Trademark Lawyers in Germany

Trademark law is part of identification rights law and belongs to intellectual property law (IP law). Rights from which trademark holders can take action only arise with a registered trademark. The legal basis for this is the Trademark Act (MarkenG). At the same time, the Regulation for the Implementation of the Trademark Act (MarkenV) provides the practical “tools” for the theoretical framework of the Trademark Act.

Once a trademark is registered, it grants the holder the exclusive right to use it. This right can naturally be transferred to others through licensing agreements. The registered trademark further confers the right of prohibition to the holder. This is a defensive right against third parties who use the trademark without authorisation. The trademark must be registered in the respective register to establish trademark protection. This depends on the level of security. For the German market, the German Patent and Trademark Office (DPMA) is responsible, at the European level the EUIPO (European Union Intellectual Property Office), and at the international level the WIPO (World Intellectual Property Organization). A trademark does not necessarily have to be registered in order to be used. However, the protective effects mentioned above only arise upon registration, regardless of how long the trademark was already used beforehand.

A trademark may take various forms, provided it can distinguish the goods or services of one undertaking from those of others. Trade mark law protects a broad spectrum of signs:

• Word marks: Terms, slogans and even personal names that serve as business identifiers,
• Figurative marks: Logos, symbols, images and graphic designs of all kinds,
• Letters and numerals: Individual or combined characters that possess distinctive characteristics,
• Sound marks: Melodies, jingles or characteristic sequences of sounds that represent an undertaking,
• Three-dimensional marks: The shape of products or their packaging, provided it is distinctive,
• Colour marks: Individual colours or specific colour combinations with recognition value,
• Get-up marks: Special design forms and trade dress of products.

In addition to conventional trade mark protection, trademark law also covers business designations such as company names and geographical indications, which reflect certain quality characteristics or traditions of a region.

Word marks and figurative marks, or a combination of word and figurative marks, are most frequently filed. A word mark within the meaning of Section 7 MarkenV may be represented “in standard characters”, i.e. with letters, numerals or other characters. They are not coloured or graphically designed. Accordingly, the subject matter of protection of a word mark comprises solely the chosen sequence of characters. Upper and lower case, as well as common spellings, are included. Letters as well as numerals and standard characters (such as “:, +, -, ?, !”) count as “characters”.

As soon as the mark to be registered contains not only standard characters, it is no longer a pure word mark, but either a combination of word and figurative mark or a figurative mark. Word marks where the visual appearance and design of lettering is in the foreground are likewise regarded as word/figurative marks. Criteria for this include, for example, whether the words are printed in bold or italics, arrangements in several lines or positions.

Moreover, the lettering of a word/figurative mark is not necessarily protected by copyright, since the visual appearance and design constitute the protected subject matter in this case. Figurative marks are – as the name suggests – images and elements which contain no textual components whatsoever. The distinctions between the individual characteristics may in some circumstances be fluid.

Both natural persons and all legal persons and associations of persons participating in economic life are entitled to file trademark applications. The circle of persons is practically unrestricted. In particular, when registering a trademark, it must be considered whether a similar mark has already been registered and/or whether prior rights already exist.

If similarities are identified, it must next be examined whether there is a likelihood of confusion between the trademarks. In such a case, registration of the later trademark may be refused. If it is overlooked during registration that similarities exist, or if a mark is registered for other reasons despite a likelihood of confusion, the proprietor of the earlier registered mark may threaten the proprietor of the later registered mark with claims for injunctive relief and damages. It is therefore essential to independently and carefully examine the existence of prior rights before trade mark registration.

Following receipt of the application for registration, the submitted documents are examined by the respective trademark office for completeness and formal correctness. However, this examination does not include the existence of prior rights, which is why this verification is incumbent upon the applicant in each case. After a successful examination, the mark is entered in the respective register and published.

In Germany, this is in the Official Bulletin of the German Patent and Trade Mark Office, for EUIPO online in the eSearch database, and for WIPO in the Official Bulletin Gazette of International Marks. Therefore, all registered trademarks can be found here.

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 Section 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 unauthorised 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:

• The actual financial loss,
• An appropriate fictitious fee,
• Or the surrender of the infringer’s profits.

The right to destruction and recall allows trademark holders 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 a vital 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 regarding 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 effectively enforce or protect your trademark rights. 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.