What is the primary legislation governing trademarks in your jurisdiction?
The relevant law is the German Trademark Act, which came into force on January 1 1995 and was last amended in 2016.
Which international trademark agreements has your jurisdiction signed?
The most relevant international trademark agreements are:
- the Paris Convention for the Protection of Industrial Property;
- the Agreement on Trade-Related Aspects of Intellectual Property Rights;
- the Madrid Agreement;
- the Protocol relating to the Madrid Agreement;
- the Nice Agreement;
- the Vienna Agreement;
- the Arrangement of Madrid for the Prevention of False Indications of Origin on Goods;
- the Trademark Law Treaty;
- the Singapore Treaty on the Law of Trademarks; and
- the World Intellectual Property Organisation Convention.
Which government bodies regulate trademark law?
The German Patent and Trademark Office is the central authority in the field of IP rights protection.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Ownership of a trademark is determined on a first-to-file basis.
What legal protections are available to unregistered trademarks?
If unregistered trademarks are protected by the German Trademark Act, their protection is generally equal to the legal protection of registered trademarks. However, if a sign has acquired a reputation only within a certain area in Germany, protection is limited to that area. In this case, the trademark owner’s legal remedies are also limited to that area – that is, the trademark owner may not prohibit use in Germany outside that area and may not file oppositions or cancellation applications against younger registered trademarks.
How are rights in unregistered marks established?
Rights in unregistered trademarks are established if a sign that has been used in commerce as a trademark for the relevant goods and services has acquired a reputation among the relevant public.
Are any special rights and protections afforded to owners of well-known and famous marks?
Under German trademark law, infringement of a famous or well-known trademark can be established based not only on the identity of the relevant signs and associated goods or services and a likelihood of confusion, but also on the grounds that the younger sign – without due cause – takes unfair advantage of or is detrimental to the distinctive character or reputation of the earlier well-known or famous trademark.
A trademark that has gained notoriety as such within the meaning of Article 6bis of the Paris Convention enjoys full trademark protection in Germany, irrespective of its registration status or the scope of its use in Germany.
To what extent are foreign trademark registrations recognised in your jurisdiction?
A foreign trademark registration that is not used in German territory may enjoy protection under German trademark law only if it constitutes a notoriously well-known trademark within the meaning of Article 6bis of the Paris Convention.
A foreign trademark registration that has not been registered with the German Patent and Trademark Office, but which has been put to use in Germany, may enjoy protection under German trademark law if it has acquired a reputation through use.
In addition, if a third party registers a foreign trademark which is not protected by German trademark law with the German Patent and Trademark Office, the holder of the foreign trademark registration may base claims against the third party on its violation of the German Act against Unfair Competition.
What legal rights and protections are accorded to registered trademarks?
A trademark registration grants the trademark owner the exclusive right to use the trademark for the goods and services for which it is registered and to prevent third parties from using an identical sign for identical goods or services and from using an identical or similar sign for identical or similar goods and services if there is a likelihood of confusion. The trademark owner may file oppositions or requests for cancellation and revocation against trademarks that have been registered in violation of its earlier rights. In case of trademark infringement, the trademark owner may file an action with the competent court of law claiming:
- 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 the judgment.
Who may register trademarks?
Any natural person, legal entity or partnership (to the extent that the partnership has the capacity to acquire rights and incur liabilities) may own a trademark.
What marks are registrable (including any non-traditional marks)?
In general, any sign capable of being represented graphically may be protected as a trademark if it is also capable of distinguishing the goods or services of one undertaking from those of other undertakings (Section 3 of the Trademark Act), including:
- words (including personal names), designs, letters and numerals;
- sound marks;
- three-dimensional designs, including the shape of goods or their packaging; and
- colours and combination of colours.
However, the requirements relating to the trademark's ability to be represented graphically will be lowered with the upcoming implementation of EU Directive 2015/2436, after which it will be sufficient if the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This will make it easier to protect non-traditional trademarks. Nevertheless, the German Patent and Trademark Office will still carefully determine whether such non-traditional trademarks will be perceived by the relevant public as an indication of origin and not merely as decoration.
Can a mark acquire distinctiveness through use?
