GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
mark, it is considerably 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 mat - ters. 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 to Registration ), the claimant has not used its trade mark for a period of five years. Defences based on general civil law principles are also applicable (see 7.4 Prerequisites and Restrictions to Filing a Lawsuit ). 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The fair use doctrine applicable in the USA does not apply in Germany. However, according to the
new Section 23 sentence 2 CA, the consent of the rights-holder is not required if the newly cre - ated work maintains a sufficient distance from the used work. A limitation of copyright for caricatures, paro - dies and pastiches was introduced in Section 51a CA. All three terms are autonomous con - cepts of EU law. According to the ECJ, essen - tial characteristics of a “parody” are to recall an existing work, but at the same time to show per - ceptible differences from it, and to represent an expression of humour or a mockery. It is likely to assume that a “caricature” is a sub-case of a parody or at least a closely related phenomenon, which usually involves a figurative representa - tion and to which the same principles apply. The BGH has recently requested a preliminary ruling of the ECJ to provide a binding definition of the term “pastiche”. Further limitations of copyright address the area of free speech and information. According to Section 52 CA, it is permitted to communicate to the public a published work if that communica - tion serves a non-profit-making purpose for the organiser of an event, if participants are admit - ted free of charge and, in the case of a lecture or performance of a work, if none of the performers is paid special remuneration. 9.3 Exhaustion Under the TMA, the proprietor of a trade mark is not entitled to prohibit a third party from using the trade mark for goods that have been put on the market under this trade mark (either by them or with their consent) in any EU member state or in any other contracting party to the Agreement on the EEA. This does not apply if there are legiti - mate reasons for the proprietor of the trade mark to oppose the use of the trade mark, in particular
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