Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

In addition to the administrative and court proceedings outlined earlier, further court proceedings are possible to enforce the rights of a trade-mark owner in the case of trademark infringement.

Irrespective of the value of the claim, only the regional (civil) courts are empowered to hear trademark disputes (at first instance). Trademarks matters are upon request of the plaintiff and handled by the commercial divisions (instead of the civil divisions) of the regional courts.

The trademark owner is entitled to bring an action before a competent regional court of law. The trademark owner may prohibit use of the conflicting sign and claim disclosure and seizure of unlawfully marked products. Further, the claimant may also request information about the infringing actions, and destruction or recall of the goods.

Administrative border-enforcement proceedings are possible with the customs authority.

Any natural person infringing the trademark may also be held liable under criminal law.

Procedural format and timing

What is the format of the infringement proceeding?

With the exception of cases including seizure claims, the claimant should send a warning letter to the defendant before applying for a preliminary injunction or filing an action with the competent court of law, requesting a declaration in which the defendant agrees to cease and desist from using the conflicting sign against a contractual penalty.

If the infringer does not comply with the request for cease and desist, the trademark owner can apply for an ex parte preliminary injunction with the competent regional court. In the case of trademark infringement, a preliminary injunction will only be granted if the applicant applies for it within one month (highly recommended) to two months (depending on the competent regional court) of becoming aware of the infringement and the infringer's identity. If the defendant does not accept the preliminary injunction as final, the trademark owner must bring a main course of action before the competent main court of law. Preliminary injunction proceedings are not compulsory. The trademark owner can also start with the main proceedings before the competent regional court of law.

Under civil law, the trademark owner may prohibit the use of the conflicting sign and claim disclosure and seizure of the infringing products.

The claimant is required to pay the court fees and to submit the action with the competent court. The court serves the action to the defendant and requests him to file a defence. They do then usually order an oral hearing. During this oral hearing, live testimony by witness or experts is allowed but there is no discovery such as the discovery proceedings in the United States.

The duration of proceedings depends on the circumstances of each case. An ex parte preliminary injunction usually is granted within a few days, in cases of special urgency, within a few hours. For main proceedings, the first instance usually takes one to two years. Any further and final distance may take another few years.

Any natural person infringing the trademark may also be held liable under criminal law. The intentional infringement of a trademark will result in a prison sentence of up to three years or a fine. Where the offender acts on a commercial basis or as a member of a gang formed for the purpose of continued trademark infringement, the prison sentence will range from three months to five years. Also, goods bearing an infringing sign may be confiscated at the request of the Prosecutor's Office.

Burden of proof

What is the burden of proof to establish infringement or dilution?

In infringement cases before the German courts, the plaintiff bears the burden of proving the infringement. If the plaintiff claims that the scope of protection of the trademark is extended owing to enhanced distinc-tiveness of the mark, he or she also has to prove that the distinctiveness of the trademark is enhanced by extensive use. Conversely, the defend-ant bears the burden of proof as to a possible reduction of the mark's distinctiveness.

The defendant also bears the burden of proof of a possible exhaustion. According to section 24 of the German Trademark Act, third parties may not be prohibited from using the trademark if goods and services under the mark have been put on the market by the trademark owner or with his or her consent in Germany or in an EU member state (exhaustion).

In short, the party relying on anything positive for themselves has the burden of proof.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Trademark infringement actions must be filed by the owner of the infringed trademark. A licensee can file an action for trademark infringe-ment on its own behalf with the trademark owner’s consent. A licensee is also allowed to file an action if he formally requests that the trademark owner files the action and the latest fails to respond within a reasonable period of time. All licensees have the right to accede to an infringement action filed by the trademark owner to request compensation for damages, unless the licence agreement provides otherwise.

A request for criminal prosecution must be filed by the trademark owner. Licensees have no right to request for criminal prosecution.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Trademark owners can record their trademarks with the customs authority (Zoll, www.zoll.de). Owners of German trademark registrations may file a national application on the basis of article 3, item 1 or 2 of Regulation (EU) No. 608/2013 or section 146 of the German Trademark Act, requesting the German customs authorities to take action in Germany. Owners of EU trademarks may file an EU application on the basis of article 3, item 1 or 3, article 4 of Regulation (EU) No. 608/2013 in any EU member state, requesting the customs authorities of that member state and any other member state to take action in their respective jurisdictions.

With the amendments of the German Trademark Act, under certain cir-cumstances, trademark owners can now have goods destroyed when they are under custom's supervision and are only intended for transit and not for import into Germany. This makes it much easier for trademark owners to fight against product piracy (eg, when counterfeit goods from the United States are in transit through Germany or on their way to Romania).

