GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
of the oral, conceptual and/or visual similarity. Secondly, a comparison of the goods and ser - vices for which the respective signs seek protec - tion is conducted. Finally, the degree of distinc - tiveness 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 copy - right 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 copy - right 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 lawsuit (eg, a mediation procedure). However, an immediate filing of a lawsuit without send - ing 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 regional courts ( Landgerichte ) have exclusive jurisdiction. Furthermore, in each German state there are a limited number of specialised region - al 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 respec - tive case.
In the second instance, the higher regional court ( Oberlandesgericht ) which is competent for the district 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 pro - cedure provisions for jurisdiction apply. Accord - ingly, 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 second 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. 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 injunction, 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
158 CHAMBERS.COM
Powered by FlippingBook