Trade Marks 2021 Comparisons

Last Updated March 03, 2021

Law and Practice

Authors



SZA Schilling, Zutt & Anschütz has been one of the most reputable German corporate law firms for almost a century. With almost 100 attorneys, it advises domestic and international clients on nearly all areas of corporate and commercial law. The IP/IT department of SZA is located in Mannheim and Frankfurt and currently practises with nine attorneys in all areas of IP and IT, as well as data protection law. With the establishment of its China Desk, SZA provides consultation for Chinese companies regarding investments and business activities in Europe in all fields pertaining to commercial law, especially in relation to the protection of intellectual property, including the registration, defence, judicial and out-of-court enforcement of brands, patents and know-how. Further, in mutual co-operation with leading local law firms, SZA also provides consultation in the field of industrial property rights for European companies regarding their business in China.

As Germany has a civil law system, rights in marks are based on statutory law. The central statutory source of law is the German Trade Mark Act (the Markengesetz or TMA). Beyond that, there is a variety of case law specifying and implementing the statutory law.

Germany has signed the TRIPS Agreement, the Paris Convention for the Protection of Industrial Property and the Nice Agreement concerning the international classification of goods and services.

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, domains and work titles – and indications of geographical origin are also protected.

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, 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.

The Trade Mark Modernisation Act (Markenrechtsmodernisierungsgesetz), which implements the requirements of the EU Trademark Directive 2015/2436, also introduced certification marks. Certification marks may protect quality labels which reference significant characteristics of the labelled good.

Certification marks are not to be confused with collective marks, which are owned by certain legal entities (associations) for their members.

Apart from the TMA, special legal protection is provided for the Olympic emblem and other Olympic designations by the Olympiaschutzgesetz.

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.

For registered trade marks, see 3.3 Term of Registration. Unregistered trade marks and company designations are protected as long as the respective protection requirements are met.

Under the TMA, the proprietor of a trade mark is not entitled to prohibit a third party from using the trade mark for goods which have been put on the market under this trade mark, either by them or with their consent, in Germany, any other EU member state or in any other contracting party to the Agreement on the EEA. This does not apply if there are legitimate reasons for the proprietor of the trade mark to oppose the use of the trade mark, in particular if the condition of the goods has been changed or impaired after being put on the market.

There is no need for a trade mark owner to use a special symbol (eg, ®) to denote that a trade mark is registered or existing.

Trade marks may be freely assigned from one owner to another. There are no formal requirements or formal procedures for 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 assignment agreement is not subject to any specific formal requirements, however, it is strongly recommended that it is concluded in writing for the purpose of preservation of evidence.

There are no formal requirements for licence agreements on trade marks, however, it is strongly recommended to conclude a licence agreement in writing for the purpose of preservation of evidence. 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. There are no reasons that a trade mark owner would not be able to grant a perpetual licence.

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. However, it is recommended that the new owner has 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 (1) TMA).

In the past, 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, 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. However, it is worth noting that this is only declaratory and has no legal effect.

There are no further validity requirements.

Equivalent to trade marks, the right of a prospective entitlement conferred by a trade mark application can be assigned and licensed.

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, this is only declaratory and does not have a legal effect.

As mentioned in 1.2 Types of Trade Marks, trade mark rights may accrue by virtue of registering a trade mark. However, unregistered trade marks may also be protected (see 4.1 Application Requirements).

All kinds of trade marks and other registered signs are published in the German Trade Mark register which is administered by the German Patent and Trade Mark Office (the Deutsches Patent- und Markenamt or DPMA). The register, which contains any signs applied for, registered, refused or cancelled, is freely available online in German and English. Registrations of trade marks are also published in the official electronic Trade Mark Journal (Markenblatt) which is issued weekly.

Before filing a trade mark application, it is usual practice to search for prior or colliding trade marks, in particular in the trade mark register.

The term of registration (and protection) 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 term may be extended by terms of ten years each, potentially indefinitely. 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, an additional class fee per class.

A subsequent amendment of the trade mark is only partially possible. For example, while the list of goods and services can be subsequently restricted at any time, an extension to more classes is not possible. The sign applied for itself cannot be subsequently changed. In particular, design marks cannot be updated or refreshed in the course of time.

Provided that the sign is appropriate and distinctive, any type of perceptible sign might be protected as a trade mark.

