Trade mark enforcement using a ballpoint pen as an example
Trade mark for a ballpoint pen that never needs to be refilled
Let us assume you have invented a ballpoint pen that never needs to be refilled. You produce this ballpoint pen in your company and sell it in Germany. In order to distinguish your ballpoint pen from those offered by your competitors, you have come up with a great name "MusterMarke” for it and have obtained protection for this name at the DPMA as a trade mark for the goods “writing instruments” in class 16 of the Nice Classification. In this way, you have secured an “exclusive right” that allows you to prohibit third parties from offering writing instruments under a similar or identical trade mark without your consent. This means that your trade mark enables you to take action against infringements – in other words, to enforce your rights and to do this in different ways.
Please note that the German Patent and Trade Mark Office is not allowed to provide legal advice. The enforcement of industrial property rights requires extensive legal knowledge. Therefore, in most cases, it is advisable to seek legal assistance from a lawyer.
- Lawyers with special knowledge in the field of IP protection (specialist lawyers for IP protection) in your region can be found via the chambers of lawyers.
- Patent attorneys can be found via a nationwide patent attorney search, a service of the Chamber of Patent Attorneys.
Case 1: If you notice that someone else has registered a trade mark which is similar to your earlier registered trade mark
Imagine that during the continuous monitoring of your trade mark "MusterMarke" it is discovered that a third party had this name registered for writing instruments. If an application is filed for a similar or identical sign for identical or similar goods and/or services, you may file an opposition with the DPMA within three months after publication of the registration.
You can also file an action for cancellation.
Case 2: If you notice that someone else is using your trade mark without your permission
Trade mark law is an effective instrument for combating counterfeiters. If you discover that a third party is using your trade mark without authorisation in trade, you can demand, for example, that he refrains from doing so (Secs. 14(5), 15(5) Trade Mark Act [Markengesetz]) or that the goods bearing the trade mark be destroyed (Sec. 18 Trade Mark Act).
Under certain conditions you may also claim compensation (Secs. 14(6) and 15(5) Trade Mark Act).
How does this work in detail? (Conduct before a lawsuit, civil proceedings, criminal proceedings)
What to consider with regard to a possible lawsuit:
- Conduct before a lawsuit
As holder of the right, you can first try to solve the problem in an amicable way by contacting the infringer directly. If no amicable solution can be reached, you can also assert your claims in court.
- Civil proceedings: trade mark infringement action
The regional courts have jurisdiction in civil proceedings for trade mark infringement ( Sec. 140(1) Trade Mark Act) . You must appoint a lawyer to represent you before the regional courts.
- Criminal proceedings
In addition, deliberate IP infringement is in principle punishable by law, but as a rule is only prosecuted upon request ( Sec. 143 Trade Mark Act).
Court proceedings may often be time-consuming. Where there is a need for urgency, an injunction offers provisional legal protection.
Important: If an injunction proves to be unjustified from the outset, the opponent can claim compensation from the person filing the request for injunction.
How does this work at a trade fair?
At trade fairs in particular, it often occurs that trade marks are apparently infringed by competitors. For this reason, you should make special preparations for trade fairs by keeping available all the trade mark documents you need to obtain an injunction (Secs. 935 et seqq. of the German Code of Civil Procedure [Zivilprozessordnung]) and try to document the trade mark infringement for possible legal disputes.
How can I prevent copied or counterfeit products from entering the European market? (border seizure)
In addition to civil and criminal proceedings, there is also the option of border seizure pursuant to Section 146 of the Trade Mark Act in order to prevent copied or counterfeit products from entering the European market.
Important: If a seizure proves to be unjustified from the outset, you may have to compensate the damage caused by the unjustified seizure.
Case 3: If your trade mark right is challenged by a third party
Even before filing a trade mark application, you should make sure that no sign similar or identical to your sign was registered for identical or similar goods and/or services in the Trade Mark Register for another proprietor, because the DPMA does not examine whether an identical or similar trade mark has already been registered for a third party. In that case, the proprietor of the earlier trade mark could file an opposition against your trade mark. This might even result in the cancellation of your trade mark.
If you wish to take preventive action, you can commission a commercial search or visit a patent information centre in your proximity. Free information on trade marks registered at the DPMA is available to you in the Trade Mark Register.
Last updated: 2 March 2022