Contributed By SZA Schilling, Zutt & Anschütz
German trade-mark law establishes different types of trade marks. Registered trade marks are the most commonly used. However, several unregistered signs – such as unregistered trade marks which have acquired protection by virtue of extensive use, company designations (eg, company names), domains and work titles – and indications of geographical origin are also protected. As Germany has a civil law system, rights in such marks are based on statutory law. However, beyond that, there is a variety of case law specifying and implementing the statutory law. It is worth noting that although this case law is not formally binding, in practice it has strong authority.
Provided that the sign is appropriate and distinctive, any type of perceptible sign might be protected as a trade mark. Consequently, besides word marks and figurative marks (which are the most common trade mark types) there are also combined word/figurative marks, sound marks, olfactory (smell) marks, colour marks, movement marks, certification marks, collective marks, slogans and three-dimensional marks. Combinations of different trade mark types are also possible: for example, three-dimensional signs with a word or image component. By contrast, ideas or business concepts are not eligible for trade mark protection.
Due to recent changes of the German Trade Mark Act (the Markengesetz or MarkenG, hereinafter referred to as the 'TMA'), imposed by the Trade Mark Modernisation Act (Markenrechtsmodernisierungsgesetz), which implements the requirements of the EU Trademark Directive 2015/2436 and is effective from January 2019, the registration of exceptional trade mark forms (eg, olfactory marks) has now become much easier, since the trade mark only has to be clearly and precisely defined in the registration process. Before, in contrast, a trade mark only could have been registered if it could be depicted graphically.
In this context it is also worth mentioning the introduction of certification marks to the set of signs that may be registered, which is also a result of the upcoming changes effected by the Trade Mark Modernisation Act. Certification Marks may protect quality labels which reference significant characteristics of the labelled good. There must be a statute in which the owner of the certification mark in question has to specify the terms of its use. Since the owner of the certification mark acts as a neutral guarantor of the particular quality of the labelled goods, they are excluded from using it themselves.
Certification marks are not to be confused with collective marks, which are owned by certain legal entities (associations) for their members. In general, only the members of the association and the association itself are allowed to use the collective mark as an indication of origin, quality or other significant characteristics of their products or services (eg, the 'Wollsiegel' (wool seal) for products made of pure new wool).
As mentioned in 1.1 Types of Trade Marks, above, trade mark rights may accrue by virtue of registering a trade mark. However, unregistered trade marks may also be protected.
In this regard, please see 1.7 Registration Requirements and 1.11 Registration Procedure of a Trade Mark, below.
The German trade mark register is administered by the German Patent and Trade Mark Office (the Deutsches Patent- und Markenamt, located in Munich, hereinafter referred to as the 'DPMA'). The register, which contains any trade marks applied for, registered, refused or cancelled, is freely available online in German and English (see https://register.dpma.de/DPMAregister/Uebersicht?lang=en). Registrations of trade marks are also published in the official electronic Trade Mark Journal (Markenblatt) which is issued weekly (see https://register.dpma.de/DPMAregister/blattdownload/marken). Not to be confused with the trade mark register are the German commercial register (Handelsregister), in which companies (including company names) are listed, and the privately organised domain name register for the top-level domain '.de'.
All kinds of trade marks and other registered signs are published in the German Trade Mark register. There are not different types of register in Germany.
Before filing a trade mark application, it is usual practice to search for prior or colliding trade marks. In particular, the trade mark register should be searched beforehand.
Protection as a trade mark may accrue from:
An application to enter a trade mark in the register must be submitted in paper form or electronically to the DPMA and must contain the following:
As a general rule, any company, partnership and any private individual can apply for a trade mark for any type of goods or services. A business establishment is not required.
The formal requirements for submission of a trade mark application, according to the different trade mark types, are stipulated in detail in the German Trade Mark Regulation (Markenverordnung).
As a general rule, any company, partnership and any private individual can apply for a trade mark for any type of goods or services. A business establishment is not required.
In this regard, please see 1.1 Types of Trade Marks, above.
The right to a name of an individual or an entity is protected under the German Civil Code (the Bürgerliches Gesetzbuch or BGB). This means that if the right of a person to use a name is disputed by another person, or if the interest of the person entitled to the name is injured by the unauthorised use of the same name by another person, the entitled person may require the other to remove the infringement.
Moreover, company designations and work titles enjoy protection as commercial designations under the TMA. Company designations are signs used in the course of trade as a name, company name or special designation of a business operation or an enterprise. Business symbols and other signs intended to distinguish the business operation from other business operations which are regarded as symbols of the business operation within an involved trading community will be deemed equivalent to the special designation of a business operation.
Furthermore, indications of geographical origin are eligible for protection under the TMA, which features some special provisions for such indications.
Internet domains can be registered as a trade mark if they meet the general requirements for trade mark registration. Internet domains can also be protected as a business designation under the TMA if the general requirements for such protection are met.
After receiving the application and fees, which must be paid within three months of filing the application, the DPMA examines whether the application meets the formal requirements and whether there are absolute grounds for refusal of the registration of the trade mark. If the fees are not paid in due time, the application is deemed withdrawn.
If all the requirements are met, the trade mark is registered. The registration of the trade mark is published in the official electronic Trade Mark Journal. On special request, and subject to payment of an additional fee, the application process can be accelerated.
Multi-class applications are allowed. The application fee for up to three classes is EUR300 (EUR290 if the application is made electronically). The class fee upon filing application for the fourth class and for each additional class is EUR100.
German trade mark law does not require use of the applied trade mark in commerce as of the date of filing of the application. However, the TMA stipulates the 'compulsory use' of the trade mark for all goods and services for which the trade mark is registered. This means that the trade mark owner must assiduously use the trade mark in trade for all goods and services for which it is protected in Germany in order to maintain the right to the trade mark. If the trade mark is not used within a continuous period of more than five years, the trade mark may be cancelled upon request of any third party. For details, please see 1.22 Use in Commerce Prior to Registration, below.
