Lawyer for warning in trademark law

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Trademark law with warning as a consequence

Law firm for trademark law in Kerpen, Cologne and Witten

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Protecting one's own trademark by registering it with a trademark office is particularly important in order to be able to defend oneself against trademark infringements. Trademarks are thus registrable rights to one's own trademark with regard to exclusive use thereof. This can be done on a national as well as on an international level. Thus, it is possible for the trademark owner to have the use of similar or identical signs for identical or similar products prohibited by the courts. The prerequisite for this is that there is a risk of confusion between the products. Possible examples of unlawful use are listed in the law as follows § Section 14 MarkenG in paragraph III and IV on. In particular, the marketing and offering of such products should be mentioned here.

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The possibility of the permitted naming of another's brand / product description / in advertising

Lawyer warning trademark law | possibility of permitted naming

In certain cases, it is permitted to mention another person's trademark. This is permitted if it is needed to describe one's own product. The same applies to descriptive information or in permissible but comparative advertising of products. Trademarks may also be mentioned in the description of spare parts. Should such use occur, it does not violate trade and commerce. To be read under Judgment: ECJ, Judgment of 11.09.2007, C-17/06, para. 34

For this purpose, the trademark must be mentioned in such a way that it remains recognizable without any doubt as another's trademark. Thus, the product or the goods may not be named as the company's own trademark or create the appearance of such. The third party trademark must also be specifically mentioned. A further principle is that the third-party trademark is not used for advertising purposes for the company's own benefit. The third-party trademark must be used with a certain degree of care. An advertising effect must therefore be necessary and must not be done in self-interest. Judgment: BGH judgment of 28.06.2018 I ZR 236/16.

Likewise, it is not possible as the trademark owner to prohibit the further sale of the goods and also, in this specific case, the advertising of the goods of the trademark. This is stated by the exhaustion principle of trademark law. For this purpose, the use of another's trademark as a trademark also completes the permitted possibilities.

The use of model designations and abbreviations has not yet been clearly decided. It is currently the case that other companies use model names such as "Fiesta" or "Mini" to push their own products or goods. This is not welcomed by the larger companies, such as Ford and BMW in this case, as they already assume a trademark infringement and see legal consequences as a consequence. Whether such an infringement has really occurred depends, among other things, on whether or not the advertiser regards this designation itself as a proof of origin as its own brand. If you prefer and want to use model designations for your goods, then it is also advisable to conduct a meaningful trademark search beforehand in order to prevent possible conflicts with other trademarks.

The likelihood of confusion of trademarks

Lawyer warning trademark law | likelihood of confusion

Before a legal dispute arises in the context of the Trademark Law If a trademark is infringed, the rights of the trademark owner must be violated, as is generally known. It is irrelevant whether the mark is a word mark, a figurative mark or a word/figurative mark. The confusion of trademarks arises in concrete terms from an interaction of the distinctive character, a similarity of the signs and or the similarity of the products. 

If the trademark owner creates a distinctive character of his trademark on all these levels, then it is more likely that opposing trademarks or products are dissimilar and no likelihood of confusion can be created. The higher the distinctive character of the brands or products/services, the higher the protection of the brand and ensures its independence.

In concrete terms, a likelihood of confusion exists when visual, conceptual or phonetic elements of the other mark are juxtaposed and, as a consequence, similar. Here, it is not a question of an interplay of all factors, but one of these is sufficient in case of doubt to assume confusion. Frequently imitated and usually confusingly similar are copies of the brands "Nike", "Adidas" or also "Puma". 

The pictorial representation of the brands does not seem too complex and thus quickly copied. Above all, the lettering and figurative mark is familiar to almost everyone and creates an image. It must also be noted that if the trademarks are phonetically similar, the pronunciation does not create a confusing similarity. Often a phonetic similarity is given with abbreviations of the mark.

A trademark infringement can also be assumed if a figurative mark with its representation is too similar to the word/figurative mark of another trademark. A pictorial representation of a key on the trademark "Brauerei Beck", which produces well-known beers, serves as an example here. Another trademark, which was "Original Schlüssel Obergärige Handwerkliche Hausbrauerei" from the owner "Schlüssel GmbH & Co. KG", was infringed by the depiction of the key on its word/figurative mark of "Brauerei Beck". 

In the meantime, the infringed trademark has been rewritten due to transfer of rights and the trademark has been cancelled in the meantime due to an application by the owner. This makes it clear once again how complicated the Trademark law can be partial, because in case of doubt one takes here as a layman no Trademark infringement an. The BGH made a concrete decision on 18.03.1999 under the sign: I ZB 24/96, where just those Trademark infringement was determined.

Infringement of well-known trademarks

Lawyer warning trademark law | infringement of well-known trademarks

The infringement of normal trademarks is already prohibited. However, Section 14 II No. 3 also regulates the protection of well-known trademarks. This concerns, among other things, the exploitation or impairment of these well-known trademarks for one's own purposes. Section 14 II No. 3 states:

§ Section 14 - Exclusive Right of the Owner of a Trademark, Injunctive Relief, Claim for Damages

(2) Third parties shall be prohibited from using in the course of trade, without the consent of the proprietor of the trade mark, in relation to goods or services [...].
3. to use a sign identical with the trademark or a similar sign for goods or services if the trademark is a trademark with a reputation in Germany and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark with a reputation. [...]

