introduction:

Trademark disputes, are the judicial arguments around the rights of a trademark. They involve civil proceedings during which a trademark, such as a brand or title, files a claim. Trademark disputes deal with demands for the cessation of the unlawful use of a trademark, as well as around claims for damages caused by the unlawful use of a trademark. In addition, complaints regarding the registration and deregistration of an existing brand, are also dealt with. The rights, taken from Trademark Law, can only be applied if and when a possible commercial injury has taken place.
For trademark disputes, the regional courts (Landgericht)are solely responsible. In some of those regional courts, chambers have been installed especially for trademark disputes. Regardless of the size of the litigation, it is always to be argued at the regional court, if Trademark Law is concerned.


Those rights that are protected by the Trademark Law, include:

(Brand Rights) Suitable characteristics of a brand are those that can distinguish the goods and services of one business from those of another (Paragraph 3, Trademark Law.) Characteristics that are taken into consideration include words, illustrations, letters, sounds, forms, packing, numbers, abbreviations or colours. What is not protected, therefore, are basic geometric shapes alone (circle, square etc.) or symbols that show or describe a protected category of goods alone. In these latter examples, strength is missing in the ability to distinguish the symbol as a brand. There are different kinds of brands, for instance the word brand (VOLKSWAGEN POLO), the picture brand (shell of SHELL) or the sound brand (triad of INTEL). A combination of these kinds is also possible. When a brand is registered with the German Patent and Office for Trademarks, (DPMA) it receives the protection of the patent office, retroactively on the day of the registration. The trademark protection exists for ten years with this entry and can be renewed on request, for a further 10 years at a time (Paragraph 47, Clause 2, Trademark Law.) The European Union can be asked to protect a community trademark through the OAMI in Alicante. The trademark office is registering the brand in a class, or several classes of goods that is suggested by the applicant. The class of the goods serve the trademark office as a means for the computation of its fees and can be consulted for the regulation of registered goods. The registration of a national brand in Germany costs 300.00 EUR for three goods, or service classes.

(Title Patent Rights) Under Title patent rights, is the protection of works and their names, for instance block letters, film works, heard works, or stage works, or similar things. (Paragraph 5, Clause 3, Trademark Law). Also software names can be protected by means of title protection. As opposed to brands, such work names do not require registration in order to be protected, because they already exist through use. Also purely descriptive titles can be protected. 'Priority', refers to the right of the first user of a title that was secured by means of a so-called Title Patent Rights Notification. For example, that user could use the protected title for a book, before it enters publication. However under title patent rights, the protection of a title expires after approximately 6 months, if the use of the title is not taken up.

(Corporate Identification) Corporate Identification includes both the name and symbol of an enterprise. It also includes, for example, abbreviations, such as "IBM", names, for instance TSCHIBO, or symbols, like the famous Mercedes star, which is also a brand. The company name is protected by Paragraph 12 of the German Civil Code, but also goes by Paragraph 5, Clause 2, Trademark Law; as more specific regulations are required when it concerns the protection of a trademark in the commercial sector.

(Geographical Indications of Origin) The consumer is aware of geographical indications of origin, (Paragraph 126 and the following paragraphs, Trademark Law) particularly in the foodstuffs sector. Examples of geographical indications of origin in the foodstuffs sector, includes for example, Dresdner stollen, Champagner, Thueringer, as well as Nuernberger wuerstchen and similar products. In general one cannot equate the geographical origin, with the name of a product simply because the name of the product contains the name of the geographical location of the origin of the product. Often these only describe a certain production method, as in the case of Wiener schnitzel, Frankfurter wuerstchen or Parma cheese. With the geographical indication of origin, products of a certain region are protected. However, it does not represent an individual right, where on can claim sole use of the geographical name of the product. The protection of a product of a certain region has more to do with regulations stemming from German Competition Law (UWG) and therefore, anybody who qualifies under Paragraph 13 of those German Competition Law is entitled to protection, regardless of whether they have the right to use the geographical indication of origin, or not.
Because of the danger of a trademark becoming so largely associated with a category of goods, for example: Foen for hair dryers, it becomes the obligation of the owner to proceed against bad use of this trademark. If the owner ignores this obligation, then the trademark may be deleted due to this so called 'gemeingebrauch' (which means "general use") occurring in the meantime, only if in fact the owner of the brand caused this 'general use' of the brand name due to his inaction, (Paragraph 49, Clause 2, NR. 1 Trademark Law).

The rightful owner of a trademark will first approach the violator of his trademark, by means of a warning. If the violator does not submit to the warning, the rightful owner will require judicial assistance in order to put an end to the violation and to get payment for damages.

In trademark law, one has still the feature that apart from the Civil Trademark dispute, procedures are still possible with the Federal Patent office. So, for example, after applying for the brand, often a process of Authorization for Registration is necessary. Another possibility is that after registration of the brand, there is an automatic period where objections can be made to the registration. Objections can be made by other registered trademarks, owners of older rights to the trademark, or in case of existing registration obstacles. After the objections to the application of the brand have been made, the applicant can again, according to Paragraph 43, Clause 2, Trademark Law, request a decision by the Patent office. Afterwards either the trademark is deleted, or the objections are rejected and the trademark is registered.

The objection procedure is focussed on a superficial examination of the large amount of data. Complicated circumstances and legal problems cannot be solved here as a rule. Therefore, in the case of a deletion of his trademark, the applicant can go before the regular courts. This must be done within a six-month period, in order to implement the registration of his brand (Paragraph 44, Trademark Law). Finally there is another feature to request the deletion of a brand and that is through a popular grievance, or lawsuit (Popularklage.) This lawsuit can be filed by anyone who is of the opinion that the brand goes against 'absolute protection obstacles', or in the case that the brand is not in use. This is possible also after expiration of the objection period.

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