Trademarks that lack inherent distinctiveness, are descriptive or constitute generic terms can acquire distinctiveness through use. A trademark owner that wants to rely on acquired distinctiveness must prove that the trademark is perceived by the relevant public as having acquired a secondary meaning as a trademark due to its use in commerce in Germany.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
Only absolute grounds for refusal will be assessed ex officio by the German Patent and Trademark Office during the examination procedure. The most important absolute grounds for refusal are if the trademark:
- is devoid of any distinctive character;
- consists exclusively of signs or indications which may serve, in business, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or the rendering of the services, or to designate other characteristics of the goods or services;
- consists exclusively of signs or indications which have become customary in day-to-day language or in the bona fide and established practices of the business for designating goods or services;
- is of such a nature as to mislead the public;
- violates the public order or the generally accepted principles of morality; or
- has been applied for in bad faith.
With the exception of notoriously well-known trademarks within the meaning of Article 6bis of the Paris Convention, relative grounds for refusal (ie, prior rights of third parties) will not be examined ex officio by the German Patent and Trademark Office.
Are collective and certification marks registrable? If so, under what conditions?
Collective marks are registrable under German trademark law. The registration of a collective mark must meet the following conditions:
- Only signs that are capable of being represented graphically within the meaning of Section 3 of the Trademark Act may constitute a collective mark.
- The sign must also be capable of distinguishing the goods or services of the members of the holder of the collective trademark from those of other undertakings in terms of corporate or geographical origin, nature, quality or other properties.
- In general, absolute grounds for refusal apply to collective trademarks. However, collective trademarks may also consist exclusively of signs or indications which may serve in trade to designate the geographical origin of the goods or services.
- Ownership of a collective trademark is limited to associations with legal capacity, including umbrella and head associations with legal capacity and whose members are themselves associations, and legal entities governed by public law.
- The application for a collective trademark must be accompanied by regulations governing the use of the trademark.
German trademark law does not yet provide protection for certification marks. The recently adopted EU Directive 2015/2436 grants member states the right – but not the obligation – to implement rules concerning certification marks.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Agents need a power of attorney signed by the applicant or owner. No notarisation or legalisation is required.
Filing the power of attorney is not necessary if the applicant or owner is represented by a German lawyer or patent attorney. Representatives other than German lawyers or patent attorneys should submit a power of attorney.
What information and documentation must be submitted in a trademark registration application?
The minimum information and documentation that must be filed to receive an official confirmation of the filing date are:
- data identifying the applicant;
- a representation of the trademark; and
- a list of goods and services for which registration is sought.
In general, the application form must be completed and the official application fee must be paid within three months of the application date. The amount to be paid must be stated in the application form and the applicant must indicate the preferred method of payment.
The application form must further contain:
- the full name and address of the applicant and its agent (if applicable), as well as the full name and address plus telephone and fax numbers of the contact person to whom the German Patent and Trademark Office will address all further correspondence (and an indication of whether this contact person is the applicant or the agent);
- the filing date of the application;
- a representation of the mark and a stipulation of whether the trademark is applied for in black and white or in colour (if so, the colours should be specified);
- an indication of the type of the trademark (eg, word mark, device mark, word and device mark, three-dimensional mark, sound mark, collective mark or any other type of mark); and
- a list of goods and services specified according to classes.
Applicants can request accelerated examination, which is subject to a surcharge of €200. If priority is claimed, the number, date and country of the earlier trademark application(s) or registration(s) must be indicated together with the relevant goods and services.
What rules govern the representation of the mark in the application?
The representation of the trademark must be clear, precise and represented graphically. Details depend on the form of the trademark. Most registrable trademarks can easily be represented graphically (eg, words, numbers, graphical devices and three-dimensional shapes). Sound marks must show sound sequences. Tactile marks can be represented graphically by describing their haptic characteristics.
Difficulties occur when applying for scents and tastes, as these cannot be represented graphically. In practice, most of these applications are refused.
Details are set out in Sections 32(2) and (3) of the Trademark Act and Sections 6 to 12 of the Trademark Regulation.
Are multi-class applications allowed?
Multi-class applications may be filed for both goods and services.
Is electronic filing available?
Applications can be filed online through the German Patent and Trademark Office's DPMAdirekt service. The DPMAdirekt application software is free of charge and can be easily downloaded.
