Trademark Disputes before Court and before the Trademark Offices

Legal Representation before German Trademark Courts

In Germany, trademark cases are initially decided upon by two separate courts: either by the Federal Patent Court in Munich or by the locally responsible civil district court. This dichotomy has a long tradition in German trademark law and is based on the reasoning that decisions of the German Patent and Trademark Office, or Deutsches Patent- un Markenamt (DPMA), shall be checked on appeal by a specially created court for that purpose, namely, the Federal Patent Court in Munich.

Federal Patent Court in Munich

The Federal Patent Court in Munich, or Bundespatentgericht (BPatG), has the jurisdiction to decide certain appeals in German trademark cases when an aggrieved party wants to check whether a certain decision of the DPMA was accurate. Atty. Dr. Seyfert has represented his clients for years in trademark lawsuits and general proceedings before the Federal Patent Court in Munich.

The Federal Patent Court has jurisdiction mainly over the following situations:

• Decisions of the DPMA in opposition proceedings for cancellation of a registered trademark having a later priority
• The DPMA renders a decision in which it refuses to register a trademark

German civil courts

Atty. Dr. Seyfert also regularly represents his clients before the German civil courts, which are responsible for disputes on trademarks and other symbols in certain cases. The civil courts are responsible in adjudicating over disputes on trademarks and other symbols in the following scenarios:

• Injunctive relief against the continued unauthorized use of trademarks.
• Right to information: Requests for information from the infringer of your trademarks on the nature and extent of the unauthorized use of your trademarks.
• Damages for trademark infringement: Claims for damages to profits made by the infringer of your trademarks and compensation according to the license analogy principle.
• Destruction and recall rights concerning products in violation of your trademarks: Claims against the trademark infringer to destruct or recall illegally manufactured or distributed products which have been illegally identified with your trademark.
• Submission of certain documents: Claims against the trademark infringer to submit certain bank, financial, or commercial documents.
• Right of inspection: Claims against the trademark infringer to tolerate the inspection of an object, which is at the infringer’s disposal if this is required to establish your rights as a trademark owner.
• Publication of verdict: Claims to give notice of the court verdict in the trademark case to the public at the expense of the trademark infringer.
• Cancellation proceeding before the German trademark office and the responsible German courts: cancellation for revocation of a trademark or because of the existence of earlier trademark rights.
• Action for grants of registration: Claims by means of court action against the opponent, in which you as the trademark owner have a right to the trademark registration, despite the cancellation of the registration by the German trademark office as a result of the opposition.

German courts of higher instances (German courts of last resort)

If it becomes necessary, our attorneys will proficiently represent your company before German courts of higher instances:

• Appellate proceedings before the Federal Supreme Court in Germany against Federal Patent Court decisions.
• Appellate proceedings before all Higher Regional Courts in Germany against regional court decisions.

If your company has been unsuccessfully represented in a trademark dispute by another law firm in the past, it may be a good idea to change course and have the trademark case handled by us. We offer your company the chance to have an in-depth analysis of your trademark case and provide detailed expert legal opinions to your company, should an appeal against the decision in the first instance have a reasonably good chance of success in court. Our attorneys have a great deal of experience in successfully handling appellate proceedings before German courts of higher instances and we would welcome the chance to fight for your rights. Please contact us to have a discussion about your trademark case.

Trademark Law in the EU: Legal Representation before the General Court of the EU in Luxembourg

The decisions of the board of appeals for trademark matters with the European Union Intellectual Property Office (EUIPO) can be appealed to the General Court of the European Union in Luxembourg. Our attorneys are familiar with representing clients in trademark matters before the General Court of the EU, having successfully represented multiple clients at this level. In our firm, our trademark law expert Attorney Dr. Christian Seyfert will handle your trademark case. Atty. Dr. Seyfert will expertly guide you through the intricacies of having your case appear before the General Court of the EU and will provide you his fair and expert opinion on your company’s chances of success in the appellate proceeding before the General Court.

Trademark Law in Germany: Legal Representation in Summary Proceedings (Speedy Trials)

Should a company or an individual infringe upon your trademark rights, urgent legal action is required to stop further trademark violations, especially if said infringements should be detrimental to your company. ZELLER & SEYFERT’s trademark law attorneys will act quickly to enforce the trademark rights of your company and seek an immediate injunction in a speedy trial (summary proceeding) before the competent German trademark court. More importantly and particularly urgent are the preliminary enforcements of certain rights to information on the nature and extent of the trademark violations. Furthermore, our attorneys will also quickly seek to enforce the submission of certain bank, financial, or commercial documents of the trademark infringing party for the subsequent calculation of damages. ZELLER & SEYFERT will deal with the trademark matters of your company swiftly and seek prompt injunctive relief to the benefit of your company before the competent German trademark court.

Legal Representation before the German and EU Trademark Offices

ZELLER & SEYFERT’s trademark attorneys in Germany will also represent your company in litigation before trademark offices, specifically before the German Patent and Trademark Office (DPMA) and the European Union Intellectual Property Office (EUIPO). Essentially, these are the following trademark proceedings:

• Trademark opposition procedures.
• Trademark cancellation procedures for revocation of a trademark or because of absolute obstacles to trademark protection.
• Appellate trademark proceedings before EUIPO.

Our attorneys will also represent your company in trademark litigation proceedings before the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

Warning Letters – Legal Representation out of court

According to German civil law, trademark owners in Germany generally have the responsibility to first send a warning letter out of court to the trademark violating party. This warning letter will have three objectives:

• To inform the trademark infringing party about their trademark violations.
• To seek a possible settlement between the parties.
• To ensure an end to the trademark violations going forward.

Rushing with a trademark lawsuit to a German trademark court without a prior request to the trademark violating party to cease and desist their trademark infringements may result in your company having to pay fees and costs for the entire lawsuit (i.e. court fees and attorney fees of both parties), even if your company wins the trademark lawsuit later on. It is therefore highly important at this stage to consult an experienced professional trademark lawyer to instigate the process and send a carefully crafted warning letter. We at ZELLER & SEYFERT have penned many such letters and would gladly take on this responsibility on your behalf.

Border Seizures Procedures in Germany (Customs)

Successful branded products are often cheaply and illegally pirated and counterfeited by criminals. These pirates then try to smuggle said counterfeit products into the domestic market to the detriment of the trademark owners whose rights have been violated. Product piracy is a major issue in Germany and our attorneys will support your company in intercepting the counterfeited products at the German border, in cooperation with the German customs authorities. Our trademark attorneys will then also have the pirated goods destroyed right at the border. In order to protect the trademarks and branded products of your company, our attorneys will initiate the appropriate border seizure procedures with the German customs authorities. They will guide your company through the German border seizure procedures and possible subsequent court proceedings from the beginning until their successful completion. Visit our page on Border Seizure Procedures in Germany for more information.