GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
7.3 Factors in Determining Infringement In order to determine a trade mark infringement due to the likelihood of confusion between the trade mark and a potentially infringing sign with regard to the origin of particular goods and services, the compet - ing signs firstly need to be compared by conducting an overall assessment of the oral, conceptual and/or visual similarity. Secondly, a comparison of the goods and services for which the respective signs seek protection is conducted. Finally, the degree of dis - tinctiveness of the trade mark has to be determined. Furthermore, the potentially infringing sign has to be used as a trade mark (and, for example, not purely descriptively). Copyright infringement involves using the author’s work without permission and thereby violating the rights of use granted by the copyright such as the right of reproduction, the right of distribution, the right to make available to the public, and the right of reproduction by means of audio or video carriers. Accordingly, it must be examined whether the use of the alleged infringer encroaches on the scope of the copyright protection. In a second step, it is assessed whether there are any relevant limitations that permit the use. 7.4 Prerequisites and Restrictions to Filing a Lawsuit There are no prerequisites with regard to filing a law - suit (eg, a mediation procedure). However, an immedi - ate filing of a lawsuit without sending a warning letter might have implications for the owner’s obligation to bear the costs (see 7.2 Legal Claims for Infringement Lawsuits and Their Standards ). 7.5 Lawsuit Procedure With regard to trade mark infringements, the region - al courts ( Landgerichte ) have exclusive jurisdiction. Furthermore, in each German state there are a lim - ited number of specialised regional courts that deal exclusively with trade mark cases. Thus, a trade mark owner would have to review which regional court is competent for the alleged trade mark infringement in the respective case. In the second instance, the higher regional court ( Oberlandesgericht ) which is competent for the dis -
trict of the regional court will decide on an appeal. An appeal decision of a higher regional court may be appealed on points of law only to the BGH and subject to certain conditions (see 11.1 Appellate Procedure ). Due to the aforementioned exclusive jurisdiction of the regional courts in trade mark matters, the parties need to be represented by a lawyer. In copyright infringements, the general civil procedure provisions for jurisdiction apply. Accordingly, up to an amount in dispute of EUR5,000 the district courts ( Amtsgerichte ) are competent in the first instance and the regional courts are competent in the sec - ond instance. If the amount in dispute is higher than EUR5,000, the regional court has jurisdiction in the first instance and the higher regional court will decide in the second instance. Determining the amount in dispute in copyright lawsuits depends on the evolving case law. The type and scope of allegedly infringing use are also a decisive factor. Foreign trade mark or copyright owners may also bring infringement claims in Germany. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants In defence against actions for a preliminary injunc - tion, a defendant may proactively file a protective brief (Schutzschrift) substantiating the reasons why an alleged infringement does not exist. A defendant may also file an action for declaratory judgment of non-infringement. However, once the trade mark or copyright owner files a counter-claim based on the alleged infringement, there is no justified interest in the declaratory judgment, so the potential defendant has to withdraw the application for declaratory judgment to avoid unnecessary costs. 7.7 Small Claims Because of the exclusive jurisdiction of regional courts for trade marks claims (see 7.5 Lawsuit Procedure ), there is no alternative judicial body to resolve smaller trade mark claims. Neither is there one for smaller copyright disputes.
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