Trademark Infringement in Germany

Trademark infringement occurs when someone uses a trademark without the owner’s permission in a way that could confuse customers or harm the brand’s reputation. German trademark law provides strong protections for trademark owners, allowing them to enforce their rights and stop unauthorized use.

1. What Is Trademark Infringement?

Trademark infringement happens when:

• Someone uses a registered trademark or a similar sign for identical or related goods/services without the owner’s consent.
• The use creates confusion among customers about the origin of the goods/services.
• The use damages the trademark’s reputation or takes unfair advantage of it (in the case of famous trademarks).

Examples:

1. Using a name like "Adibas" for sports shoes that could confuse customers into thinking it's related to "Adidas."
2. Selling counterfeit products with a brand’s logo without authorization.

2. Legal Basis for Trademark Protection in Germany

The German Trademark Act (MarkenG) governs trademark law in Germany. Key provisions include:

• Section 14 MarkenG: Prohibits unauthorized use of trademarks in commerce.
• Types of Infringement:
• Direct copying of a trademark.
• Using a similar mark for similar goods/services.
• Using a mark in a way that dilutes the reputation of a famous trademark.

3. How to Prove Trademark Infringement

To prove trademark infringement, the owner must show:

1. Trademark Ownership:
• The trademark is registered and valid in Germany or the EU.
2. Unauthorized Use:
• The infringer used the trademark without consent.
3. Confusion or Harm:
• The unauthorized use creates confusion about the source of goods/services, harms the brand’s reputation, or exploits its reputation unfairly.

Example:

• If someone uses a similar logo for clothing, the trademark owner must show that customers are likely to think the goods come from the same source.

4. Actions Trademark Owners Can Take

Trademark owners have several legal options to address infringement:

Cease-and-Desist Letter (Abmahnung):

• A formal notice demanding the infringer stop using the trademark.
• Usually includes a request for a binding promise (declaration of discontinuance) and may demand damages or reimbursement of legal costs.

Injunction:

• A court order to immediately stop the infringing activity.
• Example: Preventing the sale of counterfeit goods.

Damages:

• The trademark owner can claim compensation for financial losses caused by the infringement.
• Damages may include:
• Lost profits.
• The infringer’s profits from using the trademark.
• A license fee equivalent to what the infringer would have paid for legitimate use.

Destruction of Infringing Goods:

• The court can order the destruction of counterfeit or infringing products.

Customs Enforcement:

• Trademark owners can request German customs to seize counterfeit goods entering the country.

5. Defenses Against Trademark Infringement

The alleged infringer can defend themselves by arguing:

1. No Confusion:
• The trademark and the allegedly infringing mark are too different to cause confusion.
2. Fair Use:
• The use was descriptive or necessary (e.g., comparative advertising).
• Example: A company stating, “Our shoes are lighter than Nike shoes” is not infringing if it is truthful.
3. Invalid Trademark:
• The trademark is generic or lacks distinctiveness and should not have been registered.

6. Penalties for Trademark Infringement

In Germany, penalties for trademark infringement include:

1. Civil Remedies:
• Injunctions, damages, and destruction of infringing goods.
2. Criminal Penalties:
• For willful trademark infringement, fines or imprisonment (up to five years) may apply under Section 143 MarkenG.

7. Real-World Examples

Example 1: Counterfeit Goods

• A company sells fake “Rolex” watches in Germany. This is a clear case of trademark infringement, and Rolex can sue to stop sales, destroy the goods, and claim damages.

Example 2: Similar Logos

• A local clothing brand uses a logo similar to Adidas’ three stripes. If customers might confuse the two brands, Adidas can take legal action for infringement.

8. How to Avoid Trademark Infringement

• Conduct a trademark search before launching a new brand or product to ensure the name or logo is not already registered.
• Seek legal advice if using another company’s trademark in marketing or advertising.
• Register your own trademark to secure rights and avoid accidental conflicts.

9. Conclusion

Trademark infringement in Germany is a serious issue that can result in legal action, damages, and criminal penalties. Businesses should take proactive steps to protect their trademarks and ensure they do not infringe on others’ rights. Working with trademark lawyers can help navigate these issues effectively.