GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
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. 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 German Federal Patent Court only with respect to the (non-)existence of trade mark rights. Furthermore, an infringement court can - not completely deny the distinctiveness of an existing trade mark. However, with regard to all other legal questions (eg, likelihood of confusion) the court is free to decide. 7.9 Counterfeiting and Bootlegging Among other things, a third party is prohibited, in trade and without the consent of the trade mark proprietor, from using signs that are identi - cal 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 infringements are not necessarily or typically equal to counter - feits. Rather, a counterfeit sign usually requires the intent to use a trade mark in trade without permission. This product piracy can be a crimi - nal action under the TMA. Accordingly, certain copyright infringements with intent are criminal according to the CA. However, “counterfeiting” is not a legal term within the TMA or the CA. Furthermore, “boot - leg” is not a legal term of the CA, but rather an actual phenomenon.
If a trade mark or copyright is infringed inten - tionally, the rights owner is entitled to injunctive relief, destruction 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 ( Zivilprozessordnung or ZPO). Trials before the Federal Patent Court and the BGH in appeal cases ( Beschwerden ) against decisions of the DPMA in registration proceed - ings generally also follow the standard proce - dural 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 possi - ble to have the case heard by a chamber for com - mercial matters ( 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 con - cerns 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
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