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Intellectual Property Law

Sven Jacobs
Associate
Norton Rose Fulbright (Germany) LLP
8. 9.12.2016

Trademarks

THE LAW OF SIGNS

The Law of Signs


The law of signs includes any signs and mark being used in the
course of trade, especially trademarks, the name of a company and
the title of a work.

The Law of Signs


Protected signs enable their owners to act in a legal position
comparable to tangible property
Thus, owners are entitled to exclude third parties from the use of
the sign

The Law of Signs


Signs are especially governed by the Act on the Protection of
Trade Marks and other Symbols of 25 October 1994
(Trademark Act).
The national law is heavily influenced by the standards set by
European Union legislation.

SCOPE

Scope
Protected marks and other symbols (Section 1 Trademark Act):
1. Trademarks
a. Individual marks (Sections 3, 4 Trademark Act)
b. Collective marks (Section 97 Trademark Act)
2. Commercial designations
a. Company symbols (Section 5 para. 1 Trademark Act)
b. Business symbols (Section 5 para. 2 s. 2 Trademark Act)
c. Titles of works (Section 5 para. 3 Trademark Act)

3. Indications of geographical origin (Section 126 Trademark


Act)

Scope

NATIONAL TRADE MARK

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National Trade Marks Subject


A trade mark is a distinctive sign or indicator used by an individual,
business organization or other legal entity to identify to the
consumer that the products or services with which the trade mark
appears originate from a unique source, and to distinguish ist
products or services from those of other entities.

National Trade Marks Subject


Trade marks need to distinguish the goods or services of one
enterprise from those of other enterprises.
Thus, the function of a trade mark is in particular to guarantee the
trade mark as an indication of origin.
Other functions:
Identification of origin
Guarantee role
Communications function
Advertising function

National Trade Marks - Accrual


The following shall give rise to trade mark protection
the entry of a sign as a trade mark in the register kept by the
Patent Office,
the use of a sign in the course of trade insofar as the sign has
acquired public recognition as a trade mark within affected trade
circles, or
a trade mark constituting a well-known mark within the meaning of
Article 6bis of the Paris Convention for the Protection of Industrial
Property (Paris Convention).

National Trade Marks Distinctiveness


Distinctive character in the abstract: Signs may be protected as
trademarks if they are capable of distinguishing the goods or
services of one enterprise from those of other enterprises
(Section 3 para. 1 Trademark Act).
Specific distinctiveness: The following trademarks shall be
excluded from registration: those which are devoid of any
distinctive character for the goods or services (Section 8 para. 2
no. 1 Trademark Act).

SIGNS ELIGIBLE

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National trade mark Signs eligible for protection as


trademarks
All signs, particularly words including personal names, designs,
letters, numerals, sound marks, three-dimensional designs, the
shape of goods or of their packaging, as well as other wrapping,
including colours and colour combinations, may be protected as
trademarks if they are capable of distinguishing the goods or
services of one enterprise from those of other enterprises (Section
3 para. 1 Trademark Act).

Word and figurative trade marks

Figurative marks

Three-dimensional trade mark

Colour mark

Sound mark

Olfactory mark
Distinctive?
Requirements by ECJ:
Mere description not
sufficient
Similar marks regarding
taste

SIGNS INELIGIBLE

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National Trade Mark Signs ineligible


Signs consisting exclusively of a shape
1. which results from the nature of the goods themselves,
2. which is necessary to obtain a technical result, or
3. which gives substantial value to the goods

shall not be amenable to protection as a trade mark.

National Trade Mark Signs ineligible

National Trade Mark Proprietorship


7 Trademark Act: Proprietors of trade marks that have been filed
or registered may be the following:
1. natural persons,
2. legal persons, or
3. partnerships insofar as they are equipped with the capacity to
acquire rights and enter into liabilities.

National Trade Mark Absolute obstacles to


protection
Absolute obstacles to protection are examined by the German
Patent and Trademark Office ex officio (Section 37 para. 1
Trademark Act).
Absolute obstacles are:
No graphical depiction possible (Section 8 para. 1 Trademark Act)
Trade marks excluded in Section 8 para. 2 Trademark Act
Trade mark identical or similar to a well-known trade mark (Section 10 para. 1
Trademark Act)

National Trade Mark Absolute obstacles to


protection
Pursuant to 8 para. 2 Trademark Act the following trademarks
shall, inter alia, be excluded from registration
those which are devoid of any distinctive character for the goods
or services,
which consist exclusively of signs or indications which have
become customary in the current usage or in the bona fide and
established practices of the trade to designate the goods or
services,
which are of such a nature to mislead the public, in particular with
regard to the nature, the quality or the geographical origin of the
goods or services,
which are contrary to public policy or to accepted principles of
morality,

National Trade Mark

REGISTRATION PROCEEDINGS

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National Trade Mark Registration Proceedings

National Trade Mark Registration Proceedings


The application must contain the following (sec. 32 subs. 2
Trademark Act):
1. indications permitting to verify the identity of the applicant,
2. a representation of the trade mark, and
3. a list of the goods or services for which registration is being
applied.

