GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
A licence can be registered by request of the trade mark owner or the licensee and with consent of the other party. The same applies to the licence’s lapse and any alteration. However, it is worth noting that this is only declaratory and has no legal effect. A copyright licence can neither be registered nor recorded. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Claims under trade mark law and copyright law are, as a general rule, time-barred after three years. This period begins at the end of the year in which the claim arose and the owner of the trade mark or copyright became aware or should have become aware without gross negligence of the circumstances giving rise to the claim and of the person who infringed the trade mark. The claim does not automatically lapse at the end of that period; on the contrary, the defendant has to invoke the limitation period. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Out of court, the owner of a trade mark or copyright may send a warning letter to the alleged infringer and demand a declaration of agreement to cease and desist from the respective trade mark infringe - ment. Furthermore, preliminary injunctions or regular infringement proceedings may also be brought before the competent court directly, even without sending a warning letter first. In cases when the infringement is not clear-cut, the owner may also send an authorisation inquiry ( Bere- chtigungsanfrage ) to the (alleged) infringer, request - ing an explanation why they believe themselves to be entitled to use the respective right. An authorisa - tion inquiry, unlike a warning letter, contains neither a request to cease and desist nor a threat of further legal action in case of non-compliance. It serves the purpose of substantiating the suspicion of an infringe - ment and does not create the risk of a counter-action because of raising non-existing claims.
There are different types of infringement such as direct infringement and contributory infringement. For the elements to be fulfilled, see 7.3 Factors in Determin- ing Infringement . In German trade mark law the term “dilution” does not exist, which is why a trade mark cannot be opposed or prevented from being used in a lawsuit due to “dilu - tion”. However, a trade mark may be contested, with “dilution” being understood as synonymous with a detrimental effect on the distinctive character of a well-known trade mark, which may cause a trade mark infringement. It is often not easy to take action against cybersquat - ting, because regularly there is no evidence of a risk of confusion due to the (often missing) content of the website linked to the domain. The holding of domain names for speculative purposes without the inten - tion of using them is not necessarily considered an abuse of rights under German law. However, the act becomes abusive if the domain owner exerts pres - sure on the owner of a trade mark; eg, by activat - ing undesirable content on the website in order to be able to sell the domain to them. In this regard, claims under the German Unfair Competition Act (UWG) are particularly relevant. Information used for rights management is legally protected against removal and alteration. Under the CA, rights management information is defined as elec - tronic information that identifies the works or other protected subject matter, the author or any other right- holder, information on the terms and conditions relat - ing to the use of the works or protected subject mat - ter, and any numbers and codes that represent such information. Copyright management information may not be removed or altered if any of the information concerned is affixed to a copy of a work or of other protected subject matter or in the context of com - munication to the public of such a work or protected subject matter is published and if removal or alteration has been knowingly undertaken without authorisa - tion, and those acting know or must have reasonable grounds to know that by doing so they are inducing, enabling, facilitating or concealing an infringement of copyright or related rights.
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