GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
domains – and indications of geographical origin are also protected. In general, industrial designs can acquire trade mark protection as they are signs. However, the requirements for this are high. Provided that the sign is appropriate and distinc - tive, any type of perceptible sign might be pro - tected as a trade mark. Consequently, besides word marks and figurative marks, there are also combined word/figurative marks, sound marks, olfactory (smell) marks, colour marks, movement marks, certification marks, collective marks, slo - gans and three-dimensional marks. Trade marks that are not yet registered or in use in Germany can be protected if they are famous marks in the sense of Article 6bis of the Paris Convention. In addition, special legal protection is provided for the Olympic emblem and other Olympic des - ignations by the Olympiaschutzgesetz . 2.2 Essential Elements of Trade Mark Protection As mentioned in 2.1 Types of Trade Marks , any type of depictable sign may be protected as a trade mark as long as it is, inter alia, dis - tinctive. In determining the distinctiveness of a sign the German Patent and Trade Mark Office ( Deutsches Patent- und Markenamt or DPMA) must assess the capability of the sign to identify the goods or services for which protection has been applied and to distinguish those goods or services from those of others. Descriptive marks that directly describe the characteristics, quali - ties, and/or features of the goods or services are usually considered not inherently distinc - tive. However, a descriptive sign may acquire distinctiveness and – as a consequence – may
be protectable as a trade mark through usu - ally extensive use establishing the sign in the affected trade circles. To prove this acquired distinctiveness, the right-holder must submit, inter alia, evidence that consumers have been exposed to a widespread use of the respective sign and associate the goods or services with a particular origin. 2.3 Trade Mark Rights According to the TMA, trade mark owners have the exclusive right to use their marks with respect to the goods and services for which the trade mark is registered. This includes the right of the trade mark owner to prevent unauthorised third parties from using identical or similar marks for identical or similar goods and services leading to a likelihood of confusion among consumers. In addition, they may have claims for informa - tion, compensation and accounting (Section 14 et seqq. TMA). 2.4 Use in Commerce German trade mark law does not require the use of the applied trade mark in commerce pri - or to registration. However, the TMA generally requires the “serious use” of the trade mark for all goods and services for which the trade mark is protected in order to maintain the right to the trade mark after registration. Important indicators for the seriousness of the use are the amount of marketing expenditure concerning the trade mark and the revenue created by the trade mark. After the expiry of a grace period (of usually five years), a trade mark that is not seriously used may be cancelled upon request of any third party.
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