Frankfurt 
Example: Trademark Litigation in Germany
1. Bifurcation of judiciary responsibilities
The legal proceedings in trademark matters are decided in Germany in the first instance by two different courts, either by the Federal Patent Court in Munich or by a commercial division at a locally competent Regional Court. This dichotomy has a long tradition in Germany and is based on the fact that decisions of the German Patent and Trademark Office shall be checked by a particular court created for that purpose, namely, the German Federal Patent Court. The Federal Patent Court was built up for this purpose on 01 July 1961. All other trademark disputes are, however, decided in the first instance by a commercial chamber at a locally competent Regional Court who will – in addition to trademark litigations – also decide other disputes in the areas of trade and commerce. For details see §§ 93 et seq. of the German Judicature Act (Gerichtsverfassungsgesetz).
2. Federal Patent Court: Jurisdiction and procedure
a) Subject-matter Jurisdiction
The Federal Patent Court in Munich has proper jurisdiction against all orders of the trademark sections and the trademark divisions of the German Patent and Trademark Office. See § 66 paragraph 1 of the German Trademark Act. Such orders of the trademark sections and the trademark divisions of the German Patent and Trademark Office can be checked and verified by the Federal Patent Court in particular in the following situations:
- Application for cancellation of a registered trademark due to the existence of absolute obstacles to protection (see § 54 in conjunction with § 50 of the German Trademark Act):
Anyone can lodge an application with the German Patent and Trademark Office for cancellation of a registered trademark, provided that, from the perspective of the applicant the trademark had been registered contrary to §§ 3, 7 or 8 of the German Trademark Act. The applicant submits in this respect that the German Patent and Trademark Office should not have registered the trademark, because the registration is contrary to §§ 3, 7 or 8 of the German Trademark Act. In the case of § 3 of the German Trademark Act the German Patent and Trademark Office has registered a sign in the register which is not eligible for protection as a trademark. In the case of § 7 of the German Trademark Act the German Patent and Trademark Office would make a person the registered proprietor of a trademark who does not have the legal capacity to become a proprietor according to § 7 of the German Trademark Act. And in the case of § 8 of the German Trademark Act the German Patent and Trademark Office had registered a trademark in the register, even though there had been an absolute obstacle to protection against it according § 8 paragraph 2 of the German Trademark Act. Because of an absolute obstacle to protection for example such trademarks are excluded from registration which are devoid of any distinctive character for the goods or services (§ 8 paragraph 2 No. 1 of the German Trademark Act), or which consist exclusively of signs or indications which may serve, in the course of trade, to designate the nature, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services or to designate other characteristics of the goods or services (§ 8 paragraph 2 No. 2 of the German Trademark Act).
- Opposition proceedings (see §§ 42 et seq. of the German Trademark Act):
Within a three-month period after the date of the publication of the registration of the trademark in accordance with § 41 of the German Trademark Act, the proprietor of a trademark with older seniority may lodge an opposition against the registration of the trademark (see § 42 Sec. 1 of the German Trademark Act). The defeated party in the opposition proceedings may lodge a complaint against the decision of the German Patent and Trademark Office with the Federal Patent Court. - In case the German Patent and Trademark Office decides to refuse the registration of a trademark:
The trademark applicant may appeal the German Patent and Trademark Office’s decision to refuse the trademark registration with the help of a complaint to the Federal Patent Court; the appeal is successful and the registration must be done, provided that the registration requirements are met.
b) Procedure
aa) Provisions relating to proceedings before the Federal Patent Court are contained in §§ 66 to 82 of the German Trademark Act. The Federal Patent Court investigates the facts ex officio. It is not bound by the pleadings and the evidence provided by the parties. See § 73 section 1 of the German Trademark Act. In this regard, the proceeding of the Federal Patent Court differs significantly from judicial proceedings before a commercial chamber within a regional court. A commercial chamber within a regional court may consider only those facts that were presented by the parties. A commercial chamber within a regional court does not gather facts ex officio, unlike the Federal Patent Court.
bb) An oral hearing shall take place if (1) one of the parties applies for it, (2) evidence is taken before the Federal Patent Court (§ 74 section 1 of the German Trademark Act), or the Federal Patent Court considers it to be expedient. See § 69 of the German Trademark Act. Also in this regard the proceedings before the Federal Patent Court differ from the proceedings before a commercial chamber in a regional court. In a commercial chamber the case is basically always decided on the basis of one or more oral hearings.
cc) Because the German Federal Patent Court investigates the facts ex officio, it is not bound by the limited number of available means of evidence in civil proceedings. The Federal Patent Court is not restricted in its choice of evidence. The Federal Patent Court may in particular make inspections in situ, question witnesses, expert witnesses and the parties and consult certificates (see § 74 section 1 of the German Trademark Act). Moreover, the Federal Patent Court may obtain official information from other authorities or courts, for example.
