Civil litigationi Forums
Regional courts are exclusively competent as courts of first instance for civil trademark litigation. Regional courts specialised in trademark litigation have been established, thus guaranteeing that highly qualified judges with expertise in intellectual property law are handling trademark cases.
In Germany, the relatively high number of 18 regional courts serve as EU trademark courts of first instance. They are the competent courts when it comes to actions for infringement or threatened infringement of an EU trademark, actions for a declaration of non-infringement, actions for compensation under the EU Trade Mark Regulation and for counterclaims of revocation or invalidity of an EU trademark.ii Pre-action conduct
German trademark and civil procedure law does not require pretrial formalities for a claim to be admissible. Claimants, however, should consider sending out warning letters or cease-and-desist letters before going to court. If they file a claim without having served the defendant with a warning letter and the defendant instantly acknowledges the claims brought against him or her, the claimant bears the costs of the court proceedings as, in this case, the defendant had not given rise to be sued; this is in contrast to the general rule according to which the defeated party bears the costs. Parties fearing that an ex parte injunction may be ordered against them may submit their position on the subject to a central register for protective briefs.
Alternatively, trademark disputes may be settled by arbitration and other procedures of alternative dispute resolution. Although associations such as the German Arbitration Institute provide support for the conduct of arbitration-related tasks in Germany, and an arbitration award has the same inter-party effect as a final and binding judgment handed down by a court, such litigation alternatives are rarely used in Germany. Alternative dispute resolutions concerning domain names can be fought out before general arbitrators, as German law does not provide for a specific arbitration or alternative dispute resolution mechanism for domain names. Neither does the WIPO Center offer dispute resolution services for .de domains.iii Causes of action
As the competent courts for trademark infringements are – specialised as they may be – ordinary regional courts, they are also competent for unfair competition, domain names and commercial designation disputes. All these types of disputes may be brought before the court in one and the same proceeding, be it as part of the statement of claim, by extension of a claim or a counterclaim, provided that the parties are the same and the court is territorially competent to hear all disputes.iv Conduct of proceedings
Proceedings commence with filing a written statement of claim. The claimant must present all factual and legal grounds to substantiate his or her claim. Evidence must either be submitted (e.g., as annex) or ‘offered to be provided’ (i.e., the written submission announces the introduction of evidence if the fact to be proven remains disputed). The defendant will then submit a written statement of defence. Replies and rejoinders may follow. Since trademark matters are heard by regional courts, parties must be represented by a professional practitioner (i.e., a member of the Bar). Upon the first oral hearing before the court, the judge will only discuss the factual and legal points of the case that he or she deems to be crucial for his or her decision. Upon prior written court order for evidence, the parties may be asked during the hearing to present evidence they had offered within their submissions, such as witnesses or expert opinions. Usually the judge will indicate which arguments he or she considers to be more convincing. In many cases, the court will try to facilitate leading the parties to an amicable resolution of the legal dispute. If an amicable settlement cannot be reached and the dispute does not require further submissions or oral hearings, the court is supposed to pronounce its decision within three weeks of the last oral hearing. In the case of lengthy and complex matters, however, the court may take more time to draft its decision. German procedural law follows the principle that the party that has not prevailed in the dispute is to bear the costs of the legal dispute. Costs have to be shared proportionately if and when each of the parties has prevailed for a part of its claim or defence. With regard to the attorney fees, the extent of the costs to be compensated is capped. Only statutory fees and expenditures of the attorney of the prevailing party are to be compensated. Actual fees are often higher than the statutory fees, as the latter serve as legal minimum.
German procedural law does not provide for pretrial discovery nor does it entail full disclosure proceedings. Nevertheless, German courts may allow evidence to be introduced that was previously gathered by way of a discovery or disclosure proceeding outside the German jurisdiction.v Remedies
Courts may order remedies, such as cease-and-desist orders, damages, claims for disclosure of information, claims for destruction and claims for publishing the court’s judgment. The latter rarely happens in practice. German law does not provide for punitive damages to be awarded. With regard to damages for trademark infringement, the claimant may choose the method by which the actual damage is calculated. He or she can decide to calculate the damage based on a licence analogy, claim the profit the defendant made as a result of the trademark infringement or estimate the profit he or she lost due to the trademark infringement.
In recent cases, the BGH has, based on a cease-and-desist claim, ordered the infringer to recall the infringing products. These rulings were heavily criticised because, according to German law principles, cease-and-desist claims generally do not entail an obligation to act. A respective case before the constitutional court is pending. It is not possible to foresee the extent to which the BGH’s case law on recall claims will remain valid in the future.
Other enforcement proceedings
Intentional trademark infringements are punishable under German criminal law with imprisonment of up to five years or a fine. In the course of criminal proceedings, infringing products may be secured by seizure. The trademark owner may participate in the prosecution alongside the public authority as a private accessory prosecutor, or combine the criminal proceeding with civil law infringement claims, or both.
Customs enforcement of trademark rights is largely harmonised by EU law. Trademark owners registered with the customs authorities will be informed with regard to counterfeit goods seized by customs. Subsequently, trademark owners can ask for the counterfeit goods to be destroyed. Due to the European Union Customs Union and the Schengen Agreement, border controls focus on third-country goods arriving through German airports and seaports.