German trade mark law allows the registration of series marks (being part of a trade mark family with identical components), if all applications have the same applicant and the same proposal for the leading class.
The registration procedure is usually completed within about seven to eight months. It may take longer if the DPMA requires further information from the applicant. The application will be examined faster upon request and subject to payment of a (modest) additional fee.
It is at the applicant's discretion to decide whether to file the application with or without the help of a patent attorney or of an attorney-at-law. However, persons who do not reside in Germany must appoint an attorney in Germany or an attorney established in the EU to act on their behalf in the registration proceedings.
Absolute grounds for refusal by the trade mark office to register a trade mark are:
If absolute grounds for refusal are identified during the application examination process, the applicant will be notified in writing and will have the opportunity to make a statement. This statement will be examined. If it does not overcome all deficiencies stated in the notification, a decision will be taken to refuse the application (or, possibly, part of the application). In this case, the applicant has the opportunity to have this decision reviewed by filing a request for reconsideration (Erinnerung) or appeal proceedings (Beschwerde). For details, please see 4.5 Courts with Jurisdiction to Hear Trade Mark Matters, below.
The DPMA does not check the existence of prior rights. Owners of prior rights can initiate opposition proceedings following the registration of the trade mark. For details please see 3 Opposition Procedure, below.
Third parties do not have the right to participate during the registration procedure. After the publication of the trade mark in the official electronic Trade Mark Journal, owners of earlier rights have the opportunity to object to the registration. For details, please see 3 Opposition Procedure, below.
After the DPMA has received the application, it is no longer possible to alter the trade mark applied for (even if the information provided is incorrect), except where the amendment relates to the correction of errors of wording or obvious mistakes. However, the applicant can withdraw the application at any time or restrict the contained list of goods and services.
In particular, design marks cannot be updated or refreshed in the course of time. Therefore, a new design usually requires a new trade mark application.
A trade mark application constitutes a right conferring prospective entitlement, which can be assigned and licensed.
The registrant can file an objection to the orders of the DPMA and can also file an appeal to the German Federal Patent Court (Bundespatentgericht).
A trade mark is required to be consistently used for the goods or services in respect of which it is registered unless there are legitimate grounds for non-use. The requirements for serious use of trade mark are as follows:
Important indicators for the seriousness of the use are the amount of marketing expenditure concerning the trade mark and the revenue created by the trade mark. After expiry of a grace period (five years, beginning with the expiry of the opposition period or the completion of an opposition proceeding) a trade mark which is not seriously used may be cancelled upon request of any third party.
An applicant may divide an application by declaring that the application for the trade mark will continue to be dealt with thenceforth as a divisional application for the goods and services listed in the declaration of division. In this case, the seniority of the original application is to be retained for each sub-application. The application documents required (see the first part of 1.7 Registration Requirements, above) are to be submitted for the divisional application. If the application documents are not submitted within three months of receipt of the declaration of division, or if the fee in accordance with the Patent Costs Act (Patentkostengesetz) for the division proceedings is not paid within this period, the divisional application is deemed to have been withdrawn. The declaration of division cannot be revoked.
The term of protection of a registered trade mark commences on the date of application and ends ten years later on the same day, and in the case of trade marks registered before the Trade Mark Modernisation Act was implemented, on the last day of the month corresponding in name to the month in which the date of application falls. The duration of protection may be extended by terms of ten years each, potentially ad infinitum. The renewal of the trade mark is subject to payment of a renewal fee and, if the renewal is requested for goods and services in more than three classes, also subject to payment of an additional class fee for each further class. A registration may also be extended partially for only some of the classes and goods protected by the respective trade mark.
Under the TMA, the proprietor of a trade mark or of a commercial designation is not entitled to prohibit a third party from using the trade mark or the commercial designation for goods which have been put on the market under this trade mark or this commercial designation by him or her or with his or her consent in Germany, in any other EU member states or in any other contracting party to the Agreement on the EEA. This does not apply if the proprietor of the trade mark or of the commercial designation opposes the use of the trade mark or of the commercial designation for legitimate reasons, in particular if the condition of the goods has been changed or impaired after being put on the market.
The TMA shall be applied mutatis mutandis to international trade marks registered in accordance with the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as the 'MMA') and in accordance with the Madrid Protocol of 27 June 1989 Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as the 'PMMA').
Under the TMA, the application for the international registration of a trade mark entered in the register in accordance with the MMA or PMMA is to be submitted to the DPMA. Internationally PMMA-registered trade marks are to be examined for absolute grounds for refusal in the same way as German trade marks.
In this regard, please see 1.19 Revocation, Change, Amendment or Correction of an Application.
Design marks cannot be updated or refreshed in the course of time. Therefore, a new design usually requires a new trade mark application.
There is no need for a trade mark owner to use a special symbol (eg, TM or ®) to denote that a trade mark is registered or existing. However, the use of such a symbol might have a positive effect with regard to the trade mark's distinctiveness in the relevant public in cases in which the trade mark has a rather descriptive character.
Trade marks may generally be freely assigned from one owner to another. There are no formal requirements for such an assignment and no approval from the DPMA is required. The (pending) application for the registration of a trade mark as such may also be freely transferred.
A trade mark is assigned by means of a contractual agreement. The further conditions of the agreement are subject to negotiation between the parties. The assignment agreement is not subject to any specific formal requirements; however, it is strongly recommended that it be concluded in writing for the purpose of preservation of evidence.
The parties of a trade mark assignment are under no obligation to give notice of the change of the owner of the trade mark to the DPMA (which administers the German trade mark register). However, it is recommended that the new owner have the register changed appropriately as the TMA contains a refutable presumption that the registered owner of a trade mark is the actual owner of the trade mark (section 28, paragraph 1 of the TMA). In particular, if the new owner needs to defend the trade mark, it is considerably easier to raise claims when the new owner is also the registered owner. However, the new owner may have the change of ownership recorded with the DPMA at any time.
