As Germany has a civil law system, rights regarding marks and copyrights are based on statutory law. The central statutory source of law regarding trade marks is the German Trade Mark Act (Markengesetz or TMA); regarding copyrights it is the German Copyright Act (Urheberrechtsgesetz or CA) and the Act on the Copyright Liability of Online Content Sharing Service Providers (Urheberrechts-Diensteanbieter-Gesetz – UrhDaG). 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.

Prior use of a trade mark abroad does not result in trade mark protection in Germany. As a general rule, trade mark protection in Germany requires registration of the sign in Germany and/or in the EU, or it arises as a result of extensive use of a sign in Germany and/or in the EU.

Since Germany is part of the EU, the EU Trade Mark Regulation (EUTMR) has immediate effect within Germany. Therefore, EU trade marks automatically protect the sign in the whole EU, including Germany.

Regarding copyright protection, there is no equivalent to the EUTMR. The law of the respective EU member state grants copyright protection and determines its scope. However, the EU has issued several directives (eg, InfoSoc or CDSM Directive) harmonising wide parts of the copyright protection in the EU.

International agreements such as the Berne Convention, the Paris Convention, TRIPS and the Madrid Protocol guarantee a minimum standard of rights, which signatories to these agreements have to warrant.

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 that have acquired protection by virtue of extensive use, company designations and domains – and indications of geographical origin are also protected.

In general, industrial designs can acquire trade mark protection as they are signs. However, the requirements for this are high.

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.

Trade marks that are not yet registered or in use in Germany can be protected if they are famous marks in the sense of Article 6bis of the Paris Convention.

In addition, special legal protection is provided for the Olympic emblem and other Olympic designations by the Olympiaschutzgesetz.

As mentioned in 2.1 Types of Trade Marks, any type of depictable sign may be protected as a trade mark as long as it is, inter alia, distinctive. In determining the distinctiveness of a sign the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt or DPMA) must assess the capability of the sign to identify the goods or services for which protection has been applied and to distinguish those goods or services from those of others. Descriptive marks that directly describe the characteristics, qualities, and/or features of the goods or services are usually considered not inherently distinctive. However, a descriptive sign may acquire distinctiveness and – as a consequence – may be protectable as a trade mark through usually extensive use establishing the sign in the affected trade circles. To prove this acquired distinctiveness, the right-holder must submit, inter alia, evidence that consumers have been exposed to a widespread use of the respective sign and associate the goods or services with a particular origin.

According to the TMA, trade mark owners have the exclusive right to use their marks with respect to the goods and services for which the trade mark is registered. This includes the right of the trade mark owner to prevent unauthorised third parties from using identical or similar marks for identical or similar goods and services leading to a likelihood of confusion among consumers. In addition, they may have claims for information, compensation and accounting (Section 14 et seqq. TMA).

German trade mark law does not require the use of the applied trade mark in commerce prior to registration. However, the TMA generally 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.

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 (of usually five years), a trade mark that is not seriously used may be cancelled upon request of any third party.

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.

Intellectual property rights are not mutually exclusive. In general, a trade mark might also be protected by other IP rights (eg, a copyright in the case of a very creative logo), provided that the respective protection requirements are met. Then, the scope of protection varies.

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 criterion as for all other signs, namely whether the name has a distinctive character.

Section 2 CA encompasses a non-exclusive list of protected works, such as, inter alia:

• literary works, such as written works, speeches and computer programs;
• musical works;
• pantomimic works;
• artistic works;
• photographic works;
• cinematographic works; and
• illustrations of a scientific or technical nature.

In addition to this non-exclusive list, German copyright law protects translations and other adaptations of a work, collective works and databases (see Section 3, 4 CA).

Industrial designs may be protected by copyright law if the industrial designs are an individual creation by the author.

In order to be protectable, the work must be the author’s own intellectual creation. This is the case if the work reflects the author’s personality and its free and creative choices. The work must not be fixed in a tangible medium and no copyright symbol (©) is necessary.

According to Section 7 CA, the author is the person who creates the work. The work must be an original product of a human being’s own intellectual effort (also called “personal touch”).

German copyright law does not recognise the “work made for hire” doctrine. Even when an employee creates a work in the course of their employment, the company will not become the author of the copyright.

Joint authorship arises when two or more individuals collaboratively and substantially contribute to the creation of a single work without their shares being separately exploitable. The right to publish and exploit the work then belongs to the co-authors jointly; changes to the work are only permitted with the consent of the co-authors.