What are the application fees?
The official application fee is €300 (€290 for electronic filing) for an application in up to three classes. Each additional class is subject to an additional fee of €100.
The applicant may choose to pay a fee of €200 for accelerated examination.
There is no official fee for claiming a foreign priority.
How are priority rights claimed?
When claiming priority, the date and country of the earlier application or registration must be indicated. It must be clear whether priority is claimed for all goods and services or only parts thereof. The number of the relevant application and the priority documents (no legalisation or notarisation needed) must be submitted within two months of receipt of the corresponding request by the German Patent and Trademark Office. If necessary, a translation into German must be submitted one month after the date of claiming priority.
Priority can be claimed only within six months of the application date for the trademark whose priority is claimed.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
There is no official search for earlier trademark registrations and applications. However, even if the German Patent and Trademark Office does not check ex officio whether there are any earlier trademarks, it is highly recommended to conduct a search in order to better evaluate the risks of possible infringement of other parties' earlier rights. In doing so, German trademarks as well as EU trademarks and international registrations covering either Germany or the European Union should be considered. The official database of the German Patent and Trademark Office – DPMAregister – is accessible free of charge.
To be on the safe side, older trade names, title rights, domains and the like should also be included in the search.
What factors does the authority consider in its examination of the application?
First, the German Patent and Trademark Office examines whether the application meets all formal requirements and whether the official application fee has been paid (it must be paid within three months of the application date).
If the application meets all formal requirements, the German Patent and Trademark Office will then check for absolute grounds of refusal.
Details are set out in Section 8 of the Trademark Act.
Does the authority check for relative grounds for refusal (eg, through searches)?
With the exception of notoriously well-known trademarks under Article 6bis of the Paris Convention, the German Patent and Trademark Office does not check for relative grounds for refusal, but rather leaves it to the owner of older trademarks to act against new registrations by way of opposition or cancellation proceedings.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
If not all formal requirements are met (eg, regarding the details of the applicant, the representation of the trademark or the list of relevant goods and services), the German Patent and Trademark Office will allow the applicant to rectify the application accordingly. If the applicant does not remedy the deficiency by the deadline set or at least requests an extension of the deadline, the application will be deemed not to have been filed.
If the German Patent and Trademark Office cites any absolute grounds for refusal, it will invite the applicant to submit a comment in response within a prescribed timeframe – usually one month for applicants which have their residence, registered office or place of business in Germany and two months for applicants from abroad. Extension requests are possible. If no statement is submitted within the specified period or the statement fails to convince the German Patent and Trademark Office of the mark’s registrability, the application will be refused.
Can rejected applications be appealed? If so, what procedures apply?
Rejected applications can be appealed by lodging an appeal with the Federal Patent Court within one month of notification of the rejection. The official fee is €200. An oral hearing can take place, but is not compulsory.
In some cases in which certain examiners (depending on their service grade within the German Patent and Trademark Office) reject the application, the applicant can either directly lodge the appeal with the Federal Patent Court or file a request for reconsideration with the German Patent and Trademark Office. The official fee for reconsideration proceedings is €150. No oral hearing takes place. An appeal against any negative decision in these reconsideration proceedings can be lodged with the Federal Patent Court within one month of the notification date (the official fee for which is €200).
If the Federal Patent Court rejects the application and allows a further appeal, a final appeal on a point of law can be filed with the Federal Court of Justice within one month of the notification. The grounds must be filed within one month of filing the appeal with the Federal Court of Justice. The Federal Patent Court must admit the appeal on a point of law if a legal question of fundamental importance and further development of the law or safeguarding the uniformity of case law requires a decision of the Federal Supreme Court. In the event of any serious procedural violations (eg, the lack of a right of audience), the appeal on a point of law is possible without the Federal Court of Justice's admission.
When does a trademark registration formally come into effect?
In general, a trademark formally comes into effect upon registration. If the sign has acquired a reputation as a trademark among the relevant public, the trademark becomes effective with the acquisition of a reputation. According to Article 6bis of the Paris Convention, notoriously well-known trademarks become effective once they become notoriously well known.
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years. In particular, it starts on the application date and ends after 10 years on the last day of the month in which the application date falls.
