German or European Trademark?- Advantages and Disadvantages in the litigation proceedings

Pursuant to European statutory provisions of trademark law a trademark proprietor can apply for a European trademark, which grants unified protection in all the Member States[1]. This opportunity simplifies the procedure of obtaining a trademark in more than one country and reduces the costs by filing one application.

That’s why more and more German companies, enterpreneurs and merchants, who conduct businesses not only in Germany, but also in other EU-States register their signs in the European Registry waiving intentionally the option to additionally apply for and obtain a national trademark.

Although a registered proprietor of a European trademark can exclude others from the usage of similar or identical marks in the whole European territory, a European trademark is considerably weaker than the German one the proceedings concerned.

1. Right-preserving use of the mark-genuine use (rechtserhaltende Benutzung):

According to an ECJ decision at the late 2012 (“Leno”[2]) the use of the trademark should be able to gain substantial market share in the EU and must be sufficiently proven in more than one State, since a European trademark enjoys greater protection in comparison with a national mark. This wording is consindered ambiguous. Surely one state does not suffice, but the court didn’t clarify how many states are needed.

One year later the German Federal Court of Justice (BGH) tried to mitigate these strict requirements by claiming that under certain circumstances the use in only one state could be sufficient[3].

According to their newest decisions the European courts seem to follow the „rule of the one state“ in the most cases. However, the proof of the genuine use remains still vague. Which are these specific circumstances? And what if a European or national court decides otherwise? That could even lead to the loss of the trademark right. On the other hand the German trademark is more secure, as the use must be proven each time only within Germany.

2. Counterclaim

In a case involving breach of rights, regarding the European trademark proceedings, the defendant can always file a counterclaim for the cancellation of the applicant’s trademark. That means the plaintiff becomes the defendant and the defendant becomes the plaintiff. In this case the court must firstly decide about the cancellation/deletion of the trademark and then in respect of the potential infrigement. The holder of the prior right is afraid of losing his trademark every time he lodges a lawsuit regarding the infrigement of his rights.

In Germany this is not possible. The civil courts are competent for the infrigement and the national patent office is competent for the cancellation of the applicant’s trademark. The German trademark is hence more advantageous, since the civil court must decide about the infrigement and afterwards a decision associated with the cancellation of the mark will be issued.

3. Seniority

Many individuals and low-scale companies, whose relatively poor budget does not allow the payment of more expensive EUIPO-filing fees, strive to gain a national (e.g. German) trademark initially. If the trademark has not been opposed by a proprietor of an earlier right, hence is after 10 years close to renewal, they may decide to apply for a European one, claiming seniority for Germany and abandon the old national trademark by not paying the renewal fees.

But what happens if my European trademark is cancelled in the course of a counterclaim? The European trademark law gives the opportunity to transform your trademark into a national one with seniority of your old (first national) trademark[4]. The predominant opinion in the jurisprudence is though that if you lose your right due to a counterclaim and your opposition or your infrigement lawsuit is still pending, the proceedings can no longer be continued. Instead, you have to start from the beginning, which seems to be absurd, as the core of the conflict remains intact. Furthermore, this transformation causes the loss of all the existing compensation claims[5]. The trademark holder can only claim the omission in case of an infrigement.

To sum up, a European trademark is inextricably linked to many disadvantages with regard to the proceedings. That’s why a European along with a parallel German registration should be sought.

[1] Art. 1 section 2 European Trademark Regulation (EUTMR)

[2] Case C-149/11, Leno Merken BV v. Hagelkruis Beheer BV, EU:C:2012:422.

[3] Case ZR 106/11 BGH, Voodoo.

[4] Art. 139–141 European Trademark Regulation (EUTMR); Art. 22–23 European Trademark Implementing Regulation (EUTMIR)

[5] VPP-Rundbrief Nr. 01/2017, Dr. Ulrich Hildebrandt, Verlängerung nationaler Marken oder Inanspruchnahme der Seniorität, p. 6–7.