I previously discussed the dilemma the German Football Association (Deutscher Fussballbund or DFB) is due to a potential trademark violation of its well-known eagle logo. The regional court in Munich issued a decision on August 7, 2014 and sided with the DFB, finding that Real violated the DFB’s trademark by selling fan accessories with an obviously similar eagle symbol. Even though the court backed the DFB’s position in this instance, the controversy is long from over as the court did not make a determination of whether or not the DFB had the right to register the eagle logo as a trademark in the first place.
According to German trademark law (§ 8 Abs. 2 Nr. 6Markengesetz) it is prohibited to monopolize national symbols for financial gain. According to Real, the German trademark office should not have granted the DFB’s initial application since the eagle logo too closely resembles the one found on Germany'sfederal coat of arms. Real has already petitioned to the German trademark office to revoke the rights to the eagle logo, however, until a decision is reached and the trademark is in fact revoked, the court has to rely on the existing (valid) trademark registration and the apparent determination by the trademark office that there is no resemblance of the DFB eagle and Germany’s federal coat of arms symbol.
Even though this dispute does not have a direct impact on most businesses, it is an example of why it is important to properly protect your trademarks and other intellectual property (IP) rights. This does not only apply for large companies but also for smaller and mid-sized enterprises in the U.S. as well as in the global market. In general, IP owners can lose sales due to IP infringements, suffer damages to their brands and goodwill, and lose revenue through missed licensing and product sale opportunities. It is therefore very important to consult with experienced counsel, and weigh the pros and cons (usually the cost of registration) of registering the trademark or IP in the markets where you are transacting business and your IP is exposed before accessing the desired market.