Trademark infringement: How to take action
Trademark infringement is one of the most common legal challenges that companies face. Whether through direct imitation, the use of similar signs or reputation exploitation – any form of unauthorized use of a trademark can significantly damage a company's reputation and economic value.
But what exactly is trademark infringement and how can you as a trademark owner react to it? This article explains the most important aspects of trademark infringement: from identifying an infringement to taking legal action and preventive measures to ensure the long-term protection of your trademark.
The issue of trademark infringement involves the unauthorized use of a protected trademark, which can lead to a risk of confusion among consumers. Trademark owners are entitled to defend their rights and take legal action in the event of infringements in order to prevent unauthorized use and, if necessary, claim damages. Below we explain when a trademark infringement has occurred and how you should react.
What is trademark infringement?
A trademark infringement occurs when a protected trademark is used in the course of trade without authorization, thereby infringing the rights of the trademark owner. This can happen if a third party uses an identical or similar trademark so that there is a risk of confusion on the part of the consumer.
The aim of trademark law is to protect the distinctiveness and reputation of a trademark and to ensure that only the trademark owner or authorized parties use the trademark in the business environment. Trademark infringement is wide-ranging and can take various forms, including
- Direct imitation: A trademark is used identically on products or in advertising without permission.
- Similarity of the signs: Even if the sign is only similar and not identical, there may be a trademark infringement if there is a risk of confusion on the part of the consumer.
- Reputation Exploitation or Dilution: A trademark is used to exploit the reputation of the original mark or to diminish the value of the mark.
Exceptions and justifications
There are exceptions and justifications in which a trademark-protected designation may also be used by third parties without infringing trademark rights. These exceptions apply in particular if the use of the trademark is necessary to identify a product or service.
For example, a third-party vendor may use a trademark to illustrate the compatibility or purpose of a replacement part or service as long as such use does not unreasonably interfere with the trademark owner's rights.
Another justification is the so-called exhaustion of trademark rights (§ 24 MarkenG). This means that the trademark owner loses his rights to a product as soon as it has been placed on the market in the European Union with his consent. Resale is then permitted without causing a trademark infringement.
Claims arising from a trademark infringement may be forfeited if the trademark owner has been aware of the infringement for a period of five years but has not taken any steps. In general, after this period, the infringer can continue to use the trademark without fear of sanctions, as the right to enforce the trademark is considered forfeited. Rapid action is therefore required in the event of a trademark infringement.
Finally, the use of a trademark-protected term is also permitted in the context of creative or journalistic reporting under certain conditions, e.g. if the trademark is only used descriptively and not misleadingly. These exceptions serve to balance the interests between the protection of the trademark and the free market economy as well as freedom of opinion in accordance with the German Basic Law.
What rights do trademark owners have in the event of trademark infringement?
Trademark owners have various claims that they can assert in the event of a trademark infringement. These include:
- Injunctive relief: The unauthorized use of the trademark must be stopped (immediately).
- Damages: The trademark owner may be entitled to compensation for the damage incurred.
- Right to information: The infringer must provide information about the origin and distribution channel of the unlawfully labeled products.
- Destruction: Products bearing the trademark without authorization may be confiscated for destruction.
Particularly in complex cases, a precise assessment is necessary in order to legally enforce the trademark owner's claims. The support of specialist lawyers in trademark law can be decisive in successfully asserting claims and preventing long-term damage to the trademark.
Trademark infringement: Which court has jurisdiction?
Infringement proceedings in trademark law in Germany generally fall under the jurisdiction of the regional courts (LG), regardless of the amount in dispute. Unlike in many other areas of law, where the district court could have jurisdiction below a certain amount in dispute, the Trademark Act explicitly provides for the exclusive jurisdiction of the district courts (Section 140 (1) MarkenG).
This also leads to the need for a lawyer in court. This is due to the particular complexity of trademark law issues, which require a specialized assessment. In practice, this means that actions for trademark infringement must be brought directly before a regional court.
In addition, only certain regional courts, which are specialized in trademark law as so-called trademark litigation chambers, have jurisdiction for trademark infringement proceedings. Local jurisdiction is generally based on the defendant's registered office or the location of the infringing act. The plaintiff often has the option of choosing the court if several courts come into question.
Trademark infringement: What to do? How to take action against counterfeiting
If you are confronted with a trademark infringement or would like to defend your trademark, there are various legal options available. Here is an overview of the most important steps and procedures:
Action for infringement
An infringement action is a key step if you want to enforce your rights as a trademark owner against unauthorized use.
