Despite the harmonisation of trade mark law in Europe over the past decades, significant differences between UK and German law are to be taken into account when it comes to trade marks.
The following article deals with some of the key differences from the German perspective.
Post-registration opposition proceedings
In contrast to the UK opposition proceedings, German opposition proceedings are held after a trade mark application is registered. This has two major consequences.
First, an opponent cannot delay the registration by filing an opposition. The applicant will, after the termination of the German Patent and Trade Mark Office’s examination and the publication of the registration, own a valid trade mark which the owner can use to take legal action against third parties. This advantage can make a German trade mark application more attractive than a European Union trade mark application whose registration may, as in the case of UK marks, depend on the rejection of a pre-registration opposition.
The second consequence is that the beginning of the five-year non-use grace period is not calculated from the German trade mark’s registration date but from the expiry of the three-month opposition period (provided that no opposition was filed). In cases where an opposition was filed, the start of the non-use grace period is postponed to the date on which the opposition proceedings are finally terminated. Since opposition proceedings before the German Patent and Trade Mark Office, as well as before the Federal Patent Court can take many years, it can be that a German trade mark registration is not subject to the use requirement for a period of eight, ten or even more years. A prominent example is the German Trade Mark Registration No. 30310673 Pelikan which has been registered in 2003. However, due to an opposition that has been pending since 2003, the trade mark cannot be challenged currently on the grounds for non-use before even though the mark has been registered 20 years ago.
Formal cease-and-desist declaration
There are three major differences concerning formal cease-and-desist declarations under German law. First, there is no legal basis for requesting the execution of a formal cease-and-desist declaration if an applicant withdraws the contested trade mark application and has not started using the objected sign.
Second, if the owner of the younger mark has been using it, the undertaking to cease and desist from using a sign needs to be accompanied by an undertaking to pay a contractual penalty fee for each case of contravention in order to satisfy the trademark owner’s legal claim for cease-and-desist. The mere undertaking not to use the sign at issue in the future is insufficient under German law because the breach of this obligation would have no severe consequences for the undertaking party. In many cases, agreeing on a contractual penalty fee of EUR 5,000 is considered to be an appropriate penalty for a first breach of the obligation to cease and desist from using a sign.
Finally, the obligation to cease and desist from using a sign implicitly regularly includes the obligation to recall products featuring the sign from the distribution channels. This means that a party signing a cease-and-desist letter is in most cases obliged to contact its distributors and even the latter’s direct and indirect distributors to recall the products. It goes without saying that such a recall most often not only requires substantial financial resources since the commercial partner’s expenses and the paid purchase price need to be reimbursed but also that such recalls are likely to negatively affect the business relationship between supplier and distributor.
No transfer of domain names
Under German trade mark law, there is no statutory basis for requesting the transfer of a domain name where the use of the domain has infringed another party’s trade mark. In addition, the release of a domain can only be requested if the domain infringes the “name right” of a company or an individual. Therefore, if the domain is similar to a sign that is protected as a trade mark but this mark is not the name of the company or the individual owning the trade mark, it can only be requested that the domain shall not be used anymore in an infringing way for similar goods or services and/or, if applicable, in a way that it is detrimental to the reputation of the earlier trade mark. However, independently from German law, alternative domain name dispute proceedings such as UDRP proceedings may be available that allow a transfer of the domain and it is therefore worth checking with us if the goal of having an infringing domain transferred to the owner of an earlier mark can be achieved through this route.
German company name rights
German law distinguishes between trade marks and company name rights. Company name rights are unregistered rights acquired through use in Germany. Since the mere use of a company name in Germany is sufficient to establish a company name right, foreign companies actually doing business under their company name in Germany may easily acquire German company name rights through use. In general, the underlying provisions regulating a likelihood of confusion between company name rights are similar to those for trade marks. However, instead of comparing goods and services, the sectors in which the companies are active are compared to each other. This may provide a greater flexibility to confirm a company name right infringement than a trade mark infringement. The owner of a company name right also does not have to provide extensive proof of use as may be the case for trade marks.
Despite being different rights, there are many interconnections between company name rights and trade marks. Even though the use of a sign exclusively as a company name never infringes an earlier trade mark, constellations may arise where a company name is simultaneously used as an indication of commercial origin and may infringe a trade mark.
In contrast, most often, the use of a trade mark may infringe an earlier identical or similar company name right.
German title rights
A German title right protects the title of a work of art and serves in most cases only to distinguish one work from another work. Works of art are, for instance, films, books, and songs but also software including computer game software. Title rights are unregistered rights, but it is possible to publish the title with certain gazettes in order to be able to secure an early priority date. The costs for such publication are not high.
The use of a sign exclusively as a trade mark does not infringe an earlier work title rights, because the functions of both rights are different.
Vice versa, the use of a sign merely as a title does not infringe an earlier trade mark. Using a book title is therefore not automatically an infringement of an identical trade mark covering books. However, there are exceptions, and especially in cases where a title is used for a series of works, the use of a title may infringe a trade mark and one should therefore be careful when using a title.
We can provide valuable assistance on all of the above issues and please feel free to contact us if you have any questions.
Read this blog in German.
This blog was originally written by Stephan Hoefs.
