Trademark Lawyers in Germany

Trademark law in Germany is a key aspect of industrial property protection. It is governed by the German Trademark Act (MarkenG) and the Ordinance on the Implementation of the Trademark Act (MarkenV). Under Section 3 (1) German Trademark Act, any sign—including words, names, designs, letters, numbers, sounds, three-dimensional shapes, packaging, and colour combinations—can qualify for trademark protection if it distinguishes one company’s goods or services from another’s.

Trademark registration grants the owner exclusive rights to use the mark and enforce those rights against unauthorized third parties. In Germany, trademarks are registered with the German Patent and Trademark Office (DPMA). Registration with the EUIPO (European Union Intellectual Property Office) is required for broader European protection, while global trademark protection is handled through the WIPO (World Intellectual Property Organization). It is important to distinguish between trademarks that are already registered and those still in the application process, as full legal protection is only granted upon official registration.

If you require expert legal assistance for trademark registration, protection, or enforcement in Germany, our experienced trademark lawyers are here to help.

Trademark law covers a wide range of content as a trademark. In practice, word marks and device marks are the most relevant. However, there are also:

• three-dimensional marks,
• colour marks,
• sound marks,
• position marks,
• tracing thread marks,
• pattern marks,
• motion marks,
• multimedia marks,
• hologram marks,
• other marks, e.g. those perceived by touch or smell or mixed forms of the above.

The most common types of trademark applied for are word marks and figurative marks or a combination of word marks and figurative marks. A “word mark” within the meaning of section 7 of the Trade Mark Ordinance can be represented ‘in standard characters’, i.e. with letters, numbers or other characters. They are not coloured or graphically designed.

Accordingly, the subject matter of protection of a word mark comprises only the selected sequence of characters. The use of upper and lower case letters and common spellings are included. Letters, numbers and standard punctuation marks (such as ‘:,+,-,?,!’) are considered ‘signs’. As soon as the trademark is registered and contains more than just common signs, it is no longer a pure word mark but either a mixed form of word and figurative mark or a figurative mark. Word marks in which the appearance and design of lettering are in the foreground are also considered to be word/figurative marks. Criteria for this are, for example, whether the words are printed in bold or italics or arranged in several lines or positions.

Furthermore, a word’s or figurative mark’s lettering is not necessarily protected by copyright. As the name suggests, figurative marks are images and elements that do not contain any written elements. The differences between the individual characteristics can be fluid in some circumstances.

Trademark registration in Germany is open to individuals, companies, and associations engaged in commercial activities, with no restrictions on who may apply. However, before filing a trademark application, it is essential to conduct a thorough examination to determine whether similar or pre-existing trademarks already exist. If an identical or similar trademark is found, a likelihood of confusion could lead to refusal of registration or legal challenges, including injunctive relief and claims for damages from the owner of the earlier registered mark.

When a trademark application is submitted, the respective trademark office—whether the German Patent and Trademark Office (DPMA), the European Union Intellectual Property Office (EUIPO), or the World Intellectual Property Organization (WIPO)—examines the submission for completeness and compliance with formal requirements. However, this process does not include an automatic check for prior trademark rights, making it the applicant’s responsibility to ensure no conflicting rights exist. Once approved, the trademark is officially registered and published in the relevant trademark registers, such as the Official Journal of the DPMA, the EUIPO eSearch database, or the WIPO Gazette of International Marks, ensuring public access to all registered trademarks.

A trademark acquires legal protection in Germany through its registration in the trademark register, as outlined in Section 4 No. 1 of the German Trademark Act (MarkenG). The principle of priority governs trademark rights, meaning that an earlier registered trademark takes precedence over later applications. If a newly registered trademark infringes an existing one, the owner of the earlier trademark can initiate opposition proceedings or take legal action in the ordinary courts to seek cancellation and claim damages.

A trademark must meet certain protectability requirements to be registered, ensuring it is distinctive and original. Absolute and relative grounds for refusal may prevent registration under Section 8 MarkenG. Absolute grounds apply when a trademark lacks distinctiveness, consists of commonly used words, or cannot be represented graphically, leading to immediate rejection. Relative grounds for refusal, such as similarity to an earlier trademark or a conflicting prior registration, must be asserted by the affected party through opposition or legal proceedings. The strict protectability requirements of German trademark law help maintain the originality and enforceability of each registered trademark.

Trademark owners and licensees can take legal action under § 14 MarkenG if their rights are infringed. This includes cases of trademark copying, imitation, or unlawful exploitation of a well-known trademark. German law provides multiple avenues for enforcing trademark rights, both extrajudicially and through litigation.

Trademark owners can assert claims for:

• Cease and desist orders to prevent further trademark infringement (Section 14 (5) MarkenG)
• Damages for financial losses incurred (Section 14 (6) MarkenG)
• Restitution of unjust enrichment under Section 812 BGB (German Civil Code)
• Destruction and recall of infringing products (Section 18 MarkenG) 
• Information rights to identify infringers (Section 19 MarkenG)
• Inspection rights to assess unauthorized use (Sections 19a, 19b MarkenG)
• Publication of judgments in trademark disputes (Section 19c MarkenG)

The most frequently enforced claims are for injunctive relief, damages, destruction, recall, and access to information about the infringement. If a trademark owner claims damages, they can choose between three methods for calculating compensation: the actual financial loss, an appropriate fictitious license fee, or the surrender of the infringer’s profits.

The right to destruction and recall gives trademark holders the power to demand that infringing goods be removed from circulation or destroyed, ensuring they are no longer available on the market.

The right to information plays an important role in preparing a claim for damages. It enables the trademark owner to obtain details about the origin and distribution channels of the infringing goods, including information on the quantity sold and pricing. This transparency is essential for calculating damages and identifying those responsible for the infringement.

Trademark infringement cases often involve legal questions, especially when it comes to proving infringement or defending against unjustified claims. Our experienced team of lawyers is ready to support you—both out of court and in court—to enforce or defend your trademark rights effectively. Whether you are facing a legal challenge or need to take action against infringers, we offer strategic and practical legal representation tailored to your specific case.