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). 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:

  • information permitting verification of the identity of the applicant;
  • a reproduction of the trade mark and an indication which kind of trade mark shall be registered; and
  • a list of the goods and/or services for which registration is sought.

As a general rule, any company, partnership and any private individual can apply for a trade mark for any type of goods or services.

After receiving the application and fees (to be paid within three months after 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 all requirements are met, the trade mark is registered and published in the official electronic Trade Mark Journal. On special request, and subject to an additional fee (EUR200), the application process can be accelerated. The registration procedure is usually completed within seven to eight months.

Multi-class applications are allowed.

German trade mark law does not require use of the applied trade mark in commerce prior to registration. However, the TMA requires the "serious use" of the trade mark for all goods and services for which the trade mark is protected in order to maintain the right to the trade mark after registration, unless there are legitimate grounds for non-use.

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 the 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.

German trade mark law allows the registration of series marks, if all applications have the same applicant and the same proposal for the leading class.

The DPMA does not check the existence of prior rights. Owners of prior rights can initiate opposition proceedings following the publication of the trade mark.

Third parties do not have the right to participate during the registration procedure. After the publication of the trade mark, owners of earlier rights have the opportunity to object to the registration.

After the DPMA received the application, it is no longer possible to alter the trade mark applied for, 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.

An applicant may declare to divide an application. The application for the trade mark will continue to be dealt with as a divisional application for the goods and services listed in the declaration of division. In this case, the seniority of the original application applies for each sub-application.

The application documents required must be submitted for the divisional application. If they are not submitted within three months of receipt of the declaration of division, or if the fee for the division proceedings is not paid within this period, the divisional application is deemed to have been withdrawn.

See 4.6 Revocation, Change, Amendment or Correction of an Application.

The most relevant absolute grounds for refusal to register a trade mark are:

  • the trade mark is not clearly and precisely defined;
  • lack of distinctiveness;
  • the trade mark contains descriptive terms that must be kept freely available for general use;
  • danger of deceiving the public;
  • an emblem of state included in the trade mark;
  • offence against public policy or accepted principles of morality;
  • the trade mark has been applied for in bad faith.

However, the lack of distinctiveness may be repudiated if the trade mark in question has, as a consequence of its use, been established as a distinguishing sign for the goods or services for which it has been filed in the relevant public (ie, has acquired a secondary meaning or Verkehrsdurchsetzung) before the date of the decision on registration. The same applies, if a trade mark contains descriptive terms.

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. If it does not overcome all deficiencies stated in the notification, a decision will be taken to refuse the application in whole or in part. In this case, the applicant has the opportunity to have this decision reviewed by filing a request for reconsideration (Erinnerung) or appeal proceedings (Beschwerde).

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).

The TMA shall be applied to international trade marks registered in accordance with the Madrid Agreement Concerning the International Registration of Marks (MMA) and in accordance with the Madrid Protocol of 27 June 1989 Relating to the Madrid Agreement Concerning the International Registration of Marks (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.

An opposition to a trade mark registration must be filed in writing within three months after the publication of the registration of a trade mark.

An opposition to a trade mark registration must be filed on the grounds of a risk of confusion with a prior right, by the owner of such prior right. 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 5.2 Legal Grounds for Filing an Opposition). The same applies for licensees. A representation by an attorney is not mandatory. The opposition fee amounts to EUR120 and must be paid within the deadline for filing the opposition.

Although not mandatory, it is common practice to substantiate an opposition in detail. 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 and there is usually no oral hearing, unless a participating party requests this and the DPMA deems it to be useful for a resolution. The DPMA will render a decision on the opposition and either cancel the newly registered trade mark entirely or partly, or reject the opposition.

By request of both parties of an opposition proceeding the DPMA may grant the parties a "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 within one month of the contested decision being served upon the respective party.

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 (Bundesgerichtshof or BGH), the duration of the proceedings is considerably longer, being at least a further 24 months.

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;
  • if the trade mark has been registered in breach of any of the absolute grounds for refusal, in some cases 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 absolute grounds for refusal, if the cancellation proceedings are initiated within a period of two years of the date of registration; and
  • in the case of relative grounds for refusal  the registration may not be cancelled where the owner of the earlier trade mark (or other right) 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.