Registration can easily be renewed for further 10-year periods. The number of renewals allowed is unlimited (as compared to designs and patents). The only requirement is payment of the official renewal fee, amounting to €750 plus additional class fees for any classes beyond the first three classes (€260). The trademark owner must ensure that the German Patent and Trademark Office can allocate the payment to the trademark by indicating the registration number, the name of the trademark owner and the purpose of payment (ie, renewal).
It is not necessary to renew the trademark for all classes or all relevant goods and services. However, in this case the renewal request should make clear the goods and services and classes for which the trademark is to be renewed.
Renewal fees can be paid during the last year of protection or six months after expiry of protection at the latest. If payment is made within the six months after expiry of protection, there will be no surcharge within the first two months, but a surcharge of €50 for the first three classes and €50 for each class beyond three classes will apply during the last four months.
What registration fees apply?
There are no official registration fees.
What is the usual timeframe from filing to registration?
There are no strict rules as to the timeframe. In our experience, it takes between six weeks and nine months to obtain registration, provided that all formal requirements are met and there are no absolute grounds for refusal. The average time is currently 3.1 months. It is possible to expedite the registration process by requesting the acceleration of proceedings, subject to payment of an extra fee of €200.
The earlier that registration fees are paid, the sooner the German Patent and Trademark Office will start the examination. Although fees can be paid within three months of filing the application, payment on the application date is recommended.
If all requirements are met, the trademark will be registered and the applicant will receive a registration certificate. The registration is published in the electronic Trademark Journal. Oppositions may be filed within a non-extendable term of three months from the date of publication of the registration.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
The non-extendable three-month opposition period starts with publication of the registration of the trademark. The opposition must be filed in writing with the German Patent and Trademark Office and contain information on the basis of the opposition, the opposed trademark, the extent of the opposition and the identity of the opponent. An opposition can be based on one trademark only. If the opponent bases its opposition on several trademarks, separate opposition forms must be filed and the €120 opposition fee must be paid for each separate opposition.
The opposition can be based on all older trademark registrations and applications in Germany (including German trademarks, EU trademarks and international registrations designating Germany or the European Union).
Oppositions can be based on older identical or similar trademarks for identical or similar goods and services. The likelihood of confusion includes the danger of association. If the opponent's trademark is a famous or well-known trademark in Germany, a similarity of goods and services might not be necessary, if use of the younger trademark takes unfair advantage of or is detrimental to the distinctive character or reputation of the older trademark.
An opposition can also be based on the fact that the opposed younger trademark was registered in the name of an agent or representative without the consent of the real owner.
Further, an opposition can be based on older rights (eg, trademarks acquired by use or trade designations) entitling their holders to prohibit the use of the opposed trademark throughout the territory of Germany.
Finally, the opponent can also rely on notoriously well-known trademarks according to Article 6bis of the Paris Convention.
Most oppositions are based on a likelihood of confusion.
What is the usual timeframe for opposition proceedings?
The non-extendable deadline to lodge oppositions is three months from publication of the registration. There are no strict deadlines thereafter. It is not even necessary to submit a statement of grounds for opposition, although it is highly recommended and common to do so. Usually, there are two rounds of short submissions. The time and effort required may be higher where the opponent must prove the use of the trademark (only on the request of the owner of the contested trademark after the grace period of use expires). There is no oral hearing.
It usually takes at least around one year for the German Patent and Trademark Office to issue its decision.
Are opposition decisions subject to appeal? If so, what procedures apply?
Opposition decisions are subject to appeal. Again, directly lodging an appeal with the Federal Patent Court is possible within a non-extendable period of one month from notification (an official fee of €200 applies). Depending on the grade of the relevant examiner, it is also possible to file a request for reconsideration with the German Patent and Trademark Office (subject to an official fee of €150 and a one-month deadline) as a first step and subsequently to appeal against the reconsideration to the Federal Patent Court.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
A trademark can be cancelled for non-use on request if (after registration) it has not been put to genuine use for a continuous five-year period preceding the cancellation request.