Copyright protects the author in their intellectual and personal relationships with the work and in respect of the use of the work. The CA divides the scope of copyright into three subsections: moral, exploitation and other rights of authors. In principle, all of them persist throughout the term of a copyright.

Section 12 et seqq. CA states as moral rights the publication right, the right to be recognised as the author and the distortion right. Economic rights are listed in Section 15 et seqq. CA and grant the copyright owner several exclusive rights to economic exploitation of the copyright. These rights include reproduction, distribution, exhibition as well as all forms of communicating the work to the public in non-physical form, especially via the internet.

In Germany, copyright generally expires 70 years after the author’s death. After the author’s death, these rights are typically transferred to heirs or other specified beneficiaries for the remainder of the 70-year term.

In Germany, collective rights management for copyright works is primarily organised by collective management organisations (CMOs), often referred to as collecting societies (Verwertungsgesellschaften or VG). These organisations administer and enforce the copyrights of authors and other right-holders collectively. They typically cover various sectors, including music, publishing, visual arts, and more.

In particular, these collecting societies collect royalties on behalf of their members for the use of their works, negotiate and enter into licence agreements with users of copyrighted works. Furthermore, they monitor how the works are being used, identify potential infringements, and take legal action when necessary to protect the rights of their members.

There is no necessity or possibility to register a copyright as such in Germany. There is no “copyright register” in Germany. A “copyright office” does not exist either.

See 3.7 Copyright Registration.

See 3.7 Copyright Registration.

Copyright and trade mark protection serve distinct purposes and grant different rights. Nonetheless, copyrighted works can be registered as trade marks if they fulfil the respective application requirements (distinctive sign).

Trade mark rights may accrue by virtue of registering a trade mark. However, unregistered trade marks may also be protected (see 4.4 Application Requirements).

All types of trade marks and other registered signs are published in the German Trade Mark Register which is administered by the 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.

The formal requirements for submission of a trade mark application are stipulated in the German Trade Mark Regulation (Markenverordnung). Such application 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 of which kind of trade mark shall be registered; and
• a list of the goods and/or services for which registration is sought.

Any company, partnership or private individual can apply for a trade mark for any type of goods or services. A representation by an attorney is not mandatory. Applicants without a residence, principal place of business or an establishment in Germany need to appoint an attorney as a domestic representative.

After receiving the application and fees, 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. The registration procedure is usually completed within seven to eight months.

Multi-class applications are allowed.

The fee for the application contains a basic application fee and class fees. The basic application fee allows an application for up to three classes of goods and/or services (EUR300; or EUR290 for electronic filing). For any further class, a fee of EUR100 is to be paid.

See 2.4 Use in Commerce.

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.

After the DPMA receives the application, it is no longer possible to alter the trade mark applied for, except if 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 4.7 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; and
• the trade mark has been applied for in bad faith, in particular, containing fraudulent material in the application.

However, the lack of distinctiveness may be repudiated (see 2.2 Essential Elements of Trade Mark Protection).

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 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 of the publication of the registration of a trade mark. A cooling-off period to reach an amicable resolution of at least two months is granted at the request of both parties (Section 42 paragraph 4 TMA).

German trade mark law stipulates several time limitations for remedies regarding the different grounds for cancellation. For example, 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. In 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.

Since copyrights generally cannot be registered, they cannot be revoked or cancelled.

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.

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 4.10 Refusal of Registration), 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 that are identical or 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.

The owner of a prior right may file an opposition (see 5.2 Legal Grounds for Filing an Opposition or Cancellation). The same applies to licensees. A representation by an attorney is not mandatory. The opposition fee amounts to EUR250 and must be paid within the deadline for filing the opposition.

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, this is subject to strict limitations (see 5.1 Timeframes for Filing an Opposition or Cancellation).

Although not mandatory, it is common practice to substantiate an opposition in detail. The applicant usually reacts with a counter-statement.

The opposition procedure is a summary proceeding and there is usually no oral hearing.

By request of both parties to 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.

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.

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

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.

There is no special procedure to revoke or cancel marks that were filed fraudulently; however, the general rules apply. See 5.2 Legal Grounds for Filing an Opposition or Cancellation.

Trade marks may be freely assigned from one owner to another by means of a contractual agreement without formal requirements. The (pending) application for the registration of a trade mark as such may also be freely transferred. A copyright is non-assignable under German copyright law. Nonetheless, the author can grant licences regarding the exploitation rights linked with a copyright.

