Germany: Trademarks II

Last Updated: 27 May 1998

I. Scope of Trademark Protection

A trademark owner - who has acquired trademark protection pursuant to Section 4 MarkenG - is entitled to an exclusive right in this trademark (Section 14 MarkenG). This includes the right to use the trademark exclusively and to prohibit others from doing so. However, in case of conflicting intellectual property rights covering signs and marks third parties are only prohibited from using the trademark without the consent of the owner if the trademark owner can rely on priority (Section 6 MarkenG). The priority in case of registered trademarks is the application date (or any earlier date which may be claimed). For signs which have acquired secondary meaning in the trade circles concerned, that time is relevant.

Section 14 para. 2 no. 1 to 3 MarkenG regulates the elements constituting a collision. The decisive criteria in this respect are "similarity" and "likelihood of confusion". The protection of a trademark does not only cover the use of an identical sign for identical goods but also protects the owner against use of an identical or similar trademark for goods or services which are, according to the view of the trade circles concerned, similar to those goods or services for which the trademark is registered (Section 14 para. 2 no. 2 MarkenG). Particularly in these cases a likelihood of confusion on the part of the public is given.

1. Similarity

In order to evaluate whether "similarity" is given one has to check whether the goods and services as registered for the trademark owner and those ofthe potential infringer indicate close connection points with respect to their origin, distribution place, features, economic importance and purpose of use so that the trade circles concerned attribute them to the same business. This point has to be considered in connection with the even more decisive question of a likelihood of confusion.

2. Likelihood of confusion

To determine the likelihood of confusion the registered trademark and the infringing sign are compared. Likelihood of confusion may be given in a tonal respect, a pictorial respect or regarding the meaning of the sign.

Further, it has to be distinguished between likelihood of confusion in a narrow and a broad sense. Likelihood of confusion in a narrow sense is given if the trade circles concerned actually confront the signs with each other. They may come to believe that only one and the same sign is existing or that, because of common features, one sign is a variation of the other sign. In contrast, a likelihood of confusion in a broad sense is given if the trade circles concerned nevertheless distinguish the signs but assume that both businesses using these signs are economically or organizationally connected.

In this connection it is important to distinguish strong and weak signs. Strong signs are trademarks which are deemed to be especially capable of protection because of their characteristic or acquired reputation. In case of weak signs even slight deviations can result in a denial of the likelihood of confusion.

A well-known sign having a reputation in Germany enjoys even stronger protection. For those well-known trademarks the owner may even claim protection for the use of an identical or similar sign for goods or services which are not similar to those for which a trademark enjoys protection, provided that the use of the sign results in a dilusion or an exploitation of the good reputation of the trademark having a prior time rank (Section 14 para. 2 no. 3 MarkenG).

II. Legal Procedure of Infringement Cases

1. In General

According to Section 140 para. 1 MarkenG, the owner of a trademark is entitled to sue an infringer for an injunction or for damages before special chambers at the Regional Courts ("Landgerichte") having exclusive jurisdiction without recourse to the value in dispute. After a judgment is rendered by a court of first instance the losing party may appeal the decision to the Court of Appeals. On further appeal the case will be finally determined by the Federal Supreme Court.

2. Remedies in an Infringement Suit

The owner of a trademark may demand a variety of remedies. His claim may be directed to receive an injunction against the infringer, to claim damages or to combine these claims in one proceeding.

a) Injunction

In case of a collision the owner of a trademark is entitled to prohibit a third party from using the sign. The trademark owner does not need to prove a direct infringement of the trademark, i.e. the use of the trademark in connection with the respective goods or services. It is already sufficient that the likelihood of confusion exists to find for a direct infringement of the trademark.

A trademark owner may enforce its trademark rights for an injunction either in a regular action before the courts (complaint, defense brief, oral hearing, witnesses, etc.), or more common, in an application for a preliminary injunction. In the latter proceedings an injunction may be granted ex parte. The right for an injunction follows from Section 14 para. 5 MarkenG.

b) Damages

According to Section 14 para. 6 MarkenG, the owner of a trademark is entitled to damages in case the infringing act was committed intentionally or negligently. However, the threshold to find negligence is not very high. The courts consider culpable infringement already to be given if an infringer could have taken notice of the trademark by a reasonable trademark research. Thus, almost every infringement will be considered to have occurred at fault.

In order to enable a trademark owner to determine the damages suffered, a court will order the infringer to provide the necessary information regarding the infringing acts (number of products manufactured and shipped, advertisements, etc.). The trademark owner may then chose among three options for calculating his damages: lost profit, profit of the infringer or usual reasonable license fees. A trademark owner may also claim compensation according to the rules of unjust enrichment. This claim does not depend on any fault of the infringer but leads to payment of a reasonable royalty only.

3. Available Defenses against the alleged Violation of Trademark Rights

The defendant in an infringement case has various options to defend himself:

a) The defendant may file a counter claim for cancellation of the trademark because of liability to revocation (Section 49 MarkenG) or because of the existence of prior rights (Section 21 MarkenG). Even if the defendant does not file a counter claim he can put forward as a defense that the claims are excluded because of legal validity of the registration of his trademark with later time rank (Section 22 MarkenG). This is the - more or less exceptional - case if a trademark with a prior time rank could have been canceled because of liability to revocation or because of absolute bars to protection on the date of publication of the registration of the trademark with a later time rank. The same applies if a plaintiff relies on a trademark or a trade designation having a reputation which has not yet become known in the business circles concerned on that date.

b) The defendant may also raise the objection that the owner of a trademark - which trademark has been registered for at least five years - has not been used within the last five years (Section 25 para. 1 MarkenG). In such case the plaintiff has the burden of proof with respect to the use of the trademark.

c) Somewhat similar is the plea of defendant that the owner of a trademark has acquiesced, for a period of five successive years, in the use of this trademark or trade designation while being aware of such use. In this case, the owner of the trademark or trade designation having a prior time rank cannot proceed against the use of the trademark.

d) A further defense is exhaustion. A trademark owner is not entitled to prohibit a third party from using a trademark in relation to goods which have been put on the market by him or with his consent in the European Union or other contracting states of the Convention concerning the European Economic Area under that trademark or trade designation. Exhaustion, however, is only applicable in cases where original goods are put on the market (Section 24 MarkenG).

e) Especially in the spare parts trade the regulation in Section 23 MarkenG is important. According to this provision a trademark owner is not entitled to prohibit a third party from using a trademark where such use is necessary to indicate the intended purpose of a product, in particular as accessories or spare parts - provided that such use is not contrary to honest practices.

f) Finally, the statutory limitation has to be considered as an argument of defense. Section 20 MarkenG provides a statutory limitation for the assertion of trademark claims of three years from the date on which the infringement of the trademark right became known to the trademark owner.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions