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Enforcing trade mark rights

Please note that the German Patent and Trade Mark Office is not allowed to provide legal advice. Therefore, the information below cannot replace legal advice by a lawyer, but will give you a rough and non-exhaustive overview of the options available to you.

The trade mark as an exclusive right

The registered trade mark is referred to as an "exclusive right". This means, for example, that others are prohibited from using your trade mark in trade for the protected goods and services without your consent. Trade marks can be sold and transferred by the proprietor at any time. In addition, the proprietor of a trade mark can grant a right of use, known as a trade mark licence, for his trade mark. You as the trade mark proprietor are responsible for defending your trade mark against counterfeiters.


How to detect trade mark infringement

Once your trade mark has been registered, you can regularly conduct a search (have a search conducted for you) in the Trade Mark Register for similar or identical trade marks. This way you are informed about new trade mark registrations and can act in time. Watch the market and the competitors to detect trade mark infringements. Professional providers of search services, such as the patent information centres, offer assistance.

The enforcement of industrial property rights requires extensive legal knowledge. Therefore, it is advisable in most cases 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.

How to enforce your trade mark

If you as the trade mark proprietor notice that third parties are infringing your trade mark rights, you can take action against the infringer both out of court and in court in order to protect your own trade mark. You can become active even before a lawsuit (for example, through a query concerning entitlement or a cease-and-desist letter). However, you can also initiate legal proceedings and/or file an application for border seizure.

  • 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, by sending him, for example, a query concerning entitlement or a cease-and-desist letter.
Important: If a cease-and-desist letter is unjustified, the recipient of the cease-and-desist letter may, under certain circumstances, be entitled to claim compensation from the person issuing the cease-and-desist letter.

  • Trade mark infringement action

The regional courts have jurisdiction for the enforcement of your rights in the case of trade mark infringement (Sec. 140(1) Trade Mark Act [Markengesetz]). Please note that you must appoint a lawyer to represent you before the regional courts. That means that you must have a lawyer to enforce your claims in court.
In infringement proceedings, you can assert the following claims, for example:

  • Injunction

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.

  • Application for border seizure

Customs authorities play an essential role in combating counterfeiting and piracy. In order to prevent goods unlawfully bearing a trade mark or a commercial designation protected under the Trade Mark Act from entering the European market, you can submit an application for border seizure under Section 146 of the Trade Mark Act to the customs authorities.

Important: If a seizure proves to be unjustified from the outset, you may have to compensate the damage caused by the unjustified seizure.

  • Criminal proceedings

Deliberate IP infringement is in principle punishable by law, but as a rule is only prosecuted upon request (Sec. 143 Trade Mark Act).

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Examples – what you can do if …

Using three cases as examples we will show you what you can do if problems arise through third parties:

  • Case 1: If you notice that someone else has registered a trade mark which is similar to your earlier registered trade mark
  • Case 2: If you notice that someone else is using your trade mark without your permission
  • Case 3: If your trade mark right is challenged by a third party

Weiterführende Links

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Picture: iStock.com/lisegagne

Last updated: 20 October 2020 

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