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Enforcement

Jurisdiction

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).

Actions

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.

Injunctions

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.

Remedies

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.

Customs enforcement

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 (Zollwww.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.

Defence

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.

Appeal

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.

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