A trade mark can be subject to cancellation if it contravenes the general prerequisites for the protection of a trade mark as stipulated by the TMA or was registered in contravention of absolute or relative grounds for refusal in the first place

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. Relative grounds for refusal apply, eg, to trade marks which:

  • are identical to a pending or registered trade mark with earlier priority and are registered for goods or services which are identical to the goods or services for which the pending or registered trade mark with earlier priority seeks or enjoys protection;
  • are identical similar to a pending or registered trade mark with an earlier priority, and the identity or similarity of the goods or services covered by the respective trade marks cause a likelihood of confusion for the general public, including the likelihood of association with the earlier trade mark.

Exceptions to the Possibility of Cancellation

However, German trade mark law contains several exceptions to the possibility of cancellation of trade marks for contravention of relative grounds for refusal. For example, 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.

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.

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 and cancellation because of absolute grounds for refusal.

Any cancellation proceedings which are based on earlier third-party rights can only be initiated by the owner of the respective right, or persons that have been authorised by the owner to initiate cancellation proceedings (eg, a licensee).

Furthermore, cancellations because of absolute grounds for refusal may be executed ex officio, however subject to strict limitations (see 6.1 Timeframes for Filing Revocation/Cancellation Proceedings).

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 after the DPMA's notice of the cancellation request, the claimant must file a claim for cancellation with the civil courts if the cancellation shall be pursued 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.

The DPMA is also 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.

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 products and services applied for at any time during cancellation cases.

Insofar as the civil courts are competent for decisions regarding the cancellation of a trade mark, 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, the infringement trial may be stayed by the respective civil court until the cancellation decision has been reached.

Claims under trade mark law are, as a general rule, time-barred after three years. This period begins at the end of the year in which the claim arose and the owner of the trade mark became aware or should have become aware without gross negligence of the circumstances giving rise to the claim and of the person who infringed the trade mark. The claim does not automatically lapse at the end of that period, on the contrary, the defendant has to invoke the limitation period.

Out of court, the owner of a trade mark 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, preliminary injunctions or regular infringement proceedings may also be brought before the competent court directly, without sending a warning letter first. However, if the defendant immediately concedes the claims as justified, the trade mark owner usually has to bear the legal costs of the proceedings.

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, requesting an explanation why they believe 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.

Dilution

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, 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.

Cybersquatting

It is often not easy to take action against cybersquatting, because regularly there is no evidence of a risk of confusion due to the (often missing) content of the website linked to the domain. The holding of domain names for speculative purposes without the intention of using them is not necessarily considered an abuse of rights under German law. However, the act becomes abusive if the domain owner exerts pressure on the owner of a trade mark, eg by activating undesirable content on the website in order to be able to sell the domain to him. In this regard, claims under the German Unfair Competition Act (UWG) are particularly relevant.

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 (which is usually given in case of an exclusive licensee). 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.

The filing of an action for infringement based on a trade mark application is not possible. On a case-by-case basis, it might be possible to raise claims based on unfair competition or general civil law principles in order to take an action to stop infringement before the registration of a mark.

German trade mark law does not provide for rules for representative or collective actions.

There are no prerequisites with regard to filing a lawsuit (eg, a mediation procedure). However, an immediate filing of a lawsuit without sending a warning letter might have implications for the owner's obligation to bear the costs (see 7.2 Legal Grounds for Filing Infringement Lawsuits).

Furthermore, 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 when asserting their rights. For instance, 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.

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

In order to initiate a lawsuit, 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, 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.

A defendant may file an action for declaratory judgment of non-infringement.

With regard to trade mark infringements, the regional courts (Landgerichte) 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.

In the second instance, the higher regional court (Oberlandesgericht) 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 (Bundesgerichtshof) and subject to certain conditions (see 11.2 Special Provisions for the Appellate Procedure).

Due to the aforementioned exclusive jurisdiction of the regional courts in trade mark matters, the parties need to be represented by a lawyer.

Attorney and Court Fees

Attorney fees and court fees are subject to the value of the amount in dispute (Streitwert) and the activities of the attorney. 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.

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 defence against actions for a preliminary injunction, a defendant may proactively file a protective brief (Schutzschrift) substantiating the reasons why an alleged infringement does not exist. A 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.

If a trade mark is infringed by counterfeiting, the trade mark owner is entitled to injunctive relief, destruction of the counterfeits, damages and information about the origin of the counterfeits. There are no specific remedies.

A trade mark infringement may also constitute a criminal offence if it is conducted in the course of trade and may be prosecuted in criminal law proceedings (see 8.9 Trade Mark Infringement as an Administrative or Criminal Offence).