3. Commercial Chamber within a Regional Court: Jurisdiction and Procedure
a) Jurisdiction
aa) The Regional Courts have exclusive jurisdiction for all actions by means of which a right from one of the legal relationships regulated in the German Trademark Act is claimed (disputes on symbols), regardless of the value at dispute (see § 140 section 1 of the German Trademark Act). A commercial chamber within the regional courts shall be functionally responsible to carry out the proceedings. The State governments are empowered by means of a legal ordinance to assign disputes on symbols altogether or in part for the districts of several Regional Courts to one of them insofar as this serves the factual advancement or more rapid conclusion of the proceedings. The Land governments may assign this empowerment to the Land administrations of justice. The Länder may furthermore by agreement assign tasks incumbent on the courts of one Land altogether or in part to the court of another Land which has jurisdiction. See § 140 section 2 of the German Trademark Act. The State governments have made use of this possibility. See the comments in Fezer, Markenrecht, 4th Edition (2009), § 140 recitals 13 to 30. For example, in Hesse the Regional Court in Frankfurt am Main is exclusively responsible for disputes on symbols.
bb) Therefore, a commercial chamber within a regional court has jurisdiction in particular in the following constellations and for the following types of claims:
- Injunctive reliefs
- Claims to obtain information from the defendant
- Claims to obtain accounting from the defendant
- Damages: Any person who intentionally or negligently infringes upon a trademark shall be obliged to pay the trademark owner damages for the damage suffered as a result of the infringement. When setting the damages any profit obtained by the infringer as a result of the infringement of the right may also be taken into account. Entitlement to damages may also be assessed on the basis of the amount the infringer would have had to pay in equitable remuneration if the infringer had requested authorization to use the trademark infringed. See § 14 Sec. 6 of the German Trademark Act.
- Cancellation claims: The action for cancellation for revocation (§ 49 of the German Trademark Act) or because of the existence of earlier rights (§ 51 of the German Trademark Act) can be brought against the party registered as the proprietor of the trademark or his/her successor. See § 55 Sec. 1 of the German Trademark Act.
- Claims to obtain registration: The proprietor of the trademark may claim by means of an action against the opponent that he/she has a right to the registration despite the cancellation of the registration. See § 44 of the German Trademark Act.
b) Procedure
In a trademark litigation before a commercial chamber within the regional courts the rules of the German Code of Civil Procedure apply as they would apply in any other civil case before the regional courts. The regional court‘s decision may be based only on those facts which had been submitted by the parties (so-called principle of production of evidence). The regional courts do not investigate ex officio. The parties are further limited to those means of evidence which are provided for in the German Code of Civil Procedure, namely evidence taken by visual inspection (§§ 371 et seq.), hearing witnesses (§§ 373 et seq.), hearing expert witnesses (§§ 402 et seq.), evidence provided by records and documents (§§ 415 et seq.) and evidence provided by examination of a party (§§ 445 et seq.). The commercial chamber within the responsible regional court makes its decisions principally only on the basis of a public hearing (see §§ 128 et seq.).
4. Successive Stages of Appeal
a) Federal Patent Court
The appeal on points of law to the Federal Supreme Court (Bundesgerichtshof) shall be available against the orders of the Boards of Appeal of the Federal Patent Court by means of which an appeal in accordance with § 66 of the German Trademark Act is decided on if the Board of Appeal has admitted the appeal on points of law in the order. The appeal on points of law shall have the effect of suspending the proceedings. The proceedings before the Federal Supreme Court (Bundesgerichtshof) are governed by §§ 83 to 90 of the German Trademark Act. The Federal Supreme Court (Bundesgerichtshof) is the final authority in this respect.
b) Commercial Chamber within a Regional Court
Against verdicts of a commercial chamber within a regional court an appeal may be lodged to the Higher Regional Court (Oberlandesgericht). Against verdicts of the Higher Regional Court (Oberlandesgericht) an appeal to the Federal Supreme Court (Bundesgerichtshof) is possible under certain conditions. The Federal Supreme Court (Bundesgerichtshof) is then the final authority in this respect.
c) Federal Supreme Court (Bundesgerichtshof)
Thus, both levels of appeal of trademark litigation in Germany find their final conclusion with the Federal Supreme Court (Bundesgerichtshof). The Federal Supreme Court (Bundesgerichtshof) as the final authority can therefore shape and form with the reasoning of its decisions a uniform trademark law in Germany.