Trade marks are part of the owner's property and may be subject to rights in rem, assigned by way of security, and may be levied in execution. Rights in rem and actions under levy in execution may be recorded in the German trade mark register. However, it is worth noting that such a recording is only declaratory and does not have a legal effect.
There are no formal requirements for licence agreements on trade marks. Any trade mark, whether registered or not, may be the subject of a licence agreement. The scope (eg, exclusive, non-exclusive, all or part of the services and/or products for which the trade mark is protected, limited in time or perpetual) of the respective licence and further licensing conditions may be freely negotiated between the parties.
A trade mark is licensed by way of contractual agreement between the parties under German law. The further conditions of the agreement are subject to negotiation between the parties. In itself, a licence agreement is not subject to any specific formal requirements. However, it is strongly recommended that a licence agreement be concluded in writing for the purpose of preservation of evidence.
In the past, unlike in many other countries, registration of a licence in the German trade mark register was neither necessary nor possible. However, due to the TMA changes implemented by the Trade Mark Modernisation Act, from this time on a licence can be registered by request of the trade mark owner or the licensee and with consent of the other party. The same applies to the licence's lapse and any alteration. Such a registration might be useful if a licensee is authorised to exercise rights with regard to the trade mark. However, it is worth noting that such a registration is only declaratory and has no legal effect.
There are no reasons that a trade mark owner would not be able to grant a perpetual licence (see 2.5 Licensing Requirements or Restrictions, above).
There are no further validity requirements for granting a licence or making an assignment.
An opposition to a trade mark registration may be filed in writing within three months (not to be extended) of the publication of the registration of a trade mark on the grounds of a risk of confusion with a prior right, by the owner of such prior right. Such colliding rights may be a prior trade mark, trade mark application, commercial designation or indication of origin or other geographical indication.
The owner of a prior right may file an opposition (see 3.1 Legal Grounds and Timeframes for Filing an Opposition, above). According to German case law, an opposition may also be filed by a licensee. A representation of the opponent is not obligatory. The opposition fee amounts to EUR120 and must be paid within the deadline for filing the opposition. Otherwise, the opposition will be deemed as not having been filed. In the case of the involvement of an attorney, the attorney's fees depend on the individual agreement between attorney and client.
Although not mandatory, it is common practice (and to be recommended) to substantiate an opposition in detail. With regard to an opposition based on non-registered trade marks or commercial designations, the opposing party is required to provide evidence of the existence and ownership of such rights. Subsequently, the challenged party will be given the opportunity to respond to the opposition. The filing of a counter-statement is not mandatory. However, it is common practice that the applicant files a counter-statement describing the grounds on which the opposition should be rejected.
The opposition procedure is a summary proceeding (ie, it is not designed for difficult legal questions or complicated circumstances); there is usually no oral hearing, unless a participating party requests this and the DPMA deems an oral hearing to be useful for the resolution of the case. The owner of the challenged trade mark may respond to the opposition by raising the plea of non-use, provided that the earlier trade mark has been registered for at least five years since the opposition period has expired or an opposition proceeding was finished on the date of registration or priority of the contested registered trade mark. In this case, the opponent has to prove that the trade mark has been used within the relevant five-year period. The DPMA will render a decision on the opposition and either cancel the newly registered trade mark entirely or partly, or reject the opposition.
Owing to the changes entailed by the Trade Mark Modernisation Act, by request of both parties of an opposition proceeding the DPMA may grant the parties a so-called 'cooling-off period' of at least two months. In this time, the parties may seek an amicable solution for the case. If they fail, the proceedings will continue.
The decision rendered by the DPMA on the opposition may be challenged by the losing party by filing a request for reconsideration (Erinnerung) or an appeal (Beschwerde) to the German Federal Patent Court. Both remedies have to be filed within one month of the contested decision being served upon the respective party.
Whilst the request for reconsideration is only available against a decision rendered by a single member of the DPMA, an appeal may be filed in any case.
The decision process of the DPMA is rather slow; thus, appeal proceedings may easily go on for 12 months or more until a decision is rendered. If an appeal decision of the Federal Patent Court is appealed to the German Supreme Court (the Bundesgerichtshof, hereinafter referred to as the 'BGH'), the duration of the proceedings is considerably longer, being at least a further 24 months.
Out of court, the owner of a trade mark (or of any other sign protected under the TMA) may send a warning letter to the alleged infringer and demand a declaration of agreement to cease and desist from the respective trade mark infringement, threatening further legal action in the event of non-compliance. Furthermore, court actions (ie, preliminary injunctions or regular infringement proceedings) may also be brought before the competent court directly, ie, without sending a warning letter first. However, if in such a case the defendant immediately concedes the claims as justified, the trade mark owner usually has to bear the legal costs of the proceedings.
Before sending a warning letter, in particular in cases when the trade mark infringement is not clear-cut, the trade mark owner may also send an authorisation inquiry (Berechtigungsanfrage) to the (alleged) infringer first, requesting an explanation why he or she believes themselves to be entitled to use the respective trade mark. An authorisation inquiry, unlike a warning letter, contains neither a request to cease and desist from using the trade mark nor a threat of further legal action in case of non-compliance. It serves the purpose of substantiating the suspicion of a trade mark infringement and does not create the risk of a counter-action because of raising non-existing claims.
Infringement claims may not be raised on the basis of a trade mark application, but only by the owner of a registered or unregistered trade mark or any other sign protected under the TMA. Licensees might be entitled to raise infringement claims by respective consent of the trade mark owner.
With regard to trade mark infringements, the regional courts (Landgerichte or 'LG') have exclusive jurisdiction. Furthermore, in each German state there is a limited number of specialised regional courts which deal exclusively with trade mark cases. Thus, a trade mark-owner would have to review which regional court is competent for the alleged trade mark infringement in the respective case.