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 (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 the standard procedural rules. However, the TMA stipulates several additional 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 requested by participants, a taking of evidence is necessary or if the Federal Patent Court deems an oral hearing to be useful for the resolution of the case (Sachdienlichkeit).

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. Trials before the Federal Patent Court against decisions of the DPMA (Beschwerden) are determined by legal judges alone. 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.

See 4.2 Use in Commerce Prior to Registration.

In order to determine a trade mark infringement due to the likelihood of confusion between the trade mark 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 and/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 trade mark has to be determined.

By conducting an overall assessment of the similarity of the signs, the goods and services and the distinctiveness of the trade mark, it must then be established that these combined factors lead to a likelihood of confusion, including the likelihood of association with the trade mark.

Since 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).

Trade mark infringement claims may also be based on actionable offenses which are similar to the concept of dilution by blurring, tarnishment or freeriding. In particular, the trade mark owner may take action against the use of a sign identical with or similar to the trade mark for goods or services which are not similar to those for which the trade mark enjoys protection if the trade mark is a trade mark which has a specific reputation in Germany and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark which has such reputation.

The TMA contains a refutable presumption that the registered owner of a trade mark is the actual owner of the trade mark (Section 28 (1) TMA). If the owner needs to defend the trade mark, it is considerably easier to raise claims when the owner is the registered owner; this should be taken into account in particular by the new trade mark owner after the transfer of the trade mark right.

As a defence, a defendant may invoke an earlier right to use a specific sign. Defendants 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 4.2 Use in Commerce Prior to Registration), the claimant has not used its trade mark for a period of five years.

Defences based on general civil law principles are applicable as well (see 7.5 Prerequisites and Restrictions to Filing a Lawsuit).

German law in general 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 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 to the claimant as part of the infringement claims, eg, with regard to the revenue generated by the infringing goods or services.

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. 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.

Attorney fees and court fees are subject to the value of the amount in dispute (Streitwert) and the activities of the attorney.

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.

Court fees are calculated in a very similar way according to the Court Fees Act (Gerichtskostengesetz). The amount 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).

The owner of a trade mark or any other sign protected under the TMA may file for an injunctive relief against the alleged infringer and also for a preliminary injunction if the infringement is likely and 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. The judge has no discretion to order the injunctive relief if the legal prerequisites are met.

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:

  • actual damages suffered by the right holder (including lost profits);
  • payment of reasonable royalties (fiktive Lizenzgebühr); or
  • surrender of the profits actually generated by the infringer.

German law does not recognise enhanced damages for intentional 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.

In case of a trade mark infringement, the owner of the trade mark may apply for destruction or recall of infringing goods. However, this claim is excluded if the destruction or recall is disproportionate in individual cases. When examining proportionality, the severity of the infringement, the extent of the damage incurred, and the legitimate interests of third parties must be considered in particular.

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 9.7 Customs Seizures of Counterfeits or Criminal Imports).

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.

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.

Regular legal proceedings in Germany always require the notification of the defendant. He must have the opportunity to participate in the proceedings. Due to constitutional law principles, as a general rule, he must also be heard before a preliminary injunction is rendered; however, it may suffice if this is made out of court (eg, by responding to a warning letter).

For the reimbursement of costs, please see the general explanation in 9.4 Attorneys’ Fees and Costs. 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 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..

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, 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.

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.

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 an infringement cannot be established, the trade mark owner may be liable for damages. If an infringement is established, the trade mark will either be removed from the goods, if possible, or the goods will be destroyed.

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 (Section 14a TMA).

Remedies do not vary according to the different types of trade mark or other rights obtaining protection under the TMA. Trade mark owners – whether of a registered trade mark or any other right protected by provisions of the TMA – have a range of remedies against infringements. Subject to the respective legal prerequisites, they may apply for:

  • (permanent) injunctive relief;
  • disclosure of information on the origin and the distribution channel of infringing goods;
  • damages;
  • destruction or recall of infringing goods; and
  • publication of the judgment.

During a trial, the parties can settle the case at any time by reaching an agreement. A settlement agreement can be made out of court or before the court. For the former, the parties need to end the trial. 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 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.

In spite of the growing significance of ADR in Germany, it is not very common in IP matters, and even less so in trade mark cases. 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 and usually provide a substantial level of expertise. 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, 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 Process (Section 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. 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.

