How often are trademarks negotiated in court?

Service portal Baden-Wuerttemberg

Infringements of property rights can cause great economic damage to companies. Consumers are misled about the actual quality and origin of goods and product safety can be impaired to the detriment of consumers due to counterfeit ingredients.

Most often, property rights are infringed through brand and product piracy.

Examples of infringement of property rights:

  • Counterfeiting of branded products (brand piracy):
    Products bear the fake logo of a well-known manufacturer, are made with low-quality material and are sold at low prices.
  • Counterfeiting of a design (product piracy):
    Many manufacturers design their products so that they are unmistakable, so that consumers know who the manufacturer is as soon as they look at the goods. The design of a product is often copied so that consumers buy it with the belief that it is the original product from this manufacturer.
  • Infringement of copyrights:
    This includes, for example, the unauthorized copying of CDs, DVDs or the unauthorized downloading of music files from the Internet.

In practice, however, registering a property right does not protect you from unauthorized use. However, you have the right to demand the omission of certain actions and to assert claims for damages in the event of a breach.

Danger: Infringements of property rights are criminal offenses that can also be punished with imprisonment or fines.

As the owner of property rights, you can be affected by two types of property right violations:

Your property rights are being violated by third parties

For all commercial property rights, the owner has the sole right of commercial exploitation. If someone uses one of your property rights without your permission, you have the right to take action. It is initially unimportant whether the property right infringement was committed intentionally or unintentionally.

Before you go to court, you should check whether you can settle the matter out of court and thus save time and money. If you are sure that there has been an infringement of property rights, you should first request the infringer in writing with a warning letter to refrain from the infringing act and give him or her a reasonable deadline to comment on it.

The warning makes it easier for you to prove in court that third parties are illegally using your property right.

If the warning is unsuccessful, you should go to court. You can request injunctive relief or compensation. In certain cases you can also demand that the illegally manufactured products be destroyed. The court will make its decision dependent, among other things, on whether the infringement was committed intentionally or negligently.

Danger: As soon as you suspect that someone is violating your property rights, you should seek advice from a patent attorney or a lawyer. You can search for a patent attorney in your area on the website of the Chamber of Patent Attorneys. You can also find lawyers on the websites of the bar associations in Baden-Württemberg, or you can be mediated by them:

Note: In Baden-Württemberg, community trademark and design disputes are negotiated in the district of the Karlsruhe Higher Regional Court at the Mannheim Regional Court, in the Stuttgart Higher Regional Court district at the Stuttgart Regional Court, patent and utility model disputes for all court districts of the state are negotiated at the Mannheim Regional Court. The place of the violation is decisive for the jurisdiction.

One way of preventing the infringement of property rights by goods coming from abroad is to apply for border seizure proceedings at the responsible regional tax office if there is justified suspicion. This enables you to prevent counterfeit products from entering the country and being offered to consumers for a period of two years. You may need a court decision for this.

At the request of companies, border seizure procedures are coordinated throughout Germany and Europe by the Central Office for Industrial Property Protection (ZGR). The ZGR is the central point of contact with a supervisory function.

Tip: You yourself can help to facilitate the implementation of border seizure procedures by providing your products with security devices such as labels, security threads, security labels, holograms or the like.

You yourself are accused by third parties of violating their property rights

As a matter of principle, you have to research in the research and development phase whether your future product, your intended service or your future product or company name does not infringe any third party rights. In this way you can generally avoid such accusations. You should also register industrial property rights yourself, where it makes sense and possible.

Danger: If, despite the utmost care, you receive a letter of warning from a proprietor of the proprietary right and are requested to refrain from the act of infringement, you must not ignore this under any circumstances. You should consult a patent attorney or a patent attorney and coordinate the next steps with them. In any case, you need an approved representative in court. You may need both patent and legal representation. Lawyers are therefore also active in some patent law firms.

In the first step, you should clarify whether it is a valid property right and whether the sender of the letter is authorized to warn you. You can find this out by researching the patent roll or in the relevant registers of the DPMA. In the second step, you should check whether your use falls within the scope of protection of the relevant property right. Usually only the patent attorney can assess this together with you.

If you come to the conclusion that you are actually violating the property right, you should try to find a solution that does not violate the property right. If that is not possible or too costly for you, you should check whether the infringed property right can be challenged. To do this, you should research carefully whether there are any documents on the basis of which you can initiate nullity or cancellation proceedings. If the patent is unexamined, you can file a request for examination. Until the outcome of the initiated proceedings, nothing will be decided in court in infringement proceedings either.

Tip: You can conduct research yourself in the display halls of the German Patent and Trademark Office (DPMA) in Munich and Berlin or in patent information centers. There is the Stuttgart Patent Information Center in Baden-Württemberg. The DPMA also offers search and research options on its website that you can use externally. However, research in a patent information center is recommended.

In general, it will be easier to take action against an unexamined patent, a utility model, design or a trademark than against a granted patent that has been checked for all protection requirements.

Tip: You should note that not every property right infringement will be tried in court. If necessary, you can reach an out-of-court agreement and it may well be that the owner of the property right is interested in rights of use for property rights or know-how you have registered. Mutual rights of use can be beneficial for both parties.