The Quick and Easy Guide to German and EU Intellectual Property Law, Trademarks and Copyright

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:

1. Infringer is enjoined to refrain from infringing actions,
   Sec. 14 (5) and Sec. 15 (4) Trademark Act.
   
2. 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.
3. Destruction and recall of infringing goods and destruction of equipment predominantly used for unlawfully labelling infringed goods, if considered reasonable, Sec. 18 Trademark Act.
4. 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).

In the so called “Bananababy Case” the Federal Court of Justice (BGH) has referred the case to the European Court of Justice (ECJ), to answer the following question (see also my previous post about using company symbols as keywords ):

Is it to be deemed “using in the cause of trade” as to Art. 5 no. 1 Clause 2 let. a of Directive 89/104 EEC, if a third party is using a symbol identical to a trademark without the consent of the respective trademark owner, by booking this symbol as a keyword (here: “bananababy”) in a paid – for search on the Internet (here: Google AdWords) to advertise identical products or services, if

• the advertisement is separated from the natural search results,
• the advertisement is clearly labelled as such,
• and if said advertisement does not display the symbol itself or any reference to the actual trademark owner or trademark owner’s goods?

(Federal Court of Justice – I ZR 125/07 – 22. Jan 2009)

In the relevant case, both parties are selling adult accessories on the Internet. The plaintiff has trademarked the term “bananababy”. The defendant used this term as a keyword on Google AdWords, however did not actually use this term in the advertisement itself.

See also this previous post about a Federal Court decision dealing with keywords, company symbols and the likelihood of confusion. Although,  it is a constellation quite similar to this one, it has not been referred to the ECJ. Reason: Directive 89/104 EEC is not applicable to company symbols.

The shape of a pencil with an eraser on one end and a cap on the other, may be protected (as a 3 D trademark) if a significant distinction can be made between this shape and the plentiful variety of shapes of other writing-, drawing and painting utensils already on the market.
(Federal Patent Court, 29 W (pat) 67/07, Dec 10, 2008)

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.

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.

The use of company symbols as keywords in the paid search of Internet search engines (here: Google AdWords) not necessarily implicates a likelihood of confusion with the protected symbol if the advertisement displayed in the section for paid search results does not actually use the protected symbol.
(Federal Court of Justice, I ZR 30/07, 22 Jan 2009)

Company symbols are protected as commercial designations under German trademark legislation, Sec. 1 (2) and Sec. 5 (1) German Trademark Act (MarkenG). In Sec. 5 (2) company symbols are characterised as signs that are used in the course of business as name (of a firm) or special designation of a business.

Unlike a trademark, a company symbol is directly linked to a company and only indirectly related to a specific product or service.