GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
7.2 Legal Claims for Infringement Lawsuits and Their Standards
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 pur - poses without the intention of using them is not necessarily considered an abuse of rights under German law. However, the act becomes abusive if the domain owner exerts pressure on the own - er of a trade mark; eg, by activating 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 electronic information that identifies the works or other protected subject matter, the author or any other right-holder, information on the terms and conditions relating to the use of the works or protected subject matter, and any numbers and codes that represent such infor - mation. Copyright management information may not be removed or altered if any of the informa- tion concerned is affixed to a copy of a work or of other protected subject matter or in the context of communication to the public of such a work or protected subject matter is published and if removal or alteration has been knowingly undertaken without authorisation, and those act - ing know or must have reasonable grounds to know that by doing so they are inducing, ena - bling, facilitating or concealing an infringement of copyright or related rights. 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 ser - vices, the competing signs firstly need to be compared by conducting an overall assessment
Out of court, the owner of a trade mark or copy - right may send a warning letter to the alleged infringer and demand a declaration of agreement to cease and desist from the respective trade mark infringement. 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 ( Berechtigungsanfrage ) to the (alleged) infring - er, requesting an explanation why they believe themselves to be entitled to use the respective right. An authorisation 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 infringement 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 infringe - ment. For the elements to be fulfilled, see 7.3 Factors in Determining Infringement . In German trade mark law the term “dilution” does not exist, which is why a trade mark can - not be opposed or prevented from being used in a lawsuit due to “dilution”. However, a trade mark may be contested, with “dilution” being understood as synonymous with a detrimen- tal 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 cyber - squatting, because regularly there is no evidence
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