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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.
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