The courts dealing with trade mark infringement cases are bound by the decisions of the DPMA and the German Federal Patent Court only with respect to the (non-)existence of trade mark rights. Furthermore, an infringement court cannot completely deny the distinctiveness of an existing trade mark. However, with regard to all other legal questions (eg, likelihood of confusion) the court is free to decide.
In this regard, please see 4.9 Protection for Potential Defendants, below.
Trade mark matters have to be brought before specific regional courts in the first instance. In the second instance, the higher regional court (Oberlandesgericht or 'OLG') which is competent for the district of the regional court will decide on an appeal. An appeal decision of a higher regional court may be appealed on points of law only to the BGH and subject to certain conditions (see also 9.1 Special Provisions for the Appellate Procedure, below).
There are no prerequisites with regard to filing a lawsuit. However, an immediate filing of a lawsuit without sending a warning letter might have implications for the owner's obligation to bear the costs if the defendant immediately acknowledges the claims raised as justified (see also 4.1 Actions to Pursue Infringement, above).
Due to the exclusive jurisdiction of the regional courts in trade mark matters, the parties need to be represented by a lawyer.
The owner of a trade mark or any other sign protected under the TMA may file for a preliminary injunction against the alleged infringer if the prerequisite of urgency is met. This commonly requires that the action for preliminary injunction is filed not later than four weeks after the right-holder became aware of the potential infringement.
In defence against actions for a preliminary injunction, a potential defendant may proactively file a protective brief (Schutzschrift) substantiating the reasons why an alleged infringement does not exist. A potential defendant may also file an action for declaratory judgment of non-infringement. However, once the trade mark owner files a counter-claim based on the alleged infringement, there is no justified interest in the declaratory judgment, so that the potential defendant has to withdraw the application for declaratory judgment to avoid unnecessary costs.
German law (not only trade mark law) does not provide for disclosure or discovery. However, if the infringement is obvious, or the owner has already filed an infringement action against the infringer, the owner of a trade mark or a commercial designation has a special claim for disclosure of certain information against third parties who, in a commercial capacity, possessed infringing goods, used infringing services, rendered services which were used for the infringement or took part in any such action. In addition, during infringement proceedings, the defendant may be ordered to disclose specific information (eg, with regard to the revenue generated by the infringing goods or services) to the claimant as part of the infringement claims.
In order to initiate a lawsuit (preliminary and regular proceedings), a statement of claim has to be filed with a court competent for trade mark matters. The statement of claim has to specify the claims raised, and the facts and grounds on which such claims are based on have to be set out in detail. In a case where the statement of claim is based on more than one trade mark right, according to the most recent jurisprudence the claimant has to specify the order in which the rights shall be considered by the court. Apart from that, trade mark proceedings follow the applicable rules for non-intellectual property civil law proceedings.
Pleadings in trade mark cases may be supplemented on a case-by-case basis, in particular by claims based on unfair competition and/or tort law.
German trade mark law does not contain rules for representative or collective actions.
There are restrictions on the trade mark owner according to specific trade mark law rules and restrictions based on general principles under German civil law.
German trade mark law provides that the owner of a trade mark shall not be entitled to prohibit the use of a trade mark with a later time-rank to the extent that they have acquiesced, for a period of five successive years, to the use of this right whilst being aware of such use, unless the third party was acting in bad faith when applying for or acquiring any trade mark right. Furthermore, the trade mark owner is not entitled to prohibit any third party from using a trade mark in relation to goods which have been put on the market under that trade mark or commercial designation by the trade mark owner themselves or with their consent in the Federal Republic of Germany, an EU member state or the EEA. See also 5.4 Defences Against Infringement, below.
With regard to general civil law principles under German law, a trade mark owner may not assert rights where no legitimate interests can be shown and claims are raised solely in order to harm a third party. German unfair competition law may even prevent a trade mark owner from asserting their rights on the basis of an impediment ban, and/or in a case where a trade mark owner primarily intends to generate legal fees to be paid by third parties.
Necessary parties to an action for infringement are the trade mark owner as claimant and at least one third party as alleged infringer(s). A licensee may only bring an action with the approval of the trade mark owner. Furthermore, a non-licensee or any other party may only bring an action on behalf of the trade mark owner with the approval of the trade mark owner and based on their own legitimate interest with regard to the infringement claims raised.
Under German trade mark law, the filing of an action for infringement based on a trade mark application is not possible; such action is possible only on the basis of a registered or existing unregistered trade mark right or commercial designation. On a case-by-case basis, it might be possible to raise claims based on unfair competition or general law principles (eg, acting in bad faith) in order to take an action to stop infringement before the registration of a mark.
In order to determine a trade mark infringement due to the likelihood of confusion between the legitimate and a potentially infringing sign with regard to the origin of particular goods and services, the competing signs firstly need to be compared. The similarity of the signs is examined on the basis of established case law as to whether oral, conceptual or visual similarity exists. Secondly, a comparison of the goods and services for which the respective signs seek protection is conducted in accordance with principles established by case law. Finally, the degree of distinctiveness of the earlier trade mark has to be determined. By conducting an overall assessment of the similarity of the signs and of the goods and services and the distinctiveness of the earlier trade mark, it must then be established that these combined factors lead to a likelihood of confusion, including the likelihood of association with the earlier trade mark.
As the use of a sign as a trade mark is a necessary criterion for a trade mark infringement, the claimant has to establish that the defendant has actually used the sign in such a way and not otherwise (eg, purely descriptively).
With regard to use requirements, please see 1.22 Use in Commerce Prior to Registration, above.
