Legal Protection of Trade Marks in Germany.

The trade mark is a sign, which is capable to distinguisch the goods or services of one undertaking from those of other undertakings (the legal definition of the German Act on the Protection of trade marks and other signs). Trade marks can be names, designs, three-dimensional designs, colours, sounds and other marks in combinations.

The trade mark is a subject of the legal protection with the registration of a trade mark in the DPMA Register of the German Patent and Trademark Office or if the trade mark is already used an recognised by public.

A trade mark can be protected as the european trade mark by registration in the european EUIPO-Register and as an IR-Mark by publication of the World Intellectual Property Organisation.

Legal codification of the trade mark law.

The national legal framework is the German Act on the Protection of Trade Marks (MarkenG), the German Trade Mark Regulation (MarkenV) and the German Act against Unfair Competition (UWG). The european legal basis for the trade mark protection is the Regulation (EU) 2017/1001 on the European trade Mark (EU Trade Mark Codification). The international legal framework for the trade mark protection is the Madrid Agreement Concerning the International Registration of Marks (MMA/1891) and the Protocol relating to the Madrid Agreement (PMMA/1989).

Trade mark as a protected right.

The trade mark should be legally non-contestable, to provide the rights continiously to the owner or the Licensee. Trade marks are legally consistant, if there are no absolute or relative grounds for refusal according to the §§ 8 ff. MarkenG. 

The absolute grounds for refusal are if the mark is devoid of any distinctive character for the goods or services or if the mark is just a description of characteristics of goods or services. The relative ground for refusal is the similarity to the registered or recognised marks.   

The similarity between trade marks is often a subject of legal disputes. For this reason the applicant should make the trade mark database research before the registration and the use of the trademark. Most relevant are the DPMA-, EUIPO-, WIPO- databaises as well as trade, domain and media databases, to ensure there are no similar trade marks. The similarity is especially to avoid within the same product or service group.

Interim injunction proceedings in trade mark law. 

If a trade mark infringement is actually taking place or is impending, the trade mark protection can be claimed as an interim injunction according to the §§ 935 ff. ZPO, § 140 MarkenG. The interim injunction proceedings make possible to get a court decision on the fact of the infringement within a short period of time, mostly within few days.  

Lawsuit proceedings in trade mark law. 

In civil proceedings the right holder has several legal options: The infringement action, the destruction and the recall action, the cancellation action. The defendant can have, at the same time, the option of filing a counterclaim, to annul a trade mark.

The infringement action aims to prohibit the infringement and to claim the damages as an economic value of the trade mark for the period of the infringement. The action for discontinuance can be based on the § 14 MarkenG or on the §§ 4, 8 UWG.

The destruction action aims the destruction of the illegally marked goods, owned by the infringer. The recall action aims the recall and the removing or the illegally marked goods from the distribution channels.

Legal summary. 

The Civil Law offers several legal options to protect the existing trade mark efficiently. It is important to substantiate the trade mark rights before the trade mark is registered or placed and to monitore the trade mark regulary, to ensure the legal continuance.

The Law Company FAITZER advices on protection of industrial property rights, supports strategy research and dispute resolution. 

Author: Attorney Yana Krause 

Law Company FAITZER

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