Trade Mark Infringement: Which Claims Trade Mark Proprietors Can Enforce
A trade mark usually represents years of work: a name, a logo, a reputation that customers recognise and associate with quality. To ensure that others cannot appropriate this value, trade mark law gives the proprietor a powerful tool. That is because a registered trade mark is an exclusive right: it gives the proprietor the sole right to use the sign for the protected goods and services – and entitles the proprietor to prohibit any unauthorised use by third parties. This protection arises on registration and operates like a legal monopoly over the sign.
Where this position is interfered with, for example through an identical or confusingly similar sign or the imitation of a product, more is therefore at stake than putting a stop to a disturbance: the exclusive right itself is under attack, and with it the economic core of the trade mark. Trade mark proprietors can then demand not only that the infringement cease, but also money – by way of damages and the surrender of the infringer's profits – as well as the destruction of infringing goods.
When Does a Trade Mark Infringement Occur?
An infringement requires an existing right in a distinctive sign and unauthorised use in the course of trade. § 14 para. 2 of the Trade Mark Act (MarkenG) covers three situations: double identity of sign and goods (no. 1), likelihood of confusion where signs and goods or services are similar (no. 2), and the exploitation or impairment of a trade mark with a reputation (no. 3). Business identifiers and work titles enjoy parallel protection under § 15 MarkenG.
The position is clear where sign and goods are identical. The likelihood of confusion under no. 2, by contrast, remains genuinely dependent on the individual case: it is determined through the interdependence between the distinctiveness of the earlier trade mark, the similarity of the signs and the similarity of the goods or services. A low degree of similarity on one level can be offset by a high degree of similarity on another.
Trade Mark Infringement Discovered – What to Do?
The most important rule first: document the infringement before the infringer is tipped off. Dated screenshots, a test purchase of the goods complained of and the preservation of offer and seller data create the evidentiary basis that will matter later. The distribution channel and the party responsible must be identified:
- who is behind the offer?
- is the product manufactured or merely traded – is it an import?
Which Claims Arise in the Event of Trade Mark Infringement?
Anyone whose trade mark rights are infringed can at the same time put a stop to the disturbance, demand money and have the goods withdrawn from circulation. The Trade Mark Act provides for several claims to this end, which interlock in practice.
- Injunctive relief, § 14 para. 5 MarkenG.
The consequence of a successfully enforced claim for injunctive relief is that the infringer must stop the use complained of and refrain from it in future.
Whether the infringer is at fault does not matter – the infringement alone counts. All that is required is that repetition is threatened; this "risk of repetition" is presumed automatically once an infringement has already occurred. In practice, it can be eliminated only by a cease-and-desist declaration backed by a contractual penalty – a binding undertaking by the infringer to refrain from the use and to pay a contractual penalty for every future breach. Where an infringement is imminent for the first time, the preventive claim for injunctive relief applies.
- Damages, § 14 para. 6 MarkenG.
The claim for damages gives the proprietor financial compensation for the infringement. Unlike with injunctive relief, fault is required here: the infringer must therefore have acted intentionally or at least negligently. How the amount is calculated is shown in the next section.
- Disclosure of information, § 19 MarkenG and § 242 BGB.
This claim provides the information needed for further enforcement: where the goods come from, through which channels they were distributed, in what quantities and at what prices. An established infringement is a prerequisite. Without this information, the loss can usually not be quantified at all – which is why disclosure and damages are almost always asserted together.
- Destruction, recall and removal, § 18 MarkenG.
This takes the infringing goods permanently off the market: they can be destroyed, recalled from the distribution channels and definitively removed – as can the materials that serve solely to produce them. A prerequisite, besides the infringement, is that the measure is proportionate.
Further supporting claims come into play: the right to have documents and objects produced and inspected (§ 19a MarkenG), the securing of later damages claims (§ 19b MarkenG) and the right to have the judgment published at the infringer's expense (§ 19c MarkenG).