As a defence, a defendant may invoke an earlier right to use a specific sign. A defendant may also refer to the use of their own name or address, or the use of the trade mark as an indication concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production or time of rendering a service, or other characteristics of the goods or services, as far as the use of the trade mark by a third party is necessary and in accordance with good-faith practices in industrial or commercial matters. Furthermore, a limitation or forfeiture of rights may be invoked as a defence. Forfeiture under trade mark law requires that, after the grace period (see 1.22 Use in Commerce Prior to Registration, above), the claimant has not used its trade mark for a period of five years. Besides, defences based on general civil law principles are applicable. In this regard, a defendant may argue that the claimant is acting in bad faith when asserting its trade mark rights due to a lack of a legitimate interest and/or due to the trade mark being acquired in bad faith. See also 4.13 Restrictions on Assertion of Rights by Trade Mark Owners, above.
Expert statements and/or surveys may be presented by the parties; surveys in particular may constitute a decisive factor for certain issues of a case. However, when presented by one of the parties, the courts will consider expert statements or surveys as part of a party's submissions only and decide whether it is necessary for the court to initiate its own survey or request an expert statement as evidence.
Trade mark infringement may constitute a criminal offence if it is conducted in the course of trade, and may be prosecuted in criminal law proceedings. The initiation of criminal investigations requires the trade mark owner to file a complaint with the public prosecutor, unless the trade mark infringer acts systematically for financial gains or as a member of a criminal organisation; in these cases the public prosecutor may initiate criminal investigations ex officio at any time upon becoming aware of a trade mark infringement. Such a criminal investigation may eventually lead to criminal proceedings against the alleged infringer. A trade mark owner may benefit from criminal investigations and proceedings by possibly having the authorities search the premises of the infringer, confiscating goods in a fast and efficient way and inspecting the files in order to gain information on the alleged infringer as preparation for a civil law action for damages.
In order to obtain border control actions against potential trade mark infringements, an application has to be filed with the customs authorities. Once such an application has been processed and control measures have been granted, the customs authorities will seize goods entering or leaving the territory of Germany or the EU which are found to be infringing. If the owner of the goods does not oppose the seizure within two weeks, the goods will be confiscated. In the case of an opposition by the owner of the goods, the trade mark owner is requested to obtain a court decision confirming an infringement of its trade mark. If infringement cannot be established, the trade mark owner may be liable for damages. If infringement is established, the trade mark will either be removed from the goods, if possible, or the goods will be destroyed.
Owing to the changes entailed by the Trade Mark Modernisation Act, an owner of a registered trade mark is also allowed to prohibit the transport of goods which will not be offered in the German market from third countries to Germany (ie, the mere transit), if these goods contain a trade mark which is identical to or in significant elements not distinguishable from the registered trade mark (see the new section 14a of the TMA). However, this prohibition right applies only as long as the owner of the goods cannot prove that the owner of the registered trade mark is not allowed to prohibit the sale of the goods in the country of destination of the transport.
German trade mark law contains numerous grounds for the revocation and cancellation of trade marks.
A trade mark can be subject to cancellation if it was registered in contravention of absolute grounds for refusal in the first place. Absolute grounds for refusal are related to the character of the respective trade mark as such, ie, irrespective of any third-party (trade mark) rights. To put it simply: a trade mark which contravenes any absolute ground of refusal is, generally, not eligible for trade mark registration. For details, please see 1.15 Refusal of the Registration of a Trade Mark, above.
Furthermore, a trade mark may be cancelled if it was registered contrary to relative grounds for refusal. In contrast to absolute grounds for refusal (see the preceding paragraph), relative grounds for refusal result from the relation of the respective trade mark to earlier pending third-party trade mark registrations and/or earlier registered or unregistered third-party trade marks or other earlier rights. Consequently, a cancellation for relative grounds for refusal is not possible if the owner of the respective earlier right has consented in the registration of the trade mark before the application for cancellation was filed.
Relative grounds for refusal apply to trade marks which:
German trade mark law does however contain several exceptions to the possibility of cancellation of trade marks for contravention of relative grounds for refusal. For example, a younger trade mark can only be cancelled due to a colliding earlier well-known trade mark or commercial designations which have an established reputation, if those earlier rights are already well known in respect of the German trade mark law (see 1.7 Registration Requirements, above) on the date which is applicable for the seniority status of the younger trade mark.
Furthermore, a cancellation for contravention of relative grounds for refusal is not possible if the earlier trade mark could itself have been cancelled on the date of the publication of the registration of the younger trade mark because of revocation or contravention to absolute grounds for refusal (see 1.15 Refusal of the Registration of a Trade Mark, above).
Moreover, a trade mark may be revoked at any time as a result of a waiver by the owner.
A trade mark may also be revoked due to abandonment or lapse because of insufficient use of the trade mark, and because of further reasons which relate to the character of the trade mark, the specific use of the trade mark or the character of the trade mark owner.
In more detail, a trade mark may be revoked for abandonment or lapse if, within a continuous period of five years from the registration date, the trade mark has not been seriously used in the sense of German trade mark law (see 1.22 Use in Commerce Prior to Registration, above). However, this lapse is not considered to have occurred if at the end of the five-year period and prior to the filing of a cancellation request, the use of the trade mark has started or was resumed. Nevertheless, if this use commences or resumes within three months preceding the filing of the cancellation request, following the expiry of an uninterrupted period of five years of non-use, it will not be taken into account in cases where preparations for the commencement or resumption take place only after the trade mark holder became aware that the application for cancellation may be filed.
Furthermore, a trade mark may be revoked if:
In addition, a trade mark may be cancelled if it was registered in contravention of absolute grounds for refusal (see 1.15 Refusal of the Registration of a Trade Mark, above) for an owner who is not eligible for trade mark ownership (this ground for cancellation is of little practical relevance), or if it contravenes the general prerequisites for the protection of a trade mark as stipulated by the TMA (see 1.15, as above).
Last but not least, a trade mark may be cancelled because of pre-existing rights of third parties, ie, rights with an earlier priority as stipulated by the TMA (ie, as mentioned above, which has an earlier application date or, in the case of other rights protected by the TMA, qualified for protection at an earlier date).
Whether a cancellation action is heard before the DPMA or the civil courts depends on the claimed ground for cancellation.
