard of BomhardIP as “a very influential person” thanks to her extensive experience in the prosecution and enforcement of EU trade marks and designs.”


2019 Client Choice: Winner of the 2019 Client Choice award for Trademarks in Spain


Who’s Who Legal: Thought Leaders: Global Elite 2019 (PDF)


MIP IP Star 2018/19


2017/2018 Legal Awards CorporateLiveWire  – Trademark Lawyer of the year (PDF)


WIPR Leaders 2018 – Spain (”Verena is an outstanding European trademark lawyer. She provides excellent practical and substantive advice to her clients and is cost effective and great to work with.”)


2018 WTR 1000 ( Gold Ranking; “The heart of the practice”)


2017 Who´s Who Legal – Trademarks – Spain


Chambers Europe 2017 (“Verena von Bomhard is very experienced and doing great work.” Her practice spans all aspects of trade marks, from strategy and filing to enforcement and disputes. She frequently appears in Luxembourg at the ECJ and General Court.)


WIPR Leaders 2017 – Spain


2017 Legal Awards: Best IP Dispute Resolution Practice – Spain & EU Trademark Enforcer of the Year – Spain


2017 WTR 1000 (Gold ranking; Numerous interviewees hail “creative problem solver” Verena von Bomhard as the world’s leading EU trademark expert)


WIPR Leaders 2016 – Spain


The Top 250 Women in IP (2016) – Managing IP (here)


MIP IP Star 2016


2016 WTR 1000 (Gold ranking; “nothing short of phantastic”)


2014 WTR 1000 (Gold ranking; “a simply brilliant strategic adviser and highly experienced in litigation before the European courts”)


MIP IP Star 2014


INTA 2014 Volunteer Service Award