Trademarks in Germany: Game-changing advantages

6 minute read
12 November 2021

Germany is home to some of the world's most valuable brands, and also serves as an important foreign market for brand owners from numerous countries.

In particular, Germany offers some key advantages to brand holders:

  1. The country's intellectual property (IP) enforcement regime is among the most robust and efficient in Europe
  2. Trademark enforcement proceedings in particular are comparably fast
  3. Lower costs than in many other countries
  4. Extremely efficient preliminary injunction process

Additionally, we have summarized more key benefits below, related to IP protection offered under German trademark law:

1. Unregistered marks

Unregistered marks that in the course of business have acquired secondary meaning as trademarks (including "famous marks" as set out in Article 6b of the Paris Convention) are protected under German trademark law in addition to registered German, European Union (EU) and international trademark registrations).

2. Company names, work titles, and domain names

Company names and work titles enjoy protection under German trademark law in a way similar to trademarks. Therefore, in clearance searches for Germany, it is highly advisable to search for unregistered company names and work titles, as well as the existence of registered rights.

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.

"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. Depending on the circumstances, they can impose an obstacle to trademarks, too.

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.

Domain names, if used for the commercial offer of goods and services, can also establish protection under the regime of company names.

3. Efficient and effective trademark enforcement

Germany's courts have highly specialised judges, and decisions are issued relatively quickly compared to other countries. In many cases, it can be much faster and easier to obtain a preliminary injunction. Therefore, companies with a strong footprint in Germany should consider litigating in the country.

4. Preliminary injunctions

Preliminary injunctions are a powerful tool in Germany, particularly with respect to:

4.1. Saving time and money

In time-sensitive matters, preliminary injunctions offer plaintiffs the chance to protect 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, which saves time and cost compared to a trial.

4.2 Quick solution for immediate enforcement

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.

4.3 Freedom to choose the court

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.

5. Protective writs

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 filed in a central electronic register, which courts must consult if they receive a motion for preliminary injunction.

So, 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.

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.

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