Industrial property protection
Industrial property protection Lawyer – Appointments in Hamburg, Munich, Frankfurt, Berlin, Cologne, Düsseldorf and Stuttgart
Industrial property protection – this term covers various industrial property rights as well as unfair competition law. The binding regulations are intended to protect traders with regard to their intangible goods. In this context, we often also speak of the protection of intellectual property.
Topics in our legal advice
Lawyer for industrial property protection – The Herfurtner law firm, established in Hamburg and Munich, offers legal advice to traders. This includes, on the one hand, the enforcement of claims if one’s own rights have been infringed.
On the other hand, the lawyers advise on the implementation of new projects in advance and check them for legal conformity.
Table of contents
- Industrial property protection – simply explained
- Definition of Industrial property protection
- Industrial property protection- what is it?
- Topics: Industrial property protection
- Warning letters in industrial property law
- Industrial property protection – Lawyer
Industrial property protection
Industrial property protection is an important topic wherever intellectual creations contribute significantly to the success of a company in a business context and breaches of law by third parties pose a considerable economic risk. In this respect, across all industries
- founders,
- self-employed and generally
- companies and their managing directors
should concern themselves with the regulations and be aware of their rights.
Since industrial property protection concerns intellectual property, it is applied to trademarks, patents and copyrights. On the one hand, it includes the following industrial property rights:
- Trademark law, regulated by the Trademark Act (MarkenG),
- Utility model law, regulated by the Utility Model Act (GebrMG),
- Design law, also known as design law, regulated in the Design Act (GeschMG),
- Patent law, regulated by the Patent Act (PatG).
Furthermore, the Semiconductor Protection Act and the Plant Variety Protection Act are part of the industrial property rights. All of the aforementioned laws regulate how an exclusive right (intellectual property right or special protection right) can accrue to a right holder.
Copyright law (UrhG), on the other hand, does not fall within the scope of industrial property rights, as its purpose is to ensure the protection of personal intellectual creations, which belong to the artistic rather than the industrial sphere.
On the other hand, unfair competition law also falls within the scope of industrial property protection. It comprises the Unfair Competition Act (UWG) including several subsidiary laws and ordinances. Together with the Act against Restraints of Competition (GWB), it is part of competition law.
All in all, industrial property law covers various areas of law that deal with intellectual property and creative achievements of traders. At the international level, the term “IP law” is known as an abbreviation of “intellectual property“.
What is “Industrial property protection”?
Industrial property rights, together with copyright, are referred to as “intellectual property“. In the German legal system, property always refers to a physical object. Nevertheless, this term is increasingly gaining acceptance in the Federal Republic of Germany, which is due to its international use.
The intangible objects to be protected must be separated from their respective carriers (for example, a copyrighted song stored on a CD). Intellectual property is intangible and can be copied and reproduced relatively easily. This results in the risk of infringement and the special need for protection.
How does an intellectual property right come into existence?
An intellectual property right arises either with the creation of a work in copyright law or with the help of a formal procedure, for example in trade mark law.
Business designations and user marks also have protective effects in favour of the owner of the intellectual property right as soon as they are created. Anyone who holds an intellectual property right can exclude third parties from using the corresponding right.
Some intellectual property rights are freely transferable, so that rights can be granted to third parties. In addition, third parties can be granted rights of use and exploitation by the right holder.
When obtaining an intellectual property right, the principle that older rights prevail over younger ones applies in part. This is also referred to as the priority principle and plays a role in trade mark law.
Industrial property protection topics
In practice, industrial property protection touches on various areas of law, which are very extensive and are therefore discussed in more detail elsewhere. The main features are summarised below:
Competition law
Competition law comprises unfair competition law and cartel law (law against restraints of competition). However, only unfair competition law is part of Industrial property protection.
Its aim is to prevent unfair competition. This refers to actions by market participants that offend common decency in economic competition. The focus of protection is on both businesses and consumers.
Practical examples of unfair competition are untrue information about the availability of goods (“Only today”) or a fictitious closing of a business with resulting special prices.
Overall, the UWG (Unfair Competition Act) comprises the following provisions:
- Prohibition of unfair practices
- Protection of competitors
- Aggressive commercial acts
- Misleading business conduct
- Misleading by omission
- Comparative advertising
- Unreasonable harassment
The legal consequences of a violation of the provisions of the Unfair Competition Act (UWG) range from removal and injunction to damages and skimming of profits. The limitation period is six months.
It begins when “the claim has arisen and the creditor becomes aware of the circumstances giving rise to the claim and the person of the debtor or should have become aware of them without gross negligence” (Section 11 UWG).
Anyone affected by unfair acts can consult with a lawyer and instruct him to enforce his claims. The measures to be taken in the short term include a warning, which can also be initiated by the person affected himself, or an injunction to be enforced in court.
Industrial property protection – Trade mark law
Trade mark law ensures that designations of products, but also of services and companies, are protected in commercial transactions. It is part of the law on trade marks. The protection of trade marks can extend geographically to national, European and international territories.
Trade mark lawyer – strategy and application
The path to a valuable trademark is long and cost-intensive, because large marketing investments are made for brand development and brand maintenance. Therefore, it is immensely important for trademark owners to comprehensively secure and protect their valuable assets. After all, a trademark infringement by competitors or free riders represents a great financial risk.
The immense corporate value that can lie behind a brand is shown by the current valuation of the Amazon brand, which is currently the most valuable brand in the world. Its value was recently put at 315.5 billion US dollars.
On the one hand, the activities include the development of a comprehensive and sustainable brand strategy. Examining trademark law to determine whether trademarks are still free or already registered is one of the areas.