Damages in Trade Mark Law: The Threefold Method of Calculation
When it comes to damages, the trade mark proprietor enjoys an advantage that the law only rarely grants: the proprietor may choose how the loss is calculated – namely by whichever method works out most favourably. The background is that the actual loss caused by a trade mark infringement can hardly ever be expressed precisely in figures. The case law therefore provides three methods of calculation, from which the injured party may freely choose:
- Actual loss – the loss actually incurred, above all lost profits. This method requires proof that the proprietor actually sold less because of the infringement. Such proof rarely succeeds and plays hardly any role in practice.
- Licence analogy – the fee that the infringer would have had to pay if the use of the trade mark had been properly licensed. The yardstick is what reasonable contracting parties would have agreed. This method is easy to calculate and easy to prove, because all that matters is the use that has taken place.
- Surrender of the infringer's profits – the profit that the infringer itself made with the infringing goods. It is assumed that this profit actually belonged to the trade mark proprietor; whether the proprietor could have sold the goods itself is irrelevant.
Economically, the third route is usually the most attractive. In the past, the infringer could whittle down the profit to be surrendered by deducting a proportionate share of general operating costs, that is, ongoing costs such as rent or administration that would have been incurred anyway. The Federal Court of Justice put a stop to this practice in the decision "Gemeinkostenanteil" (BGH, judgment of 2 November 2000 – I ZR 246/98): only costs that were incurred directly for the infringing goods may still be deducted – and the infringer must itself set out and prove that this is the case. For trade mark law, the BGH confirmed this in the decision "Noblesse" (BGH, judgment of 6 October 2005 – I ZR 322/02), while at the same time drawing a limit: only the part of the profit that is attributable precisely to the use of the trade mark must be surrendered – because the success of a product often also depends on other factors such as price or quality. The court estimates what share that is (§ 287 ZPO).
Counterfeits and Product Piracy: Additional Routes
Further instruments are available in the case of imitations and imported goods. Border seizure allows customs to detain suspect goods on import and export – on the basis of Regulation (EU) No 608/2013 and the national provisions in §§ 146 et seq. MarkenG. In serious cases, the criminal-law dimension under § 143 MarkenG is added.
Platforms such as Amazon offer their own reporting channels via brand registries and complaint systems. These often stop the individual listing quickly, but they remove neither the risk of repetition nor the damage already caused – and they do not create an enforceable title. A report is a tool, not a substitute for legal enforcement.
Enforcement: Cease-and-Desist Letter, Preliminary Injunction or Lawsuit?
The usual route is a cease-and-desist letter from a lawyer, calling for a cease-and-desist declaration backed by a contractual penalty. Where the letter is justified, the infringer bears the necessary legal enforcement costs.
If the matter is urgent, a preliminary injunction is the sharper sword, though only within the urgency deadline. Damages, disclosure and destruction are enforced in main proceedings.
Which route is viable is a tactical decision: it depends on the urgency, the state of the evidence and the economic objective. For more on this, see our article on the preliminary injunction in competition law.
Limitation: Keeping an Eye on the Deadlines
Claims under §§ 14 to 19c MarkenG become time-barred under § 20 MarkenG in conjunction with the provisions of the German Civil Code (BGB) – as a rule after three years (§ 195 BGB). If the infringer has obtained something at the trade mark proprietor's expense, surrender of what was obtained remains possible under § 852 BGB even after the regular period has expired – although to a lesser extent.
Do you suspect an infringement of your trade mark or a counterfeit of your products? Contact us and arrange a free initial assessment!
FAQ
What can I demand in the event of a trade mark infringement?
Injunctive relief, damages, disclosure, and destruction and recall of infringing goods. Injunctive relief does not depend on fault; damages require intent or negligence.
How are damages calculated in trade mark law?
Using the threefold method of calculation: actual loss, licence analogy or surrender of the infringer's profits. The injured party chooses the method; economically, the infringer's profits are often the most attractive.
How can I report and stop a counterfeit?
A platform complaint can quickly remove a single listing, and border seizure allows customs to stop imported goods. Neither, however, replaces the civil-law enforcement of injunctive relief and damages.
How quickly do I have to act?
An urgency deadline of usually around one month from the date of knowledge applies to a preliminary injunction. The claims generally become time-barred after three years.
Have Your Matter Reviewed
Do you suspect an infringement of your trade mark or a counterfeit of your products? We assess which claims you have, quantify them and enforce them consistently – before deadlines run out. Request an initial assessment.