An infringement case may be stayed by the court if a parallel cancellation/revocation trial is pending (see 6 Revocation/Cancellation Procedure), however, the infringement court is not obliged to do so.

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 (Streitwert) – will be conducted before the higher regional courts. 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.

At the first appellate level, as a general rule, the duration of the proceedings will usually take at least six to 12 months. The second-level appeal very often lasts for a further 18 to 24 months, until a decision is rendered.

There are no special provisions concerning the appellate procedure.

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.

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.

Names of persons – whether real or fictitious, known or unknown, living or deceased – are eligible for trade mark protection. Whether a personal name is registered as a trade mark depends on the same criteria as for all other signs, namely whether the name has distinctive character.

Besides trade mark protection, a specific design (eg, of a product) might also be protected as an industrial design in accordance with the Designgesetz (DesignG). However, in order to prevent the limited term of protection under the DesignG (25 years) from being undermined, there are specific requirements that must be met for trade mark protection of a design (see 4.9 Refusal of Registration).

Trade mark law and personal rights aspects may coincide, but in German law the latter elements are subject to personal rights alone. However, personality rights may constitute a relative ground for refusal  for registered trade marks. In individual cases, the right of personality may be infringed, for example, by the use of a voice in the case of sound marks, a signature in the case of pictorial marks or by the (commercial) use of pictures. A post-mortem personal right is also protected, although according to German case law, protection expires ten years after death.

The right to a name of an individual or an entity is protected under the German Civil Code (Bürgerliches Gesetzbuch or BGB). The owner of a trade mark cannot prohibit someone from using their own name 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.

In principle, claims under trade mark law can exist alongside claims under German competition law (UWG). For example, the imitation of a trade mark or the use of a similar sign with a risk of confusion can also be an unfair act under the UWG. Although there is no precedence rule, the application of the UWG shall not undermine any specific features of the TMA, and conversely, the application of the TMA shall not undermine any specific features of the UWG. The interaction between the UWG and the TMA is controversial in German law. If questions should become relevant in this respect, it is recommended to seek legal advice.

In July 2020, the German Federal Supreme Court ruled that the square shape of Ritter Sport chocolate bars can be protected as a trade mark. Thus, competitor Milka, which had tried for ten years to have this trade mark cancelled, is not allowed to offer its chocolate in a square shape.

At the beginning of February 2021, the German Federal Supreme Court will rule if the gold shade of the Lindt Goldhase is entitled to trade mark protection. The focus will be on whether the colour shade for the product "chocolate bunny" acquires a reputation in the trade and thus establishes a use mark (Section 4 No 2 TMA) on the gold shade of the Lindt Goldhase.

In July 2019, the German Federal Supreme Court ruled that advertising with a trademark in a search-engine advertising such as Google AdWords constitutes trademark infringement if the advertisement contains a link leading to a product overview that does not only contain products of the searched brand.

In general, a provider is liable as an interferer for trade mark infringements by third parties on its platform only if it is legally possible for it to prevent the infringing act and if it is possible and reasonable for it to have a duty of inspection and control. The operator of an internet trading platform is subject to inspection and monitoring obligations after becoming aware of a trade mark infringement.

German trade mark law does not provide for any special rules or norms requiring a company to register for manufacturing products or to have a permit for the use of a trade mark. However, in certain areas (eg, food law) there are special legal standards regarding manufacturer labels.

SZA Schilling, Zutt & Anschütz

Otto-Beck-Strasse 11
D-68165 Mannheim

+49 621 4257 247

+49 621 4257 286

thomas.naegele@sza.de www.sza.de
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Law and Practice in Germany

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SZA Schilling, Zutt & Anschütz has been one of the most reputable German corporate law firms for almost a century. With almost 100 attorneys, it advises domestic and international clients on nearly all areas of corporate and commercial law. The IP/IT department of SZA is located in Mannheim and Frankfurt and currently practises with nine attorneys in all areas of IP and IT, as well as data protection law. With the establishment of its China Desk, SZA provides consultation for Chinese companies regarding investments and business activities in Europe in all fields pertaining to commercial law, especially in relation to the protection of intellectual property, including the registration, defence, judicial and out-of-court enforcement of brands, patents and know-how. Further, in mutual co-operation with leading local law firms, SZA also provides consultation in the field of industrial property rights for European companies regarding their business in China.