Service | Lawyer Oliver Langner
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Businesses are very likely to operate for decades as a particular company or offer goods and / or services under a specific name without protecting the company / name by law. The importance and necessity of such protection usually becomes apparent only when another entrepreneur or even competitor applies for such protection and may then exclude others (including the entrepreneur) from its use although they have been working with the affected good / service / name for decades.
In this context, the former user then not only loses a costly built reputation but is even targeted as a trademark infringer himself.
Yet, the registration of a trademark at the German Patent and Trademark Office (DPMA), on a European level at the Office for Harmonization in the Internal Market (OHIM) or at the World Intellectual Property Organization (WIPO) can be achieved relatively quickly and cheaply.
Within the framework of trademark law, the protection of goods and / or services, of company names as well as geographical indications of origin and work titles can be demanded from these authorities or organizations. In the area of national law and the competences of the DPMA, three types of trademarks are permissible:
- a word (word mark)
- the combination of a word with a logo (word and figurative mark);
- a logo (figurative mark).
Among other things, the decision of an entrepreneur for a certain brand is generally dependent on whether the name is an original creation of the entrepreneur (= invention) and / or whether the entrepreneur has already occurred in connection with the name under a certain logo in the past.
Finally, a trademark is registrable only if it is sufficiently distinguishing the goods and / or services from those of another company (sufficient distinctiveness) and as long as the designation or name is not kept for the general public to describe or designate certain goods and / or services (requirement of availability). It goes without saying that certain words may not be blocked for the supply of goods and / or services because their use is essential for a functioning trade and every entrepreneur.
The owner of a registered trademark has the exclusive right to act in business dealings under this name and to exclude third parties from the use of this name. Third parties may only appear in the business dealings with the trademark owner's consent under an identical or similar name in an identical or similar goods and / or services sector.
Rights of the trademark owner
If a third party uses the trademark of a trademark owner without his consent and offers goods and / or services that don't originate from the trademark owner and the third party therefore acts contrary to the foregoing explanations, a trademark infringement will occur.
The trademark owner may then claim from this third party (i) omission (ii) information about the utilization, (iii) compensation for the use and (iv) the reimbursement of attorneys' fees for the prosecution.
The claim for damages in favor of the trademark owner can be based on three different calculation methods. The trade mark owner may (i) firstly demand the payout of all the profit the third parties has generated with the sale of the goods or (ii) secondly demand the potential profit the owner would have generated with the sale of the goods; (ii) he may thirdly claim a notional license fee that another potential third party would have paid to the trademark owner for the use of the brand.
Due to the obligation of the third party who has used the brand owner's trademark unlawfully to reimburse the attorneys' costs to the trademark owner, a legitimate warning for trademark infringement can also be executed without costs for the trademark owner, if the cautioned third party is sufficiently solvent.
Our Service
We are happy to advise you in advance of a trademark application about the signification of a registration as a national, a Europe-wide or a worldwide brand.
In this context, we will take care of the complete trademark application step by step while creating an index of goods and / or services and additionally research in advance for earlier trademarks with the same profile. After all, you do not want to be targeted by brand owners who have already submitted and registered your preferred trademark earlier. Because in that case, you can ultimately very quickly become a trademark infringer.
In addition, we can assist you in defending your trademark against new registrations, especially within the DPMA and the OHIM. There are already simple remedies available to counter new registrations.
In addition, we take care of pre-litigation warnings for trademark infringements and if necessary, enforce your trademark rights in the context of a preliminary injunction and if applicable, in the context of subsequent principal proceedings against third parties.
The preliminary injunction process gives you the opportunity to first reach a quick but only provisional settlement of the claim for cease, whereby the preliminary injunction is issued by the courts on a regular basis on the day on which it was requested by us. In the context of a principal proceeding you can finally enforce all four claims against the trademark infringer as a trademark owner.
Due to the high object value for trademark right (infringement) proceedings, we recommend the recourse to an experienced lawyer.
We have already filed a large number of trademark applications with the DPMA and the OHIM and have defended a large number of trademarks in opposition proceedings at the DPMA and subsequently in complaint procedures at the Federal Patent Court (BPatG).
Furthermore, we have obtained preliminary injunctions against trademark infringers in a large number of courts throughout Germany or enforced trademark rights against trademark infringers in principal proceedings. At the same time, we have fended off warnings for trademark infringement and represented alleged trademark infringers in preliminary injunction processes or principal proceedings.
If you intend to register a denomination or have received a warning for alleged trademark infringement or if you are a trademark owner and want to verify the utilization of a third party, simply contact us by phone or e-mail. We are very happy to help.