Previously, it was always written that a likelihood of confusion was required to infringe a trademark. This is no longer the case with well-known trademarks. All that is required for trademarks with a reputation is a similarity of the signs. This means that a well-known trademark is already infringed if one could assume a connection between the infringed and the infringing trademark. The use of the signs must therefore economically generate a connection. The own trademark protection is created by a distinctive character to other trademarks. An infringing trademark does this even if it attacks and impairs this distinctiveness, but only in the Nice Classes where that trademark is then registered.

The meaning behind such a Trademark infringement is of course the similarity to the well-known brand and generating customers through the effect of the well-known brand. The trademark has an attraction that wants to be exploited. The owner of the infringing trademark wants to promote his sales without or with as little effort as possible and exploit the infringed trademark. For such a danger to exist, it must be possible that a consumer could behave differently in his purchase decision only because of the existence of the other trademark. Well-known marks are marks with a reputation if a significant part of the public is aware that the goods or services covered by the mark are concerned. Cf. BGH, GRUR 2015, 1114/1115 - Jumping Poodle. 

If it is not possible to determine fixed percentages for a required degree of recognition, then this is or must be determined on the basis of all relevant circumstances, such as the market share of the trademark, its intensity, the extent and duration of use or the extent of the investments made - OLG Köln, Urt. 11.04.2014, 6 U 230/12. In the specific case, manufacturers of confectionery products disputed products of "Goldbären" and "Lindt Teddys", as these teddies were packaged in gold foil. The packaging and specific design of the "Lindt Teddys" infringed the rights of the trademark owner of the "Goldbären".

Marks with single letters

Lawyer warning trademark law | Trademarks with single letters

In this respect, it is questionable whether trademarks with only one letter, e.g. "T", can be registrable trademarks. The answer to this question is not easily clarified. Rather, as with almost all legal questions, the phrase "it depends" is used. For this reason, the courts have also decided differently in some cases. Section 3 I of the MarkenG specifies more precisely which signs may be protectable as trademarks. According to the listing, this also includes letters. In addition, however, the customer must associate a certain trademark with this letter. 

If the individual letter lacks a distinctive character, then it cannot be registered. The same applies if the letter has a descriptive function for the general public and is therefore used for them in general use. Another aspect to consider is in which class the letter should be registered. A combination of letter and Nice Class must therefore be considered. It became even more concrete in the BGH decision of 18.04.2002, I ZB 23/99 - number "1". Here it was decided that even the number "1" is registrable. The number was registered as a trademark for cigarettes. There was neither a lack of distinctiveness nor a need to keep the mark free.

In contrast, the decision in the "T" case was different. German Telekom wanted to register a "T" in Nice classes 38 and 42. This "T" generally stands for "telecommunications". Thus, there is no distinctive character, since the letter can be assumed to be descriptive of goods. Therefore, the "T" was not registrable for the field. The problem was therefore that this trademark should refer to the Nice classes mentioned above. If other classes were involved, then registration of the "T" might have been possible.

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The consequence

Lawyer warning trademark law | consequences

In general, one could now ask oneself to what extent one would still be allowed to use this letter. First of all, it is important to know that the trademark protection is only valid in the Nice Class for which it was registered. Conversely, this means that the letter may be used outside the respective class. Furthermore, the use of the trademark under private law cannot be prosecuted or prohibited. However, an activity with the trademark in the course of business can.

Limits of trademark protection

Lawyer warning trademark law | Limits of trademark protection

Trademark protection also includes some limits. These are governed by Section 23 of the German Trademark Act (MarkenG). For example, the owner of a trademark or business designation may not prohibit a third party from doing certain things. This also applies to business dealings. This includes:

1. the name or address of the third party, if the third party is a natural person,

2. a sign identical or similar to the trade mark or business name which is devoid of any distinctive character, or an identical sign or similar sign as an indication of characteristics or qualities of goods or services, such as, in particular, their kind, quality, intended purpose, value, geographical origin or the time of their production or rendering; or

3. the trademark or business name for purposes of identification or reference to goods or services as those of the owner of the trademark, especially if the use of the trademark is necessary as an indication of the destination of a product, especially as an accessory or spare part or a service.

However, the above-mentioned limits of trademark protection for the third party exist only if the application or use of the trademark by the third party is in accordance with honest practices in trade or commerce.

The possibilities for trademark infringement

Attorney warning trademark law | variations of trademark infringement

Just as extensive as the Trademark law itself seems and is, there is also the possibility in various ways to the Trademark infringement. Thus, it is already conceivable that the filing of a trademark application with the Trademark Office constitutes an infringing act with respect to the use of an already protected trademark. This is also called the risk of first infringement. In order to counteract this, it will be necessary to abandon the registration of the trademark. 

