Brand usage by other companies
July 3, 2009 | 50,00 EUR | answered by Dr. Dr. Danjel-Philippe Newerla
Hello,
We are a software company for garden and landscaping construction and we constantly have the issue that our coined terms are picked up and used by competing companies shortly after. For this reason, we have protected some word marks, such as "electronic construction file" or "digital assistance in the field". These terms have been coined by us for our industry and just 2 weeks later our competitors also had such products or product descriptions.
My question now is: what can we do when we see these word marks being used by competitors?
- Demand that they are not mentioned?
- Demand that they are marked with copyright and it is noted in the footer that it is a trademark of our company?
- What are the implications for existing documents prior to the trademark registration and for future ones?
- What happens if they are written in a slightly modified way?
Thank you.
Dear inquirer,
Thank you for your inquiry!
If you have protected the relevant wordmarks and they are being used by another company without your permission, whether for advertising, in a domain name, or otherwise, this constitutes a trademark infringement that you, as the trademark owner, can pursue.
In this context, you have rights against the individual/company in question, including claims for information, damages, and injunction.
These claims, especially the injunction claim, are initially pursued out-of-court through a warning letter. In the case of a justified warning letter, meaning if there is evidence of a violation of your trademark rights, you have a legal right to reimbursement of your legal fees from the other party.
I would recommend engaging a lawyer to represent your interests in case of suspected trademark infringement, so that they can issue a warning letter and potentially obtain damages claims for you out-of-court.
My law firm, which has extensive experience in this field, would be happy to assist you, and in the event of engagement, I would credit the initial consultation fee to you.
In the rarest cases, such situations end up in court; mostly, an out-of-court settlement is reached in practice.
It is also possible that trademark protection in your favor has arisen before registration according to § 4 No. 2 of the Trademark Act, which would entitle you to the steps mentioned above against the unauthorized trademark infringer.
Under § 4 No. 2 of the Trademark Act, trademark protection arises through the use of a sign in business transactions, if the sign has acquired distinctiveness as a trademark within the relevant circles.
Whether this distinctiveness has been acquired before registration cannot be definitively assessed from a distance.
After registration, you definitely have the aforementioned rights against the trademark infringer.
If it is written with slight modifications, a violation of trademark protection is likely to be ruled out. However, this is a case-by-case question that cannot be conclusively assessed, as the specific modification (e.g. exchanging just one letter) would have to be compared directly with the protected mark.
This is particularly important in trademark disputes concerning domain names and has already been extensively addressed by case law.
I hope to have provided you with initial legal guidance and wish you success in your next steps!
I would like to point out the following:
The legal advice I have provided is based solely on the information you have provided. My response is only an initial legal assessment of the situation and cannot replace a comprehensive evaluation of the facts. Adding or omitting relevant information can result in a completely different legal assessment.
I hope my explanations have been helpful to you. You are welcome to contact me through the follow-up option on this platform or via my email address.
Have a pleasant Friday afternoon and a great weekend!
Best regards,
Dipl.-Jur. Danjel-Philippe Newerla, Attorney-at-Law
Heilsbergerstr. 16
27580 Bremerhaven
kanzlei.newerla@web.de
Tel. 0471/3088132
Fax: 0471/57774