Copyright
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Authors, photographers, designers as well as architects have in common that they are not only creative on a regular basis, but also create work such as essays, songs, photographs, pictures, a specially designed interior or technical drawings which are protected by copyright. These works are often the foundation of their income. Unfortunately, such works are often copied by third parties who are trying to save the compensation costs for authors, photographers, designers or architects. Often, contracts are made anyway but ultimately terminated due to differences of opinion. However, the work created until that point of termination will be still used without consent and compensation.
The protection of these works as well as the regulations for the compensation of the creators (= the originator) of these works as well as taking measures regarding the misuse of these works is regulated by the copyright law (UrhG).
The copyright law stipulates appropriate regulations to specify the protectability and the scope of protection of a work, because not every intellectual and creative achievement leads to a copyrightable work.
In addition, it contains differentiated rules of right constellations in which the creator (= originator) may grant certain rights to third parties. After all, copyright itself is not transferable; third parties can only be granted rights of use and rights of exploitation of the work created. Generally, license agreements are concluded for this purpose. They then grant simple or exclusive rights of use.
In this context, the creator must ensure to solely grant those rights to a third party that he truly intends to accord. Further, he must take into account that he receives an appropriate compensation for the rights granted. In doing so, contractual regulations may involve the splitting of the rights and exploitation of use into certain divisions such as print media, radio and television. However, considering the distribution area, these rights may also be allocated to certain countries, to the European Union or worldwide.
Copyright further applies, when companies within the film and record industry carry out warnings to individuals or other companies due to illegal downloads from the internet through a private or company connection (so-called file sharing on peer-to -peer networks). Watching a movie or listening to any audio recording obviously requires payment, which is usually the case in movie theaters, the video store, or when buying a movie / audio recording in the store. This applies equally when downloading movies or music are from the internet.
Originator's rights
As an originator, you have a comprehensive right to use the work you have created. On the one hand, you can consciously and intentionally allow third parties to use your work and on the other hand, prohibit third parties from using them unlawfully.
If the originator identifies copyright infringement by a third party, he is entitled to (i) omission, (ii) information, (iii) damages and (iv) refund of legal fees for the prosecution. The amount of the claim for damages depends among other things on whether an entrepreneur or a consumer misused the protected work and to what extent the work was used.
The author - usually in addition to another authorized user - has the right to persecute the unlawful use of his work by third parties. The claim for an injunction procedure may be pursued in the context of a preliminary injunction, whereby the application for an injunction is generally granted by the court on the day of the petition. If the unauthorized third party accepts the injunction in the context of a final declaration, the matter is settled in this respect. Other claims by the originator such as (i) information, (ii) damages and (iii) refund of attorney's fees can be enforced only in a principal proceeding if the unauthorized third party refuses to fulfill these claims out of court.
Due to the existing fee recommendations in many professions, among others for authors and photographers, it is usually very possible to accurately quantify the claim for damages. There are three possibilities for the originator to calculate the damage. The experience of our law firm has shown that the calculation based on a license analogy is the most common. Here, the originator is treated as if he had granted a license to use his work to third party in exchange for money.
These principles also apply to warnings by companies in the film and sound recording industry due to so-called file sharing. The peculiarity in this case is, however, that a company is only able to identify the subscriber with the implication that this person is also the delinquent (= so-called disturber). Though in our experience, the subscriber often wasn't the delinquent, but other family members in particular the children, guests of the family or even unauthorized third parties who have abused the connection, initiated the download. In this case, the subscriber does not have to be necessarily liable, which is why the respective matter should be well investigated before contacting the company that gave the warning.
Our services
We would be pleased to advise you as the originator with the question as to whether the work created by you is protectable and how it can be used. Regarding this matter, we have often created license agreements for the use of copyrighted works.
In addition, we are happy to assist you if you as the originator discover the misuse of your works by unauthorized third parties. We have already conducted a variety of legal proceedings and enforced the rights of photographers, authors and architects. Within this process, we have both applied for and led preliminary injunctions as well as principal proceedings in regional courts in Germany.
Furthermore, in a large number of cases, we have represented entrepreneurs and individuals who have been warned by companies in the film and sound recording industry because of so-called file sharing. We were able to ward off payment claims in most cases.
If you have any questions about our services or the costs that may be incurred, please contact us by phone or email. We are very happy to help.
Competition Law
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Entrepreneurs have to consider a variety of laws and regulations in the course of business. However, they are often subject to mistakes, especially in the maintenance of an online shop or when selling on platforms such as eBay or Amazon, which in many cases are followed by a warning from competitors regarding competition violations. Those mistakes could often be mastered and solved if at least regularly used, contractual regulations in the General Terms and Conditions (GTC) or mandatory information in the imprint were checked by a lawyer.
To such honest entrepreneurs it is a nuisance finding out that sellers on eBay or Amazon appear under the guise of a private seller and declare commercial sales as private sales. The advantage of such an approach is obvious as it is known that the revocation of sales contracts in private sales is impossible. Many consumers are fooled by such executions.
