Trademark Infringement in Germany

The proprietor of a registered trademark, the brand/sign of a company or even a non-registered trademark of use may file opposition proceedings against third parties which use the protected trademark in an identical or equivalent form, without authorization.

In this case, it is necessary to take action against this legal breaching of rights. The alleged trademark infringer may take part in the respective processes, as well as in the additional procedures (such as a cancellation procedures etc.).

A trademark infringement procedure often begins with a warning for possible protective rights infringements. Temporary disposition procedures are also very common in trademark matters compared to other types of intellectual property (such as industrial property rights). Trademark infringement proceedings and/or trademark disputes are not rare and they generally end up before Regional Court, the Higher Regional Court, the Federal Court of Justice (BGH) or the ECJ (EuGH).

Within the portfolio management of trademark portfolios, trademark infringements are examined first, without an externally visible intervention, in order to evaluate whether a trademark infringement actually exists. Similar characters used for similar performances could be sufficient for a trademark infringement.

Determination of the trademark infringement

The starting point for the question of whether a trademark infringement actually exists, is regulated in Germany by the §14 Trademark Act (MarkenG) in the case of a registered trademark or by the § 15 Trademark Act (MarkenG) in the case of a business name: the trademark owner is the only one authorized to use his trademark in the contest of applicable law and regulations.

Without an authorization, third parties are not allowed:

• to place the mark on goods or on their packaging,
• to offer, to place on the market, or use for the same purposes a protected trademark,
• to offer or provide services under that mark,
• to import or export related goods,
• to use the trademark in business documentations or advertising.

The infringement of a trademark is generally considered existent when (at least) similar characters have been used for the same services. In the case of famous brands, the utilization of similar symbols/signs is sufficient.

In detail, it is more correct to talk about identical trademark infringements, similar trademark infringements or indirect trademark infringements. The determination on a case by case basis is difficult, as it is not always easy to determinate whether the infringement is indirect or similar.

Trademark infringements and warning letters

By means of a warning, the trademark infringer will be informed about the alleged situation/facts and about the existence of an already protected (similar/identical) trademark. This procedure generally leads to the payment of a compensation for damages.

If the opposing party is not willing to collaborate, an infringement litigation process could take place. If the warning was not sufficient, the trademark infringement proceeding could go ahead with an interim injunction.

Trademark infringements lawsuits

A legal violation of protective rights can primarily be prosecuted by means of civil law, i.e. trademark infringement proceedings are brought before the Court of Appeals of the Land Court.

Please consider involving a lawyer throughout the whole procedure; in trademark infringement proceedings, the following claims are to consider:

• Injunctive relief;
• Claim for abatement or removal;
• Property Claims/compensation for damages;
• Information claim.

It is generally the party losing the case, who carries all the processual costs.

There are several reasons that make a trademark proprietor applying for trademark infringement proceedings.  It is not only to prevent the trademark from infringements: financial interests can sometimes be the principle reason for those kinds of lawsuits.

Trademark infringement proceedings are really inexpensive in Germany if compared with the international framework. The legal expenses are based on the value of the dispute. Thus, a first-instance procedure costs a total amount of approx. 5000 EUR up to approx. 25000 EUR (costs estimate apply to typical disputes). This is the most favorable value in Europe.

Additionally, the “major” trademarks Courts (such as Düsseldorf, Cologne, Munich and Hamburg) have also achieved an above-average reputation for prompt and reliable legal decisions.

The typical trademark infringement process in court ended, by no means, always with a judgement or pass over several instances. In some cases, the process terminated almost before starting. The reasons for the premature termination of trademark infringement proceedings are the following:

• Amount of the object value: if the infringement Court changes a high amount of the dispute, the costs for the company which lose the case increase significantly. A settlement becomes more attractive. However, the Court costs are low compared to the legal costs. It is therefore not surprising that this effect is statistically significant but actually relatively small.
   
• Pre-procedurally submitted deletion: another factor that can lead to a premature interruption of the process is the possibility for the accused trademark infringer to apply for a trademark cancellation action. A successful complaint proceeding could destroy the mark. The risk of deletion (partial or entire, in the worst case) may lead the applicant to consider a settlement.

Interim proceedings related to trademark infringements

A lawsuit could require some time. In urgent cases, an interim injunction provides interim relief. With an injunction, the trademark infringer may be prohibited from infringing the trademark if a license or order is threatened. As a rule, the Court of First Instance is responsible for the application for an interim injunction (in this case, therefore, the Patent and Trademark Litigation Chamber).

The interim injunction may be issued without consultation with the other party. If a provisional injunction proves to be unjustified, the opponent can assert a claim for damages against the applicant.

A third party threatened by an interim injunction may deposit a protective precaution. This can prevent a provisional injunction from being issued without prior consultation with the opposing party.

In fact, interim injunctions often result in trademarks or sign infringement. In many cases, evidences can also be substantiated by means of printouts from the internet, so that the trademark Courts often have only to examine the danger of confusion and thus the similarity of the related characters.

Penal proceedings related to trademark infringements

An intentional infringement of property rights is punishable by law.

There is the possibility of filing for a penal application. The criminal application must be submitted to the District Court within a period of three months after the offense has been reported (§ 77b German Penal Code -StGB).

The various Public Prosecutors’ Offices often apply particular laws for infringements of property rights. In defense of a criminal proceeding, special procedures may also be considered.