In the case of cancellation for lapse, the claimant may either file a request for cancellation with the DPMA or directly file a claim for cancellation of the trade mark with the competent civil court. If the owner of the respective trade mark objects within two months of the DPMA giving notice to them of the cancellation request, the claimant must file a claim for cancellation with the civil courts if they want to pursue the cancellation further.
If the claimant demands a cancellation for registration in spite of an absolute ground of refusal, it is mandatory to file that complaint with the DPMA. The DPMA's decision may be appealed to the German Federal Patent Court, a special court for, inter alia, specific trade mark cases. The decision of the German Federal Patent Court may, in certain cases, be subject to an appeal to the BGH on points of law. Claims based on earlier rights of the claimant may not be brought before the DPMA, only before the civil courts.
However, due to the changes imposed by the Trade Mark Modernisation Act, the cancellation procedure will be reformed soon. As of May 2020, the DPMA will also (in addition to the civil courts as explained below) be competent for any cancellation for lapse or based on earlier rights of the claimant. To avoid the simultaneous involvement of the DPMA and a court regarding the same trade mark, there is no possibility to make an application before the DPMA and the court at the same time or generally if the question of cancellation or revocation of the trade mark has been decided before.
German trade mark law stipulates several time limitations for remedies with regard to the different grounds for cancellation.
Cancellation is only possible if the cause for cancellation still subsists on the date on which the decision on the application for cancellation is handed down, in a case where the reason for cancellation is one of the absolute grounds for refusal described in 1.15 Refusal of the Registration of a Trade Mark and 6.1 Remedies and Reasons for Revocation/Cancellation, above. Furthermore, if the trade mark has been registered in breach of any of the absolute grounds for refusal described in 1.15, then the registration may only be cancelled if the application for cancellation is filed no later than ten years after the respective date of registration.
A cancellation ex officio is only possible with regard to the absolute grounds for refusal outlined in 1.15, above, if:
In the case of relative grounds for refusal (see 6.1, above), the registration may not be cancelled because of the registration of a trade mark with earlier seniority where the owner of the earlier trade mark has tolerated the use of the younger trade mark for the goods or services for which it is protected for a period of five consecutive years whilst being aware of such use, unless the application for the registration of the younger trade mark has been made in bad faith. The same applies with regard to the owner of an earlier right to:
Several grounds for cancellation are available to any person, irrespective of whether or not that person has any legal or commercial interest whatsoever in the cancellation of the respective trade mark. This applies with regard to cancellation for abandonment or lapse (see 6.1 Remedies and Reasons for Revocation/Cancellation, above) and cancellation because of absolute grounds for refusal (see 1.15 Refusal of the Registration of a Trade Mark, above).
Furthermore, cancellations because of absolute grounds for refusal may be executed ex officio. However, this is hardly relevant in practice because a cancellation ex officio is subject to strict limitations.
Any cancellation proceedings which are based on earlier third-party rights can only be initiated by the owner of the respective right, or persons (ie, a licensee) that have been authorised by the owner to initiate cancellation proceedings. In the case of indications of geographical origin, the claim may be made by:
Partial cancellation is possible if the reason for cancellation only applies to a part of the goods and/or services for which a particular trade mark is protected.
Amendment of a trade mark is not possible in cancellation proceedings. However, the owner may restrict the scope of the trade mark (eg, the scope of products and services applied for) during cancellation cases at any time.
Insofar as the civil courts are competent for decisions regarding the cancellation of a trade mark (see 6.2 Role of the Trade Mark Office and Civil Courts, above), the ground for cancellation may generally be introduced into an infringement case before the respective civil court. If the DPMA and German Federal Patent Court have jurisdiction over the cancellation action (see 6.2), the infringement trial may be stayed by the respective civil court until the cancellation decision has been reached.
Trade mark proceedings before the civil courts in infringement and cancellation proceedings follow the standard procedural rules as laid down in the German Code on Civil Process (the Zivilprozessordnung or ZPO).
Trials before the Federal Patent Court and the BGH in appeal cases (Beschwerden) against decisions of the DPMA in registration proceedings generally also follow these same general rules. However, the TMA stipulates several special provisions for these trials: most notably, the Federal Patent Court investigates the relevant facts of the case ex officio and is not bound by the facts submitted by the participants and the motions of the participants to take evidence. Furthermore, an oral hearing will be held only if:
With regard to the costs of trial, the Federal Patent Court may order that any or part of the necessary legal costs which the participants have incurred for the trial are to be borne by one of the participants for reasons of equity. If the court does not hand down such an order, each participant has to bear their cost alone.
Cases are generally determined by legal judges alone; however, in infringement cases, it is possible to have the case heard by a chamber for commercial matters (Kammer für Handelssachen) at the competent regional court. The case will then be heard by one professional judge and two lay judges with a commercial background. Juries do not exist under German law.
The parties have no direct influence on who hears their case. However, in certain specific cases, they may reject a judge because of concerns of bias. In such a case, the court (without the judge in question) decides whether or not the rejection is justified.
During a trial, the parties can settle the case at any time by reaching an agreement. Such a settlement agreement can be made out of court as well as before the court. In the former case, the parties need to end the trial (eg, by withdrawing the claim, etc). The latter ends the trial and, depending on the content of the settlement, provides the parties with an enforceable title. The courts are required by law to seek an amicable solution of the dispute at all times during the proceedings. It is thus not uncommon that the court, usually in an oral hearing, makes a proposal for a settlement agreement. However, the parties are free to follow such a proposal, to amend it or to reject it.
An infringement case may be stayed by the court if a parallel cancellation/revocation trial is pending (see 6 Revocation/Cancellation). However, the infringement court is not obliged to do so.