At least as upsetting for honest entrepreneurs are competitors who advertise leading positions or top products in their online shop that they actually don't have. Above all, the use of superlatives such as "cheapest offer" or "market leader" or the combination of an offer with games and lotteries in order to increase their own sales and disadvantage competitors, is upsetting for the honest businessman. In this context it is another nuisance, when competitors set limitations of liability and shortenings of warranty periods in the terms and conditions or deprive additional costs for shipping and packaging in order to gain competitive advantages.
Rights of an entrepreneur
The practices of entrepreneurs are essentially regulated by the Civil Code (BGB) and the Unfair Competition Act (UWG). On the one hand, the entrepreneur can derive from these legal regulations which contractual regulations he can use against consumers and, on the other hand, which behavior he is not allowed to act on. The UWG also provides the entrepreneur with a legal framework to counteract the business conduct of a dishonest competitor.
In the event of any competition infringement by a competitor, the entrepreneur may request (i) omission, (ii) information about the scope of the anticompetitive act, (iii) damages for anticompetitive conduct and (iv) refund of legal fees for prosecution.
The most important claim of the entrepreneur, the cease of the anticompetitive business practices of the competitor, can be prohibited not only in a lengthy legal process, but after an early, pre-trial warning even within a few hours by a preliminary injunction. It is crucial that no more than a month passes between gaining knowledge of the competition violation of the competitor and the application for a preliminary injunction. This tool also allows entrepreneurs to act against short-term advertising of a competitor who is only running the advertisement for a few days. The claim for damages can be reasonably asserted and enforced without further ado in a principal proceeding. However, it is usually difficult to quantify the damage in terms of amount, because it would have to be shown to what extent the concrete, anticompetitive act has led to an advantage for the competitor.
The preliminary injunction provides you with the opportunity to first achieve a faster but only provisional regulation of the claim of injunctive relief. The injunction is usually issued by the court on the day of application. If the competitor accepts this injunction as part of a final declaration, the claim for injunctive relief has been settled. An additional principal proceeding must not be carried out as far as the competitor regulates the three other claims for (i) information, (ii) damages and (iii) refund of legal fees out of court. Otherwise, a principal proceeding to enforce these claims of the entrepreneur would be appropriate.
Because of the high object values in court proceedings for competition violations we can only strongly advise you to ensure an examination of the case by a lawyer. Although, because of the high object values, a lawyer will be obligatory because of the jurisdiction of the regional courts based thereon, risk considerations and cost-benefit considerations can be made in advance especially in the case of received warnings.
Our services
We are glad to advise you before the opening of an online shop or the development of advertising measures in order to avoid warnings from competitors because of competition violations. We extensively verify the legality of the Terms and Conditions that you request, either on the basis of a preliminary draft by you or on the basis of the ideas expressed by you. By doing so, you can significantly reduce the risk of pre-trial warnings, which in the event of the offense usually result in significantly higher legal and court costs than in the case of a review / creation of terms and conditions by us beforehand. Incidentally, the risks of pre-litigation warnings also exist if an entrepreneur simply copies the terms and conditions of another entrepreneur, because after all, it is often difficult to tell whether they have been prepared or examined by a lawyer.
If you identify sellers on eBay or Amazon, who sell goods in your business domain but act as a private seller, we would like to represent your rights in this matter. In the event of a legitimate warning due to violation of competition, the dishonest competitor must refund the attorney's fees, if the competitor's liquidity is sufficient so that no costs incur for you.
In this case, we would like to execute a pre-trial warning for infringement of competition for you and enforce your rights also in the context of preliminary injunction and / or in the course of a (subsequent) principal proceeding against third parties.
We have already conducted a large number of legal proceedings for competition violations in regional courts and higher regional courts throughout Germany. Some court decisions made by us before regional courts have subsequently been confirmed by the higher regional courts and the Federal Court of Justice respectively. In the last instance, of course, we had to resort to a lawyer admitted to the BGH, but we also continued to accompany the civil proceedings there.
However, we have also fended off warnings from competitors who have been unjustified and also inadmissible because of legal rights abuse. In this context, we have even directly used lawyers who have been liable for fraud and needed to refund legal fees and court costs because of the interaction with the competitor and the execution of a high amount of warnings.
If you have the intention to have your own contractual regulations or an appearance on the internet reviewed, then we are of course happy to help. However, we are also happy to assist you in issuing warnings or with received warnings received because of competition violations. In this case, you can simply contact us by phone or e-mail. We are very happy to help.
Design Law
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You have created exceptional jewelry or previously unavailable furniture or invented a new, technical device that impresses with its unusual appearance. We are glad to help protect the results of your creativity from other people in the long term. In addition, we will gladly develop license agreements to enable its use by other parties for a reasonable fee.