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

If there is a sufficient likelihood of a trademark infringement, the trade-mark owner can require the alleged infringer to present particular documents or request the inspection of an item that lies under the infringer's control.

Where there is sufficient likelihood of a legal infringement being committed on a commercial scale, the claim shall extend to the production of bank, financial or commercial documents. In this case, the alleged infringer may be sued by the trademark owner for production of bank, financial or commercial documents or provision of appropriate access to the relevant documents being under the alleged infringer’s control and which are necessary for enforcing the claim for compensation. The latest is only valid if there is doubt as to whether the claim for compensation will be satisfied in the absence of such production.

Special measures might be necessary in for confidential information.

Details are set forth in sections 19a and 19b of the German Tradmark Act.

Further, trademark owners may claim inspections of the goods in seizure proceedings with the customs. Details are set forth in section 146 of the German Trademark Act.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The duration of proceedings depends on the circumstances of each case. An ex parte preliminary injunction usually is granted within a few days, in cases of special urgency even within a few hours.

For main proceedings, the first instance usually takes one to two years.

Proceedings on appeal before the regional courts usually take one to two years. Appeals before the Federal Court of Justice may take two or three years.

Limitation period

What is the limitation period for filing an infringement action?

In general, any infringement actions are subject to a limitation period of three years, commencing at the end of the year in which the claim arises and the claimant obtains knowledge of the circumstances giving rise to the claim and the infringer’s identity, or would have obtained such knowledge had it not shown gross negligence (sections 195 and 199 of the Civil Code). Irrespective of any knowledge, the limitation period is in general 10 years.

Further, there might be a limitation in consequence of acquiescence which is in general five years. Details are set forth in section 21 of the German Trademark Act.

A request for a criminal infringement is in general five years. Any request for criminal prosecution must be filed within three months of the day on which the trademark owner becomes aware of the infringement and the infringer’s identity.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Generally, the costs depend on the value of the proceedings. In general, relevant values in trademark infringement matters are at least in the range of €100,000 and can be even higher.

The court fees for infringement actions (first instance) with a value of the claim of €100,000 are, for example, €3,078. The statutory lawyer's fees for both the plaintiff and the defendant lawyer are about €10,177, including the costs for preparing the trial and examination of the chances of success.

The costs for the appeal proceedings are slightly higher than these.

The winning party can request reimbursement of the costs fixed by law. As regards the attorney's fees, reimbursement is only possible on the basis of the Germans attorney's statute fees system irrespective on what has been agreed upon by the client and his lawyer.

Appeals

What avenues of appeal are available?

The first-instance decision of the regional court may be appealed to the respective higher regional court; the appeal must be filed within one month of service of the full decision of the first-instance court. The appellate court's decision may be appealed on points of law to the Federal Court of Justice.

Any official decision of the German Patent and Trademark Office might be appealed by either reconsideration (where possible) or by appeal proceedings with the German Federal Patent Court and the possibility to file appeals with the Federal Court of Justice.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

If the grace period for non-use of the registered trademark has expired, the infringer can request the trademark owner to prove that it has put its trademark to genuine use within the relevant period.

Further, the infringer may refer to the following defences:

  • the statute of limitations;
  • forfeiture of claims;
  • counterclaims (if the infringer holds prior rights);
  • exclusion of claims in the case of a trademark registration with a later priority date being final and absolute;
  • use of the trademark as the infringer's name or address or as a descriptive indication; and
  • exhaustion of the trademark owner's rights.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The trademark owner is entitled to claim:

  • an order for the infringer to cease and desist from using the conflicting sign;
  • the destruction and recall of unlawfully marked products;
  • disclosure of information about the infringing use of the conflicting sign;
  • damages; and
  • publication of judgments.

If the trademark owner claims damages, it is acknowledged by case law that such damages can be calculated by one of the following methods:

  • a claim for reimbursement of a specific loss, in particular the loss of profits;
  • a claim for account of profits made through the trademark infringement; or
  • a claim for the payment of royalties that would have been payable had the infringing party requested a licence to use the trademark (ie, licence-fee analogy).

Punitive damages are not allowed.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

There are no special ADR proceedings for trademark infringement cases in Germany. However, the general provisions of the Code of Civil Procedure regarding ADR techniques also apply to trademark infringement cases. Consequently, the ADR proceedings are possible in trademark infringement cases even though they are barely used in Germany.

There are also no special ADR proceedings foreseen for trademark infringements by .de domain names. The UDRP proceedings are not applicable for .de domains. Dispute entries can be lodged with DENIC.