There are no formal requirements for licence agreements on trade marks and copyrights; however, it is strongly recommended to conclude a licence agreement in writing for the purpose of preservation of evidence. Any copyright or trade mark 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, transferable or sub-licensable) of the respective licence and further licensing conditions may be freely negotiated between the parties.

The parties of a trade mark assignment are under no obligation to give notice of the change of ownership to the DPMA. 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 TMA).

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.

A copyright licence can neither be registered nor recorded.

Claims under trade mark law and copyright 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 or copyright 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 or copyright 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. Furthermore, preliminary injunctions or regular infringement proceedings may also be brought before the competent court directly, even without sending a warning letter first.

In cases when the infringement is not clear-cut, the 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 right. An authorisation inquiry, unlike a warning letter, contains neither a request to cease and desist nor a threat of further legal action in case of non-compliance. It serves the purpose of substantiating the suspicion of an infringement and does not create the risk of a counter-action because of raising non-existing claims.

There are different types of infringement such as direct infringement and contributory infringement. For the elements to be fulfilled, see 7.3 Factors in Determining Infringement.

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.

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 them. In this regard, claims under the German Unfair Competition Act (UWG) are particularly relevant.

Information used for rights management is legally protected against removal and alteration. Under the CA, rights management information is defined as electronic information that identifies the works or other protected subject matter, the author or any other right-holder, information on the terms and conditions relating to the use of the works or protected subject matter, and any numbers and codes that represent such information. Copyright management information may not be removed or altered if any of the information concerned is affixed to a copy of a work or of other protected subject matter or in the context of communication to the public of such a work or protected subject matter is published and if removal or alteration has been knowingly undertaken without authorisation, and those acting know or must have reasonable grounds to know that by doing so they are inducing, enabling, facilitating or concealing an infringement of copyright or related rights.

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 by conducting an overall assessment of the oral, conceptual and/or visual similarity. Secondly, a comparison of the goods and services for which the respective signs seek protection is conducted. Finally, the degree of distinctiveness of the trade mark has to be determined. Furthermore, the potentially infringing sign has to be used as a trade mark (and, for example, not purely descriptively).

Copyright infringement involves using the author’s work without permission and thereby violating the rights of use granted by the copyright such as the right of reproduction, the right of distribution, the right to make available to the public, and the right of reproduction by means of audio or video carriers. Accordingly, it must be examined whether the use of the alleged infringer encroaches on the scope of the copyright protection. In a second step, it is assessed whether there are any relevant limitations that permit the use.

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 Claims for Infringement Lawsuits and Their Standards).

With regard to trade mark infringements, the regional courts (Landgerichte) have exclusive jurisdiction. Furthermore, in each German state there are a limited number of specialised regional courts that 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 and subject to certain conditions (see 11.1 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.

In copyright infringements, the general civil procedure provisions for jurisdiction apply. Accordingly, up to an amount in dispute of EUR5,000 the district courts (Amtsgerichte) are competent in the first instance and the regional courts are competent in the second instance. If the amount in dispute is higher than EUR5,000, the regional court has jurisdiction in the first instance and the higher regional court will decide in the second instance. Determining the amount in dispute in copyright lawsuits depends on the evolving case law. Type and scope of allegedly infringing use are also a decisive factor.

Foreign trade mark or copyright owners may also bring infringement claims in Germany.

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 or copyright owner files a counter-claim based on the alleged infringement, there is no justified interest in the declaratory judgment, so the potential defendant has to withdraw the application for declaratory judgment to avoid unnecessary costs.

Because of the exclusive jurisdiction of regional courts for trade marks claims (see 7.5 Lawsuit Procedure), there is no alternative judicial body to resolve smaller trade mark claims. Neither is there one for smaller copyright disputes.

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.

Among other things, a third party is prohibited, in trade and without the consent of the trade mark proprietor, from using signs that are identical or similar to the trade mark if they are used for goods or services that are identical or similar to those covered by the trade mark(likelihood of confusion). Trade mark infringements are not necessarily or typically equal to counterfeits. Rather, a counterfeit sign usually requires the intent to use a trade mark in trade without permission. This product piracy can be a criminal action under the TMA. Accordingly, certain copyright infringements with intent are criminal according to the CA.

However, “counterfeiting” is not a legal term within the TMA or the CA. Furthermore, “bootleg” is not a legal term of the CA, but rather an actual phenomenon.

If a trade mark or copyright is infringed intentionally, the rights owner is entitled to injunctive relief, destruction of the counterfeits or bootlegs, damages and information about their origin. There are no specific remedies.