Any natural person or legal entity is entitled to file a request for cancellation due to non-use of the registered trademark. The request can be brought before the German Patent and Trademark Office or the competent court of law. If the request is filed with the German Patent and Trademark Office, the trademark owner will be requested to inform the German Patent and Trademark Office whether it objects to the cancellation. If the trademark owner fails to object to the cancellation action within two months of service of the notification, the registration will be cancelled. If the trademark owner objects to the cancellation, the German Patent and Trademark Office will inform the applicant that its application for cancellation will have to be made through an action before a court of law. The plaintiff bears the burden of proving that the trademark owner did not put its trademark to genuine use. The trademark owner must also provide evidence of genuine use of its trademark if the plaintiff's action conclusively assumes that the mark has not been used.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark registration can be revoked if:
- the trademark has become a generic term for the goods or services for which it is registered; or
- as a consequence of the use made of the trademark by its owner or with its consent in respect of the goods or services for which it is registered, the trademark is liable to mislead the general public, particularly as to the nature, quality or geographical origin of those goods or services.
Further, a registered trademark can be cancelled for invalidity based on absolute and relative grounds for refusal.
Who may file a request for revocation and what is the statute of limitations for filing a request?
A request for cancellation due to absolute grounds for refusal can be filed by any natural person or legal entity. An action for cancellation based on earlier rights may be brought only by the holders of the prior rights or a licensee with the approval of the trademark owner.
With the exception of requests for cancellation based on the trademark’s lack of distinctiveness, descriptive character or generic description – which must be filed within 10 years of the registration date – there is no statute of limitations for filing such requests. However, a trademark registration may not be cancelled on the grounds of prior trademark rights if the holder of the prior trademark right has tolerated, for five consecutive years, the use of the younger trademark for goods or services for which it is registered, having knowledge of such use, unless registration of the younger trademark was applied for in bad faith.
What are the evidentiary and procedural requirements for revocation proceedings?
If an application for cancellation due to absolute grounds for refusal is filed or cancellation proceedings have been instigated ex officio, the German Patent and Trademark Office will accordingly notify the owner of the registered trademark. If the trademark owner fails to object to cancellation within two months of service of the notification, the trademark registration will be cancelled. If the owner objects to cancellation, cancellation proceedings will commence. Such proceedings are determined by the principle of official investigation. However, the applicant has the burden of proof for all of the facts which are not ascertainable by an official investigation, but which could prove absolute grounds for refusal.
In the event of an application for cancellation due to prior rights, the plaintiff must bring an action before the competent court of law and bears the burden of proof for holding a prior right that has been infringed by the younger trademark registration.
What is the appeal procedure for cancellations or revocations?
Decisions of the German Patent and Trademark Office concerning revocation or cancellation proceedings may be appealed to the Federal Patent Court. Appeals have a suspensive effect and must be filed within one month of service of the decision.
Decisions of the regional court concerning revocation or cancellation proceedings may be appealed to the respective higher regional court. Such an appeal must be filed within one month of service of the decision.
What is the procedure for surrendering a trademark registration?
Registration of the trademark will be cancelled in the register at the owner's request in respect of all or part of the goods or services for which it is registered, and at any time.
Which courts are empowered to hear trademark disputes?
Irrespective of the value of the claim, only the regional (civil) courts are empowered to hear trademark disputes (at first instance).
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Under civil law, 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 by way of an ex parte preliminary injunction. If the defendant does not accept the preliminary injunction as final, the trademark owner must bring an action before the competent court of law.
In the event of trademark infringement, a preliminary injunction will be granted only if the applicant applies for it within one to two months (depending on the competent regional court) of becoming aware of the infringement and the identity of the infringer.
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.
The 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.
Who can file a trademark infringement action?
Trademark infringement actions must be filed by the owner of the infringed trademark. A licensee can file an action for trademark infringement on its own behalf only with the trademark owner’s consent. However, all licensees have the right to accede to an infringement action filed by the trademark owner in order to request compensation for damages, unless the licence agreement provides otherwise.
What is the statute of limitations for filing infringement actions?
Claims for damages and injunctive relief 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). However, the statutory limitation period for claims on the basis of unjustified enrichment is 10 years.
A 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.
What is the usual timeframe for infringement actions?
