Anyone who receives a warning letter or is sued for alleged trademark infringement should not focus solely on the alleged similarity between the signs. It is equally important to consider whether the trademark relied upon by the claimant can still be validly enforced at all.
Particularly in the case of older, rarely used or purely descriptive trademarks, it may be advisable to pursue a defence on two levels: in infringement proceedings before the civil courts and, in parallel, by filing an application with the German Patent and Trade Mark Office (DPMA).
Two Proceedings, Two Functions
Infringement proceedings determine whether the specific use of a sign infringes trademark rights. Issues may include the likelihood of confusion, the similarity of goods and services, and the manner in which the challenged sign is being used.
At the same time, the defendant may challenge the validity of the trademark in suit. Proceedings before the DPMA are available for the revocation of a trademark due to non-use and for declarations of invalidity based on absolute grounds for refusal. The application must identify the relevant facts and evidence. Section 53 German Trade Mark Act
These two proceedings often run in parallel. However, the trademark registration initially remains valid. Merely initiating cancellation proceedings therefore does not eliminate trademark protection and does not automatically result in the infringement court suspending its proceedings.
First Line of Defence: The Defence of Non-Use
If the trademark in suit has been registered for at least five years and is no longer subject to the relevant grace period, and if it has not been put to genuine use, the defendant has a particularly effective means of defence: the defence of non-use pursuant to Section 25 of the German Trade Mark Act.
This defence must be expressly invoked. The trademark proprietor must then prove that, during the five years preceding the filing of the action, the trademark was genuinely used for the specific goods or services on which the claims are based.
Only those goods or services for which such proof is successfully provided may be taken into account in the proceedings. Section 25 German Trade Mark Act
A merely token or artificial use is not sufficient. The trademark must be used in an economically meaningful manner as an indication of commercial origin in Germany. Distribution documents, invoices, product packaging, advertising materials, screenshots and sales figures may all be relevant evidence.
Use by a licensee may generally also be sufficient, provided that such use takes place with the consent of the trademark proprietor. Section 26 German Trade Mark Act
In practice, this means that anyone facing an infringement claim should examine at an early stage whether, and for which goods or services, the trademark in suit is actually being used in the market. A trademark is often registered for a very broad list of goods and services but is only genuinely used in a narrow area.
Second Line of Defence: Revocation of the Trademark Due to Non-Use
In addition to the procedural defence of non-use, it may be advisable to file an application for a declaration of revocation with the DPMA.
A trademark may be subject to revocation if, after the expiry of the grace period for use, it has not been put to genuine use for an uninterrupted period of five years. Partial cancellation, limited to goods or services for which the trademark has not been used, may also be possible. Section 49 German Trade Mark Act
An application for revocation has a broader strategic benefit. It is not directed solely at the current infringement proceedings but may permanently eliminate or restrict the trademark’s registered protection in whole or in part.
The effects of revocation generally take effect from the date on which the application is filed. Upon request, an earlier date may also be determined. Section 52 German Trade Mark Act
However, an application should not be filed automatically or without prior examination. Use resumed shortly before the application is filed may prevent revocation. Under certain circumstances, however, use resumed only during the last three months before the application is filed may be disregarded.
Third Line of Defence: Invalidity Based on Absolute Grounds for Refusal
Another option may exist where the trademark was not eligible for protection at the time of its registration.
Two absolute grounds for refusal are particularly relevant in practice:
- The trademark lacks any distinctive character.
- The trademark consists exclusively of an indication that may serve to describe characteristics of the goods or services claimed.
For example, a purely descriptive designation relating to the type, quality, intended purpose or geographical origin of goods cannot generally establish a trademark monopoly.
Trademark law protects indications of commercial origin, meaning signs that enable the public to associate goods or services with a particular undertaking. It is not intended to allow general product characteristics or terms needed by competitors to be monopolised. Section 8(2) Nos. 1 and 2 German Trade Mark Act
A declaration of invalidity based on such absolute grounds for refusal must be requested from the DPMA. The application must generally be filed within ten years of registration.
In addition, the ground for refusal must not only have existed at the time of registration but must also still exist at the time the decision is made. If, in exceptional cases, the trademark has acquired distinctiveness through intensive use and has become established in the market as an indication of commercial origin, this may prevent its cancellation. Section 50 German Trade Mark Act
The evidentiary work in such cases often focuses on linguistic and market conditions at the time the trademark application was filed. Dictionaries, industry usage, earlier websites, catalogues, press reports and comparable product designations may help demonstrate that a term was understood merely as descriptive.
Suspension of Infringement Proceedings: No Automatic Consequence
A cancellation application pending before the DPMA does not automatically result in the suspension of infringement proceedings.
A civil court may suspend proceedings if the outcome of another proceeding is relevant to the decision. However, this decision is at the court’s discretion. Section 148 German Code of Civil Procedure
The German Federal Court of Justice has set a relatively high threshold. As a general rule, proceedings should not be suspended unless there is a predominant likelihood that the cancellation proceedings will be successful.
A merely possible or uncertain cancellation is therefore generally insufficient. German Federal Court of Justice, judgment of 18 September 2014 – I ZR 228/12, “Gelbe Wörterbücher”
Accordingly, it is not sufficient simply to submit the cancellation application filed with the DPMA when requesting a suspension of infringement proceedings.
The application for suspension should explain specifically:
- why the trademark in suit is highly likely to be cancelled in whole or to the extent relevant to the infringement claim,
- which documents support the grounds of non-use or invalidity,
- why this issue is decisive for the infringement proceedings, and
- why the trademark proprietor’s interest in obtaining a swift decision should take precedence less than the need to await the outcome of the cancellation proceedings.
The better prepared and substantiated the cancellation application is, the more weight it may carry in the infringement proceedings. Conversely, if the application is clearly filed merely to delay the proceedings, a suspension is unlikely to be granted.
Conclusion: Build a Defence Strategy Early and in a Coordinated Manner
The most effective strategy combines the defence against the specific allegation of infringement with a critical examination of the trademark in suit.
The defence of non-use may directly defeat trademark claims. An application for revocation before the DPMA may permanently restrict or eliminate the trademark’s registered protection. Where a designation is purely descriptive or lacks distinctive character, an application for a declaration of invalidity based on absolute grounds for refusal may also be appropriate.
Timing is particularly important. A cancellation that is successfully obtained at a later stage does not automatically affect infringement decisions that have already become final and enforceable. Section 52(3) German Trade Mark Act
Anyone seeking to defend against allegations of trademark infringement should therefore have the actual use and legal validity of the trademark in suit examined immediately after receiving a warning letter or a lawsuit.
As a Specialist Lawyer for Intellectual Property Law, attorney Stephan Schneller advises and represents companies, start-ups and trademark owners in defending against allegations of trademark infringement, in infringement proceedings, and in examining and pursuing revocation and invalidity proceedings against trademarks.
Note: This article provides a general overview and does not replace an assessment of an individual case.
This article was created with the assistance of artificial intelligence.