Category — Introduction to German Trademark Law
I often get the question, how much trademark litigation in Germany is likely to cost. This post is meant to give a basic overview. Figures may vary widely depending on the individual case.
Let’s take a closer look at the way legal services in Germany are billed. The traditional way is – not so much a surprise – based on a law, regulating lawyers’ fees. At the center of the fee calculation is the amount involved in the case, determining how much a fee unit in this case will be (the law provides a table). Depending on the kind of work (preparing the case, litigation etc) a fraction or multiple of a fee unit is due. This billing method used to be legally binding but had come under criticism as it does not reflect the actual effort and complexity an individual case may require. But things have changed over the last couple of years and lawyers are now mainly free to agree a fee on their own.
As a rule of thumb the amount involved in a trademark case can be expected to be around 50.000 EUR. Based on this, the lawyer’s fee for a case involving litigation is ca. 2635 EUR (+ VAT). This amount comprises of 1359 EUR for preparing the case and 1255 EUR for litigation plus ca 20 EUR flat for postage & phone. Court charges are 1368 EUR (not subject to VAT). Pursuant to the German code of civil procedure, the cost are split in relation to the outcome of the case. This means, the losing party is carrying not only their own lawyers’ fee but also the other party’s lawyer fee plus court charges. In our example the losing party will have to pay legal cost totaling 6638 EUR (any fees in excess of the officially outlined fees are not recoverable).
In the last couple of years hourly billing has more and more evolved as an alternative. Hourly rates vary widely. For IP specialists a rough estimate is at least 200 to 250 EUR per hour. One has to bear in mind that it is against the law for a German lawyer charge less than the legal fee for litigation. As IP matters tend to be often complex, require in depth knowledge and carry a significant liability risk, most IP specialists tend to bill by the hour, so fees often exceed the the above mentioned figures.
August 4, 2009 5 Comments
Under German law there are several constraints to a trademark. These are mainly limitation, forfeiture, descriptive use, exhaustion, non-use.
Limitation. Limitation for claims based on infringement is 3 years from the date the trademark proprietor is aware of the infringement. Regardless of the proprietor’s awareness, such claims are limited to a max of 30 years from the date of infringement.
Forfeiture. A trademark proprietor tolerating an infringement for 5 consecutive years will lose the right to claim based on this infringement if the infringer does not act in bad faith.
Descriptive use. Descriptive use of protected signs (e.g. to indicate the purpose of a product or service) may not be prohibited.
Exhaustion. Distribution of trademarked goods within the European Economic Area (EEA) may not be prohibited if these goods have been put on the market in the EEA before with the consent of the trademark proprietor (“Grey Import”).
Non-use. No infringement claims may be asserted against third parties if the trademark has not been put to genuine use within a period of five consecutive years prior to asserting the claim.
May 29, 2009 No Comments
The following article briefly outlines how a trademark infringement is determined under German law pursuant to Sec. 14 Trademark Act.
A protected sign has been used by a third party without consent in the course of trade.
The infringement may happen in one of the following three ways:
Infringement of identity. The used sign is identical to the protected sign and it is being used for goods/ services in identical categories. These are typically cases of “Product Piracy”.
Likelihood of confusion. A similar sign is infringing a protected sign if there is a likelihood of confusion. The likelihood of confusion is determined by three aspects:
- Similarity of signs
- Similarity of related goods/ services
- Distinctiveness of protected sign.
Last but not least exploitation of a popular sign. This is the case where a similar sign is taking unfair advantage of a protected sign’s reputation or damaging this signs reputation. A sign is deemed as popular if it is renowned amongst 20 – 30% of the relevant circles in Germany.
May 26, 2009 No Comments
So, someone is interfering with your trademark. What options does the German law offer to you as a trademark proprietor? Here are the most important ones:
- Infringer is enjoined to refrain from infringing actions,
Sec. 14 (5) and Sec. 15 (4) Trademark Act.
- Compensation, in the case of negligent or intentional infringement,
Sec. 14 (6) and Sec. 15 (5) Trademark Act. Compensation comprises either of actual damages (as to Sec. 249 ff. Civil Code) or adequate licencing fees or release of relevant profits.
- Destruction and recall of infringing goods and destruction of equipment predominantly used for unlawfully labelling infringed goods, if considered reasonable, Sec. 18 Trademark Act.
- Disclosure, Sec. 19 Trademark Act. This is predominantly a claim for information like manufacturers, distributors and related details.
According to Sec. 2 Trademark Act, one is not limited to the options granted by the Trademark Act itself. This means, depending on the individual characteristics of a case, claims may also be based on the Civil Code (esp. Sec. 12, 812 and 823 Civil Code) and Act Against Unfair Competition, UWG (esp. Sec. 8,9 and 10).
May 13, 2009 No Comments
Under German law, intellectual property is divided into seven main categories, and each of them is regulated by specific laws. The protection provided under these laws differs in terms of the type of intellectual property protected, origination and duration of protection.
Copyright (Copright Act – UrhG): protects personal, intellectual creations (e.g. photographic works, books, musical works). Protection originates from creation itself. Protection lasts for up to seventy years after creator has deceased.
Trademarks (Trademark Act- MarkenG): protects trademarks (registered and unregistered ), commercial designations and indications of geographic origin. Trademarks are protected from the moment of registration (or in case of unregistered trademarks as soon as relevant pre-conditions are met). Registered trademarks are protected for 10 years from registration; registration may be renewed for periods of 10 years. Without registration protection lasts as long as relevant legal pre-conditions are met.
Patents (Patent Act – PatG): protected are technical inventions that are based on inventive activities and that can be commercially applied. Protected from date patent is granted. Duration of a patent is up to 20 years.
Utility patent (Utility Patent Act – GebrMG): protected are technical inventions that are based on an inventive step and that can be commercially applied (technical and chemical procedures can not be protected by utility patents!). Protected from date utility patent is granted. Protection period can last up to max. 10 years in total. The difference to the patent lies mainly in the patent assessment. Before a “real” patent is granted, the inventive edge is actually evaluated. In contrary the assessment of a utility patent is a mere formal procedure (hence the term “petty patent”). This also means that a utility patent offers less protection and above all certainty than a patent as the inventive edge may be challenged at a later stage. Advantage: it is quicker and easier to obtain than a patent.
Design patent (Design Patent Act – GeschMG): protects novel industrial ornamental designs and models (e.g. fashion). Requires registration to be protected. Can be protected for up to 20 years.
Plant variety protection (Plant Variety Protection Act – SortSchG): it´s all in the name. Protected are novel, distinguishable, consistent and homogeneous plants. Requires registration to be protected. Can be protected between 25 to 30 years.
Semiconductor protection (Semiconductor Protection Act – HalblSchG): protected is the topography of a semiconductor if they are characteristic. Protected if registered within 2 years from first commercial exploitation. Protected for 10 years.
May 7, 2009 No Comments
Something often overlooked is the fact, that under German law an unregistered mark may be trademarked without registration enjoying comparable protection as a registered trademark. How so?
According to Sec. 4 no. 2 Trademark Act, trademark protection may also originate from the use of a mark in the course of business as far as a sign has acquired secondary meaning as a trade mark in the relevant public.
Based on Sec. 12 Trademark Act a registered trademark may even be deleted from the register, if there is a trademark originated from use if the registered trademark has a lower priority, i.e. the registered trademark is “younger”.
Of course, this does not mean registering trademarks in Germany is obsolete as the acquisition of a secondary meaning as a trademark doesn’t happen overnight, thus leaving a sign unprotected not to mention the burden of proof.
May 5, 2009 1 Comment