Trademark Enforcement and Defence

1. Trademark enforcement

For the territory covered by the trademark proprietor’s trademark rights (Germany/EU/IR states), the trademark confers on the trademark proprietor the right to prevent third parties, in the absence of their consent, to make use of signs that may give rise to a risk of confusion with regard to the trademark proprietor’s registered trademark and to request compensation in the event of any act of infringement.

a) Risk of confusion
The establishment of whether there is a risk of confusion existing between the trademark constituting the subject matter of the trademark application and the sign used by a third party is based on the assessment of whether the sign used is identical or similar to the trademark constituting the subject matter of the trademark application (trademark similarity) and of whether the unauthorised user exploits the trademark for identical or similar goods or services (similarity of goods and services).

b) Trademark similarity
The similarity of the mark used by a third party to the granted trademark is assessed based on whether there is a visual or aural similarity or a risk of association between the marks. Given that the trademark should be well known, the prohibitive right conferred likewise extends to identical or similar signs that are used for goods or services that are totally unrelated to those of the granted mark, when the distinctiveness or repute of the mark is taken unfair advantage of or else is adversely affected as a result of such use.

c) Similarity of goods and services
According to the European Court of Justice, similarity between the goods and services is established "when the concerned goods are so closely related to one another that the consuming public, when discerning that the same sign is featured on both types of goods, would inevitably come to the conclusion that the goods emanate from the same company." Decisive criteria for establishing the relation between the goods and services refer to the usual commercial origin, usual point of sale or delivery, properties, economic relevance and intended use or application. A Patent Attorney or Attorney-at-law experienced in the field of trademark rights should at any rate be consulted to render a professional assessment as to whether trademark infringement, especially a likelihood of confusion under trademark law, is constituted and on the basis of which legal action may successfully be taken in defence of the registered mark.
Actions for enforcement of the trademark rights conferred on the proprietor or exclusive licence holder are warning letter, interlocutory injunction and infringement suit (enforcement of industrial property rights).

2. Trademark defence / defence against infringement suits

When asserting claims under trademark law, an assumed trademark infringer will regularly assert claims for the unprotectability of the claimed trademark and will lodge a request for cancellation or nullity action in defence. In the course of such action, distinctiveness, descriptive nature and risk of deception of the registered trademark will be re-examined.