The duration of proceedings depends on the circumstances of each case. For main proceedings, the first instance usually takes one to two years.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The trademark owner may prohibit use of the conflicting sign and claim disclosure and seizure of unlawfully marked products by way of an ex parte preliminary injunction. If the defendant does not accept the preliminary injunction as final, the trademark owner must bring a main course of action before the competent court of law.
In the case of trademark infringement, a preliminary injunction will be granted only if the applicant applies for it within one to two months (depending on the competent regional court) of becoming aware of the infringement and the infringer’s identity.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
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.
What customs enforcement measures are available to halt the import or export of infringing goods?
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 EU Regulation 608/2013 or Section 146 of the 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 EU Regulation 608/2013 in any EU member state, requesting the customs authorities of that member state and any other member states to take action in their respective jurisdictions.
What defences are available to infringers?
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:
- 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.
What is the appeal procedure for infringement decisions?
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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
Trademarks can be sold and bought; they can be assigned as a whole or in part (after division).
Even though the validity of an assignment does not depend on its entry in the register, the entry of the new owner in the register is highly recommended. Otherwise, difficulties or at least delays may arise in the enforcement of the trademark rights.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
Trademark owners are allowed to grant trademark licences, either exclusive (in which case the owner must clarify whether it will be entitled to use the trademark on its own alongside the licensee or only the licensee will be entitled to use the trademark) or non-exclusive (in which case there may be several coexisting licensees). The licence may be granted for all of the trademark’s designated goods and services or only parts thereof, and for the whole or part of the German territory.
Trademark licences cannot be recorded in the official register. They have legal effect if they are valid and comply with antitrust law.
Licensees are not allowed to take infringement actions without the owner's consent.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
The following provisions are typically included:
- provisions on the scope of the granted licence (eg, for all goods and services or only parts thereof, exclusive or non-exclusive, right to grant sub-licences);
- provisions on the licensed territory (all or part of the German territory);
- provisions on the licence fee;
- the terms of the agreement and grounds for termination;
- provisions on the defence of the licensed trademark in case of infringement;
- a non-aggression clause; and
- quality control clauses.
Although the licensing agreement need not be concluded in writing, it is highly recommended to do so in order to prevent any disputes from arising and to more easily prove that use of the trademark by the licensee only constitutes use by the licensor.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
A security interest can be registered over a trademark.
According to Section 29 of the Trademark Act, liens on a trademark or the subjection of the trademark to enforcement actions may be recorded in the official register on request. It is highly recommended that they be recorded.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Device marks may also be registered as designs and enjoy copyright protection, depending on the degree of their creativity. While German design protection is afforded only to registered designs (in contrast to the protection afforded to non-registered European designs), copyrights in Germany are unregistered rights. Copyright protection may also be available for very creative slogans. In some circumstances, the law against unfair competition could also apply.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
Domain names may be protected as trademarks, provided that the sign meets the general conditions for registration. The mere registration of a domain name does not grant the registrant an exclusive trademark right in the domain name. Such an exclusive right in the domain name can be established only if the domain name is also used as either a trademark – which means that the relevant public will perceive the sign not only as an address for a certain website, but also as an indication of origin for the goods and services offered through that website, if the owner has acquired a reputation through use of the trademark – or a company symbol. If it is used as a trademark, the use of the domain name may constitute genuine use of a registered trademark.
The country-code top-level domain (ccTLD) for Germany is ‘.de’. It is administered by the German Network Information Centre (DENIC) on a first come, first served basis. DENIC does not offer Uniform Domain Name Dispute Resolution Policy proceedings for the ‘.de’ ccTLD.
The Trademark Act grants the trademark owner protection against trademark infringements conducted online, in particular by way of cyber or typosquatting. If the ‘.de’ domain name used by the infringer constitutes trademark infringement, it is possible to have the domain name locked during the proceedings by filing an application for recordal of a so-called ‘dispute entry’. The principles applied by the courts for domain name disputes are generally identical to those applied to trademark infringement disputes. Therefore, the owner may in particular claim for an order that the infringer cease and desist from using the conflicting domain name for the goods or services causing a likelihood of confusion.
It is not possible to claim for transfer of a domain name. If the claim is based on a well-known trademark, the cancellation of the domain name may be requested. Owners of trademarks that are not well known may claim cancellation of the domain name only on the basis of the Act against Unfair Competition.