National Trade Mark


The Office examines:
The formal prerequisites for application (Section 36 Trademark
Act)
The eligibility of a sign for protection (Section 3 Trademark Act)
Absolute obstacles to protection (Section 8 Trademark Act)
The similarity to well-known marks (Section 10 Trademark Act)

National Trade Mark


Section 42 Trademark Act Opposition:
Within a three-month period after the date of the publication of the
registration of the trade mark in accordance with Section 41, the
proprietor of a trade mark or of a commercial designation with older
seniority may lodge an opposition against the registration of the
trade mark.
The opposition may only invoke that the trade mark may be
cancelled due to the reasons mentioned in Section 42 subs. 2
Trademark Act.

National Trade Mark


Section 4 no. 2 Trademark Act:
In addition to registration, the use of a sign in the course of trade shall give
rise to trade mark protection insofar as the sign has acquired public
recognition as a trade mark within affected trade circles.
The requirements are less strict than the establishment in trade circles
pursuant to Section 8 subs. 3 Trademark Act, which overcomes the nonprotectability of a trade mark.
Section 4 no. 3 Trademark Act:
Alternatively, protection is also granted to well-known trademarks.

National Trade Mark


Use of the trade mark (Section 26 Trademark Act):
(1) Where the assertion of rights from a registered trade mark or the
upholding of the registration depends on the trade mark having being
used, it must have been seriously used in this country by its proprietor for
the goods or services in respect of which it is registered unless there are
legitimate grounds for non-use.
(5) Insofar as use within five years from the point in time of the registration
is necessary, in cases in which an opposition has been lodged against the
registration, the time of the registration shall be substituted by the point in
time of the conclusion of the opposition proceedings.

National Trade Mark


Duration of protection and renewal (Section 47 Trademark Act)
(1) The duration of protection of a registered trade mark shall
commence on the date of application (Section 33 subs. 1) and
shall end after ten years on the last day of the month
corresponding in name to the month in which the date of
application falls.
(2) The duration of protection may be extended by ten years in each
case.

National Trade Mark


Revocation (Section 49 Trademark Act):
(1) The registration of a trade mark shall be cancelled on request
because of revocation if the trade mark has not been used after the
date of registration in accordance with Section 26 within an
uninterrupted period of five years.

SCOPE

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National Trade Mark


Exclusive right of the proprietor of a trade mark, right to an
injunction, compensation claim (Section 14 Trademark Act):
(1) The acquisition of trade mark protection shall grant to the
proprietor of the trade mark an exclusive right.
A trade mark infringement is thus a use of a protected sign by a
third party without consent of the owner of the trade mark in the
course of trade.

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National Trade Mark


Infringement of a trade mark:
Infringement of identity: The used sign is identical to the
protected sign and it is being used for goods/services in identical
categories.
Likelihood of confusion: The likelihood of confusion is
determined by (1) the similarity of the signs, (2) the similarity of
related goods/services and (3) the distinctiveness of the
protected sign.
Exploitation of a popular sign: A similar sign is taking unfair
advantage of a popular signs reputation or damaging this signs
reputation. A sign is deemed popular, if it is renowned amongst
20-30 % of the relevant circles.

National Trade Mark

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LEGAL RECOURSE

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National Trade Mark


Legal recourse:
Compensation claim (Section 16 subs. 6 Trademark Act)
Destruction and re-call (Section 18 Trademark Act)

Information (Section 19 Trademark Act)


Submission and inspection (Section 19a Trademark Act)

CONSTRAINTS

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National Trade Mark


Constraints of German Tradenark Law
Limitation: Limitation for claims based on infringement is 3 years
from the date the trade mark proprietor is aware of the
infringement. Regardless of the proprietors awareness, such
claims are barred after 30 years from the date of infringement.
Forfeiture: A trade mark proprietor tolerating an infringement for 5
consecutive years loses the right to claim infringement.
Descriptive use: Mere descriptive use of protected signs (e.g. to
indicate the purpose of a product or service) is not prohibited.

National Trade Mark


Exhaustion: The distribution of trademarked goods within the
European Economic Area is not prohibited if these goods have
been put on the market with the consent of the trade mark
proprietor.
Non-use: No infringement claims may be asserted against third
parties if the trade mark has not been put to genuine use within a
period of five years prior to asserting the claim.

Case Study

Case Study

INTERNATIONAL TRADEMARK
PROTECTION
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International Trade Mark Protection


Principle of Territoriality
Agreement on Trade-Related Aspects of Intellectual Property
(TRIPS)
Encourage international trade
Establishing minimum standards
Enforcement of IP-rights

Paris Convention for the Protection of Industrial Property

International Trade Mark Protection


National Trade Mark
International Trade Mark (Madrid system; 89 Member States)
Union Trade Mark
Foreign National Trade Marks (Brazil, South Africa)
Regional Trade Mark Protection
OAPI
ARIPO

Contact Information
Sven Jacobs | Associate
Rechtsanwalt
Norton Rose Fulbright LLP
Taunustor 1 (TaunusTurm), 60310 Frankfurt, Germany
Tel +49 69 505096 416 | Mob +49 173 3404587 | Fax +49 69
505096 100
sven.jacobs@nortonrosefulbright.com

NORTON ROSE FULBRIGHT

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