In case of doubt, legal proceedings can therefore already be initiated by the application. Another possibility of infringement of a trademark exists as soon as original goods of another trademark are distributed. Due to the fact that the trademark owner has the sole right to distribute his goods and services, not everyone is allowed to purchase and resell the goods. In principle, this requires the consent of the trademark owner. As soon as consent has been given, the principle of exhaustion no longer applies and there is no further infringement.

The trademark owner may lose the right to prohibit sale under certain circumstances. The prerequisite is that the trademark owner has sold his goods into the European market himself or through a third party. This exhausts the "right of destination". Consequently, third parties may sell the trademarks as they please. What must be paid attention to, however, is the manner of the sale. If the product itself is sold in such a way that packaging is part of the trademark, then the product must continue to be sold in this way. Example: A third-party product is resold via a sales platform, but without the manufacturer's OVP. 

If this outer packaging is now missing and the brand thus suffers damage, there is also a Trademark infringement. Likewise, an infringement is given if obligatory information, which normally has to be on the packaging, is removed.

Still conceivable, but not further listed here, remain Trademark infringement through, for example, Google Ads and advertising, search engine optimization, the Trademark infringement through Internet domains, or even the exploitation of names that belong to a brand, precisely through a level of awareness.

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Consequences of trademark infringement

Lawyer warning trademark law | Consequences of trademark infringement

What the Trademark law The question of what is a protection class, what types of protection there are and what is allowed and what is not, has now been explained here and in other texts. It should always be noted that the Trademark law is an exclusive right for the exploitation and use of a trademark. But what is actually at stake if you infringe an existing trademark?

As soon as a trademark is infringed, trademark owners can take legal action. The aim is, starting with an infringement, to achieve an out-of-court settlement with the help of a warning letter. This cease-and-desist letter aims to prevent the infringer from exploiting the trademark and to claim damages in the event of damage incurred. The prohibition of further use of the trademark is effected by means of a cease-and-desist declaration. 

A warning does not necessarily have to be written by a lawyer, but it is advisable to consult a legal advisor from the beginning of the infringement. If a trademark dispute arises, which results in legal proceedings, the lawyer knows the content of the dispute and can act swiftly and in a targeted manner. Likewise, the client enjoys the legal expertise and ability of legal assessment.

The warning specifically states the infringement and wishes to Trademark infringement for the future. A cease-and-desist declaration is sent together with the warning. In this cease-and-desist declaration, the infringer undertakes not to infringe the trademark any further. Furthermore, the infringer signs a contractual penalty to which he commits himself if he does not stop the infringement. This cease-and-desist declaration is sometimes also called a modified cease-and-desist declaration. 

The content of this is the scope of the claim, a certain seriousness, quantified damages as financial compensation and a contractual penalty as a sign against the risk of repetition. This contractual penalty can either be named directly, or it can be left open and then quantified or reviewed in the specific case at the discretion of the court. This gives the person issuing the warning notice leeway in the assessment of the contractual penalty.

In most cases, a cease-and-desist declaration is no broader than absolutely necessary. Nevertheless, it must contain certain points in order to be legally secure. It is important that the infringer also agrees to this cease-and-desist declaration. Consequently, a certain assessment expertise is required as to how far one can go and how far not. It is therefore advisable to consult a lawyer so that he or she can draft a legally secure and assessed warning and cease-and-desist declaration. 

Only this has the technical language and appropriate formulations. Therefore, caution is also advised to use a simple sample from the Internet. In most cases, the source is not credible and it must be adapted to the facts of the case and the latest legal requirements.

If a warning is not effective, then a complaint can also be filed. Section 143 of the German Trademark Act (MarkenG) makes infringement of the trademark a punishable offense. The penalty is a fine or imprisonment of up to three years. The prerequisite for the application of § 143 MarkenG is that the infringer uses the logos or brand names unlawfully in the course of trade. If the infringement is carried out commercially or even by a gang, the penalty is increased to a minimum of three months but a maximum of five years.

Under civil law, the owner of the trademark has the right to sue for injunctive relief, removal and damages. This is possible in addition to the criminal proceedings. In order to quantify possible damages, the owner of the right has a right to information. This includes information about sales and what profit was made in connection with the infringing act. The calculation of damages is based on § 249 BGB. According to this standard, the infringer is obliged to restore the situation that would have existed if the trademark infringement had not occurred. 

There are various options for quantifying the damages. The right holder can calculate the damages as he chooses within the framework of a license analogy. This means that the damages are as high as a license to use the trademark would have cost the infringer. Furthermore, there is the possibility of calculating the damages in concrete terms, if known, or to demand them in the context of the profit achieved by the infringer by providing information.

Above all, it is important to initiate and pay attention to the time span of infringement or knowledge and the assertion of claims in a timely manner. The claims arising from the Trademark infringement usually become time-barred after three years from the date of knowledge. The limitation period begins at the end of the year of knowledge of the infringement.

Further details on warning letters and trademark infringement can be obtained from our cooperation partner Lawyer Robert Meyen.

If you have a trademark-related concern, whether it be a trademark search, a Trademark infringement or even general question, do not hesitate to contact us. We are the right contact for your personal request and will take care of your case in full.

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