Trade mark owners – whether of a registered trade mark or any other right protected by provisions of the TMA – have a whole bouquet of remedies against infringements. Subject to the respective legal prerequisites, they may apply for:
Business owners should be aware that they are also liable for the acts of their employees and agents; indeed, as well as the direct infringer, all contributors to a trade mark infringement are also liable (eg, the persons who ordered the infringing goods or devices).
If the trade mark owner wins the court proceedings, they do not, as a general rule, have to bear any legal expenses, inclusive of their own attorney fees, unless they exceed the statutory fees; however, this is different in proceedings before the DPMA and the German Federal Patent Court (see 7.1 Special Procedural Provisions for Trade Mark Proceedings).
Any claim for damages requires a culpable infringement, ie, intent or negligence. Otherwise, monetary claims can only be made based on unjust enrichment. As in other fields of IP in Germany, the calculation basis for damages may be:
German law does not recognise enhanced damages for intentional infringement. Hence, with regard to the scope of damages there is no difference between intentional or negligent infringement. However, it is worth noting that unlike negligent acts of infringement, intentional trade mark infringement may constitute a criminal offence and therefore might be prosecuted by the Public Prosecutor’s Office, resulting in fines or imprisonment (see 5.6 Trade Mark Infringement as an Administrative or Criminal Offence, above).
Even if the focus of trade mark owners is usually on civil action against infringers, it is worth noting that the initiation of criminal proceedings, depending on the individual case, may be an effective tool to increase the pressure on the infringer (see 5.6, above).
Apart from the aforementioned possible remedies in a main action, a judge may order immediate (preliminary) precautionary measures in cases of infringement or imminent infringement if the trade mark owner substantially justifies such a request. A preliminary injunction, enforceable by legal process, may include, inter alia, an order to the defendant to refrain from making use of the trade mark or the infringing sign, a request for information, and a sequestration of infringing goods by a bailiff.
Last but not least, a trade mark owner may file a request for a seizure of infringing goods with respect to the territory of the EU. The border authorities will seize the goods provided the infringement is obvious (see 5.7 Customs Seizures of Counterfeits or Criminal Imports, above).
For the reimbursement of costs, please see the general explanation in 11.3 Costs of Litigation, below. In short, if no infringement has occurred, the alleged infringer will not have to bear any attorney costs unless their own attorney costs exceed the statutory fees.
Furthermore, even if a trade mark infringement has actually occurred, the full cost burden (inclusive of all court and statutory attorney fees) will be ordered to be borne by the trade mark owner if they fail to send a warning letter to the infringer giving the latter an opportunity to settle before filing an application for injunctive relief, or if the infringer immediately acknowledges the infringement in the court proceedings (ie, does not bring forward any arguments against the claim of the trade mark owner in court). Such an acknowledgment does not, however, affect the validity of damage claims. Thus, to avoid the risk regarding legal costs, a warning letter is highly recommended from the perspective of the trade mark owner (see 4.1 Actions Available to Pursue Infringement, above).
If a defendant is confronted with an alleged trade mark infringement (eg, by receiving a warning letter), and the trade mark owner does not subsequently file a lawsuit, the alleged infringer is entitled to file an action for declaration of non-infringement. If the court proceedings lead to the outcome that the allegation was wrongful (so-called 'negative declaratory judgment' or negative Feststellungsklage – see 4.9 Protection for Potential Defendants, above), all legal expenses and costs are borne by the trade mark owner.
Independently of any infringement proceedings, the defendant may at any time attack the validity of the trade mark. During revocation proceedings before the Federal Patent Court the civil infringement proceedings may be suspended if there are prospects for success of the invalidity action (see 6 Revocation/Cancellation).
If it turns out in the further proceedings that an ordered preliminary injunction or border seizure was unjustified, the alleged infringer has a claim for compensation. In particular, the trade mark owner is liable for loss of profits.
As already mentioned, remedies do not vary according to the different types of trade mark or other rights obtaining protection under the TMA (see 8.1 Remedies for the Trade Mark Owner, above).
In general, the general civil law rules apply in appellate procedures, with some minor modifications. Appeals against first instance decisions (Berufung) – which will usually be admissible in trade mark cases due to the high value of the amount in dispute (the Streitwert) – will be conducted before the higher regional courts (Oberlandesgericht or OLG). Within one month of service of the full version of the judgment, the appellant must submit a statement of appeal. Within one more month the appellant must submit a statement on the grounds of appeal describing the reasons why they consider the judgment to be erroneous and the significance of these errors for the judgment.
The second appellate level (Revision) before the BGH is subject to explicit permission to appeal being granted. This permission may be granted by the higher regional court or by the BGH after filing a non-admission complaint (Nichtzulassungsbeschwerde) against the denial to grant a second appeal. For the filing of a non-admission complaint and the non-admission complaint respectively, the same deadlines apply as in the first-level appeal (see the preceding paragraph). The content requirements are also similar, and it must be submitted by an attorney admitted to practice before the BGH.
On the first appellate level, as a general rule, a full review of the facts of the case and on points of law will take place. However, a statement of completely new facts compared to the first instance proceedings is only permitted subject to certain restrictions.
In contrast, the BGH is bound by the facts found by the first instance and the first appellate level court. Thus, the second-level appeal is on points of law only.
At the first appellate level, as a general rule, the duration of the proceedings will usually take at least 6 to 12 months. The second-level appeal very often lasts for a further 18 to 24 months, until a decision is rendered.
In German Trade Mark Law the term 'dilution' does not exist, which is why a trade mark cannot be opposed or prevented from being used in a lawsuit due to 'dilution'. However, a trade mark may be contested for the reasons outlined under 6 Revocation/Cancellation, above, with 'dilution' being understood as synonymous with a detrimental effect on the distinctive character of a well-known trade mark, which may cause a trade mark infringement.
Trade marks which are (not yet) registered or in use in Germany can be protected if they are famous marks in the sense of Article 6 bis of the Paris Convention (see 1.7 Registration Requirements, above).
In this regard, please see 1.10 Other Rights to Signs, above.