Trade mark and copyright 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.

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. 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.

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 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.

Attorney’s fees and court fees are subject to the value of the amount in dispute (Streitwert) and the activities of the attorney. Due to individual fee agreements, the parties’ attorney costs may be significantly higher.

Expenses, remuneration of witnesses or experts, cost for service of process or translation costs will be added.

As a defence, a defendant may invoke an earlier right to use a specific sign. Additionally, the use of the sign might be 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 4.5 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 also applicable (see 7.4 Prerequisites and Restrictions to Filing a Lawsuit).

The fair use doctrine applicable in the USA does not apply in Germany. However, according to the new Section 23 sentence 2 CA, the consent of the rights-holder is not required if the newly created work maintains a sufficient distance from the used work.

A limitation of copyright for caricatures, parodies and pastiches was introduced in Section 51a CA. All three terms are autonomous concepts of EU law. According to the ECJ, essential characteristics of a “parody” are to recall an existing work, but at the same time to show perceptible differences from it, and to represent an expression of humour or a mockery. It is likely to assume that a “caricature” is a sub-case of a parody or at least a closely related phenomenon, which usually involves a figurative representation and to which the same principles apply. The BGH has recently requested a preliminary ruling of the ECJ to provide a binding definition of the term “pastiche”.

Further limitations of copyright address the area of free speech and information. According to Section 52 CA, it is permitted to communicate to the public a published work if that communication serves a non-profit-making purpose for the organiser of an event, if participants are admitted free of charge and, in the case of a lecture or performance of a work, if none of the performers is paid special remuneration.

Under the TMA, the proprietor of a trade mark is not entitled to prohibit a third party from using the trade mark for goods that have been put on the market under this trade mark (either by them or with their consent) in any 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.

Regarding copyright law, Section 17 paragraph 2 CA provides that where the original or copies of the work have been put into circulation by sale with the consent of the person entitled to distribute them within the territory of the EU or another Contracting Party to the Agreement on the EEA, their dissemination is permitted, except by means of rental. However, there is no general principle of exhaustion for digital content.

The owner of a copyright, a trade mark or any other sign protected under the TMA may file for 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. In Germany, the posting of a bond to obtain an injunction is not needed.

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, intentional trade mark infringements may constitute a criminal act. Certain monetary remedies available only for registered trade marks do not exist in Germany.

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 that requests them. However, 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 always require the notification of the defendant. The defendant must have the opportunity to participate in the proceedings and 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).

In order to obtain border control actions against potential 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 right. If an infringement cannot be established, the owner may be liable for damages. If an infringement is established, a 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 that will not be offered in the German market from third countries to Germany (ie, the mere transit), if these goods contain a trade mark that is identical to or in significant elements not distinguishable from the registered trade mark (Section 14a TMA).

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 for trade mark disputes. The competent courts of appeal in a copyright dispute are either the regional courts or the higher regional courts, depending on the court being competent in the first instance (see 7.5 Lawsuit Procedure).

The second appellate level (Revision) before the BGH is subject to explicit permission to appeal being granted. This permission may be granted by the court of second instance or by the BGH after filing a non-admission complaint (Nichtzulassungsbeschwerde) against the denial to grant a second appeal. Contrary to that, in copyright procedures, the higher regional courts are competent regarding the second appeal if the district courts (Amtsgerichte) are competent in the first instance.

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.

At the first appellate level, 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.

See the Germany Trends & Developments chapter in this guide.

The EU Digital Services Act (DSA), which has immediate effect within Germany, contains fundamental regulations for intermediary services, online platforms, search engines and host providers with respect to illegal content. Copyright infringements can be such illegal content within the meaning of the DSA.

The German Telemedia Act (TMG) also contains rules for service providers.

The exceptions to the DSA and TMG are very detailed. However, service providers have no general obligation to monitor the information that they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity. Host providers are privileged if they have no knowledge of the illegal act or information and, in the case of claims for damages, if that content is not obviously illegal. Those providers have to take action to remove the information or block access immediately after becoming aware of it (Notice and Take Down; see Section 10 TMG and Article 6 paragraph 1 lit. b DSA).

Certain service providers within the meaning of Section 2 UrhDaG, in particular social media platforms and video platforms with user-generated content, can no longer rely on the exception in Section 10 TMG but are exclusively bound by the obligations under the UrhDaG. In order to meet these requirements, platforms tend to implement so-called upload filters.