Procedure of the infringement action:
1. Warning letter: Before taking legal action, the trademark owner should send the infringer an out-of-court warning letter. This gives the infringer the opportunity to stop using the trademark and to submit a cease-and-desist declaration with a penalty clause.
2. Filing an action: If the warning is not successful, an action for infringement can be filed with the competent regional court.
3. Court proceedings: The court examines the legal situation and decides on the trademark owner's claims.
An infringement action requires intensive preparation, in particular proof that the opposing trademark creates a likelihood of confusion with your own trademark or infringes your rights in some other way. The support of an experienced lawyer in trademark law is essential in order to successfully enforce the claims.
Opposition proceedings
Opposition proceedings enable trademark owners to take action against a newly registered trademark if they fear that it infringes their own trademark rights. Within three months of the publication of the trademark registration, owners of older trademarks can file an opposition with the relevant trademark office (e.g. the DPMA).
The opposition is often based on an existing likelihood of confusion, i.e. there is a risk that consumers could confuse the new trademark with the existing trademark. Alternatively, the opposition can also be based, for example, on exploitation of reputation or dilution of a well-known trademark.
As part of the opposition proceedings, the trademark office examines the arguments put forward and decides whether the challenged trademark should be canceled or allowed to remain. This procedure is an effective way of preventing the registration of similar or identical trademarks without having to go straight to court. If the opposition proceedings are successful, the new trademark will be partially or completely removed from the register.
Cancellation or nullity proceedings
Cancellation or nullity proceedings offer the possibility of having a registered trademark removed from the register even after the opposition period has expired. This can be useful, for example, if the trademark was not legally registered because there are absolute grounds for refusal or relevant third-party property rights or the trademark has not been used for five years (special case of "revocation proceedings") and has therefore lost its protectability. The proceedings can be initiated by filing an application with the Office or by bringing an action before the courts.
Cancellation or invalidity proceedings aim to establish that the registered trademark is invalid from the outset. In special revocation proceedings, on the other hand, the legal consequence is that the effects of a registered trademark are deemed not to have occurred to the extent that the trademark is declared revoked from the time the application for revocation is filed with the Office or the action is brought before the ordinary courts.
Non-use objection in case of trademark infringement
The non-use defense is an important defense in proceedings for potential trademark infringement. If a trademark owner asserts claims due to an alleged trademark infringement, the defendant can object that the trademark has not been seriously used for at least five years.
This objection is based on the legal principle that a trademark is only worthy of protection if it is actually actively used in the course of trade. If this is not the case, the trademark loses its enforceability against third parties. In the course of the proceedings, the trademark owner must prove that the trademark was genuinely used within the relevant period - otherwise the trademark claim cannot be successfully enforced.
The non-use defense thus serves to defend against unjustified claims and ensures that unused trademarks cannot impose unjustified restrictions on third parties in the course of trade.
Differentiation: Non-use objection vs. revocation proceedings
The non-use defense is used in trademark infringement proceedings to assert that the plaintiff trademark has not been used for more than five years. Without proof, the trademark owner loses his claims.
Revocation proceedings, on the other hand, are used to have an unused trademark completely deleted from the register. Revocation proceedings can also be initiated independently of a trademark infringement. It is usually initiated by third parties who feel that the trademark is blocking them.
Attack on your trademark
If your own trademark is called into question by opposition or invalidity proceedings, quick and well-planned action is required. In such cases, it is particularly important that you as the trademark owner can prove the genuine use of your trademark. This includes evidence such as sales figures, advertising measures or other business activities.
An experienced team of lawyers will help you to protect your rights at an early stage and take targeted action against attacks. With the right strategy, you not only protect your brand from loss of rights, but also secure its long-term value and position in the market.
When do I need support from a trademark lawyer?
An experienced trademark attorney offers comprehensive support to actively protect your trademark and avoid legal disputes. Even before a trademark application is filed, a thorough trademark search is crucial to ensure that no existing trademark rights are infringed. Such a search uncovers potential collisions and protects against legal problems that could arise from similar or identical trademarks.
Collision monitoring also plays an important role in preventive protection. The market is regularly monitored in order to become aware of new registrations that are similar to one's own trademark or that pose a risk of confusion at an early stage. In this way, legal action can be taken in good time to protect your own trademark rights.
In an emergency, a lawyer helps to develop the right strategy for trademark applications, oppositions and defenses, and accompanies you through infringement proceedings. Preventive protection and targeted monitoring by a lawyer thus create the basis for long-term brand success and sustainable brand protection.