In this regard, please see 1.1 Types of Trade Marks, above.
The owner of a trade mark cannot prohibit someone from using their own surname as a mark in the course of trade. However, the user of a mark with a later priority may be ordered to apply necessary and reasonable measures to prevent confusion.
Attorney fees – as well as court fees – are subject to the value of the amount in dispute and the activities of the attorney. Circumstances influencing the value of the amount in dispute are, for example, the reputation of the trade mark, the quantity of infringements, the number of infringers and represented parties, and the complexity of the decisive legal issues. Every activity of the attorney will be remunerated according to the provisions of the German Act on Reimbursement of Lawyers (Rechtsanwaltsvergütungsgesetz), which determines the relevant business fee unit for every legal task and, in an annexed schedule, the applicable fee for the specific amount in dispute.
If the attorney’s legal task is limited to the out-of-court assertion of trade mark claims (eg, the sending of a warning letter), in a normal case of infringement of a trade mark of average value (where the usual amount in dispute is EUR100,000), the statutory prescribed attorney fee would be EUR1,953.90 plus reasonable expenses and telecommunications costs. Where appropriate, approximately the same costs for an additional patent attorney may be added.
Even if, by law, the statutory legal fees may not be undercut, clients and attorneys are free to agree on a (significantly) higher fee rate by contract, which is quite common in IP cases (and in general), at least at well-known law firms. Hourly rates between EUR200 and EUR600, depending on the seniority of the counsel involved, are common practice. Thus, attorney fees usually exceed the amount of the statutory fees by a great deal.
The aforesaid principles also apply for attorney fees in court proceedings. Assuming an amount in dispute of EUR100,000, after a first instance proceeding including an oral hearing, attorneys on both sides will each invoice EUR3,757.50 (plus expenses, etc) on the basis of the applicable statutes. Again, due to individual fee agreements the parties’ attorney costs may be significantly higher (see 11.1 Costs Before Filing a Lawsuit, above).
Court fees are calculated in a very similar way according to the Court Fees Act (Gerichtskostengesetz). The value in dispute – which represents the financial interest of the plaintiff – determines the court fee, which is then multiplied by a number of fee units subject to the court’s actions. A normal proceeding with a written judgment amounts to three fee units. Expenses, remuneration of witnesses or experts, cost for service of process or translation costs will be added. A lawsuit with a value of EUR100,000 will thus cause court fees in the amount of EUR3,078 (plus expenses, etc).
Firstly, the claimant is responsible for paying accrued court fees in order to start the proceedings. During the dispute, expenses incurred for procedural actions are borne by the party which requests them. But ultimately the losing party is required to reimburse the prevailing party for all costs of litigation fees inclusive of court fees, expenses and attorney fees of both parties in the statutory amount; this does not include higher costs due to a fee arrangement (see the last paragraph of 11.1 Costs Before Filing a Lawsuit, above). The judgment rendered by a court always encompasses a decision on the reimbursement of cost. In the case of a partial win, the statutory amount of the total cost will be split pro rata.
In spite of the growing significance of ADR in Germany, at present it is not very common in IP matters, and even less so in trade mark cases. Apparently, the reason for this is the excellent work of German courts in litigating trade mark and other IP cases. Compared to other countries, the courts work relatively quickly and at reasonable cost (see 11.2 Costs for Bringing an Infringement Action, above) and usually provide a substantial level of expertise. Hence, it is not necessary for the parties to rely on ADR in order to arrive at a proper solution for their dispute. Furthermore, a fruitless attempt at ADR is not a prerequisite for any court action. Nevertheless, ADR may still be appropriate in cases of long-term and multinational agreements between the parties, rather than in infringement cases.
The most common ADR method in IP matters is arbitration. Provided that the parties conclude a valid arbitration agreement in an arbitrable matter (please note: the question of the validity of a granted intellectual property right is not an arbitrable matter), an action before a state court is not admissible. For all arbitrational proceedings conducted in Germany, the tenth Book of the German Code on Civil Procedure (Zivilprozessordnung, Sections 1025 to 1066) applies. The law is based on the UNCITRAL Model Law and Germany is party to various international arbitration treaties, such as the New York Convention.
Parties are then free to agree on the language used in the arbitral proceedings, the place of arbitration and the person and the number of arbitrators. Pertaining to the procedural rules, the parties may agree to pre-drafted arbitration rules (eg, by the ICC) or leave it to the arbitral tribunal to decide how to approach fact-finding and taking of evidence. In Germany, however, facts and evidence must usually be provided by the parties. 'Discovery' rules are not applicable and witnesses are questioned by the judge (no cross-examination). The tribunal’s final ruling has the same status as a final court judgment and can be declared enforceable. It includes a decision on the costs, taking into consideration all circumstances of the case, in particular the outcome.
German courts do not normally intervene in a pending arbitration. However, exceptions are made, for instance, for the appointment or challenge of arbitrators if there is no agreement between the parties, interim measures or assistance in taking evidence or enforcement of orders. Moreover, the court can set aside an arbitral tribunal’s jurisdiction under specific circumstances if certain essential prerequisites of German Law are not met.
For the sake of completeness, the existing special ADR programmes in domain name disputes deserve to be mentioned as well. Unlike the ICANN UDRP conducted by the WIPO Arbitration and Mediation Centre, competent, inter alia, for generic top-level domains, and the EURid alternative dispute resolution mechanism provided by the Czech Arbitration Court for the top-level domain '.eu', the German central registry for the top level domain '.de' (DENIC eG) does not offer an ADR service. There is only the possibility to file a 'dispute entry' by which an infringing domain name is transferred to the right holder after the latter has successfully claimed for a deletion of the domain in court. Thus, domain name disputes usually end up before German courts anyway.
Intellectual property rights are not mutually exclusive. In general, a trade mark might also be protected in parallel by other rights (eg, a copyright in the case of a very creative logo), provided that the respective protection requirements are met.