It's no secret that Germany is home to some of the world's most valuable brands. Indeed, Mercedes Benz, BMW and SAP (just to name a few) are all ranked in the top 20 of Interbrands' 2019 Best Global Brands list. Germany is also an important market for brand owners throughout the world.
Germany's IP enforcement regime is among Europe's most robust. When it comes to trademark enforcement in particular, the country is known for its comparably fast proceedings, lower costs than in many other countries, and extremely efficient preliminary injunction process.
To maximise the benefits offered under German trademark law, here are five things you should know about trademark protection in Germany:
1. Unregistered marks
Apart from registered German, EU and international trademark registrations, German trademark law provides for the protection of unregistered rights. These include unregistered marks that, in the course of business, have acquired secondary meanings as trademarks (including "famous marks" as set out in Article 6b of the Paris Convention).
2. Company names and work titles
Even more importantly in practice, company names and work titles enjoy protection under German trademark law in a way similar to trademarks. Company names are unregistered (distinctive) signs, which come into existence when used in the course of trade and subsist as long as they are used in Germany. Domain names, if used for the commercial offer of goods and services, can also establish protection under the regime of company names.
"Work titles" - the titles of printed publications, cinematographic works, musical works, dramatic works or other comparable works - can also acquire protection under German trademark law, provided they are distinctive. Similar to company names, they come into existence when used for the respective work and subsist as long as they are used. In order to secure protection for the title of a forthcoming work, it is possible to make a so-called title announcement in relevant German publications.
In clearance searches for Germany, it is highly advisable, therefore, to search for unregistered company names and work titles as well as the existence of registered rights.
3. Trademark enforcement
German IP enforcement is known for being effective and efficient. The country's courts have highly specialised judges. Decisions are issued relatively quickly compared to other countries, and in many cases it can be much faster and easier to obtain a preliminary injunction. This is why many companies with a strong footprint in Germany prefer litigating in Germany.
4. Preliminary injunctions
Preliminary injunctions are a powerful tool in Germany. Offering an interim solution for time-sensitive matters, they can be used by plaintiffs to secure trademark rights while waiting for final judgement. Although they do not offer the same relief as a potentially successful final judgment, in many cases parties settle after a preliminary injunction has been issued saving the time and cost of proceeding to trial.
As IP infringement typically occurs throughout Germany, in many cases the plaintiff can - based on the venue of tort - forum shop and choose to file in the courts that are known for being more pro-rights owners.
In clear and particularly urgent cases, the court can issue an ex parte injunction, allowing plaintiffs to obtain a preliminary injunction without oral hearing within 24 to 48 hours. The injunction is immediately enforceable and infringing products can be banned from the market quickly. While the defendant can appeal the decision, such appeals can take time and do not have any suspensive effect per se.
5. Protective writs
If potential defendants are concerned about being exposed to an ex parte injunction - e.g. where they have received a warning letter or where a potentially conflicting prior right has come up in clearance searches - they can file a protective writ, which sets out their defence. Germany provides for a central electronic register where protective writs can be filed and which courts must consult if they receive a motion for preliminary injunction. The most important effect of a protective writ is to increase the chances that a court will either not render a preliminary injunction at all or will at least order an oral hearing.
Protective writs are deleted from the register after six months. They can be refiled, which makes sense in certain contexts, e.g. in cases where the announcement of a forthcoming product - which may trigger a so-called 'risk of first infringement' and thus give rise to a preliminary injunction - has been secured by a protective writ, and where the product launch is imminent at the time of the actual launch.
Filing a protective writ should be considered whenever there is a potential risk of infringing third parties' IP rights or - even if the legal risk is limited - where the potential claimant is known for being extremely litigious.
About our trademark team in Germany
Gowling WLG's IP team in Germany works to ensure that its clients' trademarks, brands and other intangible assets are both enforced and maximized to add value to their businesses. From complex litigation to sophisticated portfolio strategies, our professionals approach challenges from both a legal and business perspective.