GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
7.8 Effect of Trade Mark and Copyright Office Decisions The courts dealing with trade mark infringement cases are bound by the decisions of the DPMA and the Ger - man Federal Patent Court only with respect to the (non-)existence of trade mark rights. Furthermore, an infringement court cannot completely deny the dis - tinctiveness of an existing trade mark. However, with regard to all other legal questions (eg, likelihood of Among other things, a third party is prohibited, in trade and without the consent of the trade mark proprietor, from using signs that are identical or similar to the trade mark if they are used for goods or services that are identical or similar to those covered by the trade mark (likelihood of confusion). Trade mark infringe - ments are not necessarily or typically equal to coun - terfeits. Rather, a counterfeit sign usually requires the intent to use a trade mark in trade without permission. This product piracy can be a criminal action under the TMA. Accordingly, certain copyright infringements with intent are criminal according to the CA. confusion) the court is free to decide. 7.9 Counterfeiting and Bootlegging However, “counterfeiting” is not a legal term within the TMA or the CA. Furthermore, “bootleg” is not a legal term of the CA, but rather an actual phenomenon. If a trade mark or copyright is infringed intentionally, the rights owner is entitled to injunctive relief, destruc - tion of the counterfeits or bootlegs, damages and information about their origin. There are no specific remedies. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings Trade mark and copyright proceedings before the civil courts in infringement and cancellation proceedings follow the standard procedural rules as laid down in the German Code on Civil Process ( Zivilprozessord- nung or ZPO).
Trials before the Federal Patent Court and the BGH in appeal cases ( Beschwerden ) against decisions of the DPMA in registration proceedings generally also fol - low the standard procedural rules. However, the TMA stipulates several additional provisions for these trials. Cases are generally determined by legal judges alone; however, in infringement cases, it is possible to have the case heard by a chamber for commercial mat - ters ( Kammer für Handelssachen ) at the competent regional court. Juries do not exist under German law. The parties have no direct influence on who hears their case. However, in certain specific cases, they may reject a judge because of concerns of bias. 8.2 Effect of Registration The TMA contains a refutable presumption that the registered owner of a trade mark is the actual owner of the trade mark (Section 28 paragraph 1 TMA). If the owner needs to defend the trade mark, it is con - siderably easier to raise claims when the owner is the registered owner; this should be taken into account in particular by the new trade mark owner after the transfer of the trade mark right. 8.3 Costs of Litigating Infringement Actions Attorney’s fees and court fees are subject to the value of the amount in dispute ( Streitwert ) and the activities of the attorney. Due to individual fee agreements, the parties’ attorney costs may be significantly higher. Expenses, remuneration of witnesses or experts, cost for service of process or translation costs will be added. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement As a defence, a defendant may invoke an earlier right to use a specific sign. Additionally, the use of the sign might be in accordance with good faith practices in industrial or commercial matters. Furthermore, a limitation or forfeiture of rights may be invoked as a defence. Forfeiture under trade mark law requires that, after the grace period (see 4.5 Use in Commerce Prior
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