In addition, there is the registration at the German Patent and Trade Mark Office (DPMA) in Munich or at the European Union Intellectual Property Office (EUIPO) in Alicante or a registration according to the Madrid Agreement (MMA) for international trade marks.
On the other hand, a lawyer becomes active when a trademark infringement is involved. If a client is confronted with a warning letter, we examine the case and advise on how to proceed. If a trade mark owner discovers a trade mark infringement by a third party, our lawyers can take the appropriate measures to act against it quickly.
Trademark law protects intellectual property in the form of trademarks (registered or unregistered), geographical indications and business designations. Infringements of trade mark law can have serious economic consequences for trade mark owners. Therefore
- Trade mark rights owners,
- businesses and
- marketing and advertising professionals should
should be familiar with trade mark law and be informed about the legal framework.
How is a trademark created?
A trademark consists of at least a word mark or a figurative mark, often also in combination as a word/figurative mark. Word marks are the written out designations of products or services, which can also contain numbers or special characters in addition to letters and words.
Figurative marks are intended to provide orientation and help consumers to identify products and services more quickly and clearly. As a graphic representation, they can contain pictures, elements of pictures or illustrations.
Another aspect of trade mark law is work title protection, which applies to cinematographic, sound or written works and protects the designation of a work against imitation and confusion.
In other words, a trade mark can be very complex. Its main function is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him to distinguish those goods or services from goods and services of a different origin without any risk of confusion.
Trade mark rights can exist at national, European or international level. Due to the global entrepreneurial orientation of many companies, international trademarks are of considerable economic importance.
Trademark infringement
Trademark infringement always occurs when someone uses the protected trademark against the will of the trademark right holder. The infringer does not even have to use the identical trade mark; the use of similar signs can also be infringing if this can cause a mistake about the identity of origin of the goods or services.
If there is a trade mark infringement, for example because a trade mark search was omitted in the course of the application, the trade mark owner can contact a law firm. As a first measure, their lawyers can react with a warning letter, which is used to report the infringement and request the other party to remedy it.
In addition, the demand for a cease-and-desist declaration may be necessary in order to protect against further infringements in the future. Furthermore, it is possible to claim damages.
Trademark law for how long?
The protection of the trade mark begins with the registration in the trade mark register. This protection lasts for an initial period of 10 years, after which it can be renewed for a further 10 years. A renewal fee is charged for the extension of the term of protection.
Whether the trade mark really lasts for the entire term depends on whether there is an opposition and whether a request for cancellation of a trade mark is granted. In addition, the trade mark proprietor can also surrender his rights; in that case, the trade mark will also expire early.
In order to avoid oppositions and to prevent the cancellation of a trade mark that has already been successfully applied for, it is advisable to comprehensively check the trade mark to be applied for for possible weak points at an early stage.
The law firm Herfurtner accompanies trade marks and their owners from the planning stage through the application to the renewal. Click here to contact us.
European and international trade mark law
In addition to the national protection of a trade mark, it may be possible to extend the protection geographically and to apply for it on a European or international level. In Europe, this can be done as a so-called “Union trade mark”, internationally on the basis of the (national) basic trade mark.
The European Union Intellectual Property Office (EUIPO), located in Alicante, Spain, is responsible for European protection. Here, trade marks can be applied for protection within the European Union with a term of 10 years.
The legal provisions can be found in Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the EU trade mark.
The Protocol of the Madrid Agreement (PMMA) provides for an applied for or registered national trade mark to be registered in the international register. In doing so, the individual countries in which one wishes to register the trade mark must be designated.
In Germany, the application for international registration (“IR”) is filed at the DPMA. From there, the application is forwarded to WIPO, the World Intellectual Property Organization. The international protection period is 10 years and can be extended as desired.
Copyright in industrial property law
In copyright law, the Copyright Act is the authoritative legal text. It regulates the various rights of authors and also specifies the conditions that must be met in order to enjoy copyright protection in its various forms.
The basic rule is that only personal intellectual creations are worthy of recognition as protected works. The spectrum is quite broad and ranges from linguistic works to works of fine arts and cinematographic works to scientific and technical representations.
A “work worthy of protection” from the perspective of copyright law exists if the following criteria are met:
- human creativity must have led to the result,
- it must be perceptible to human senses,
- something new must have come into being that is characterised by a creative achievement, and
- it must be characterised by the author and his or her personality.
Copyright is a so-called unexamined property right. This means that in individual cases – in the event of a court dispute – a decision must be made as to whether the subject matter in question meets the criteria of a work.
Only natural persons are eligible as authors, and copyright protection arises immediately with the creation or completion of the work. A separate registration is not necessary for this.
Why copyright? What does copyright protect?
Creative professionals such as authors, programmers, composers and musicians, graphic artists and designers or sculptors and painters live from their personal intellectual creations. It is eminently important for these groups of people that binding regulations exist regarding exploitation rights. Under “exploitation” are
- reproduction,
- distribution,
- exhibition,
- reproduction in public and also
- adaptation
of a work.
Protection under copyright law is primarily intended to ensure that the exploitation of created works by third parties is accompanied by fair remuneration for the author.
Lawyer Copyright Infringement
Copyright infringement occurs when the copyright law is violated. Copyright infringement is not only annoying for the author, but also often involves losses in the form of lost profits. Unauthorised exploitation of a work exists in many areas, for example:
- Software (pirated copies)
- Music (pirated copies)
- Films (pirated copies)
- Photographs (for example, in the context of advertising)
- Texts (for example, in the context of advertising)
- Graphics/design (for example, in the context of advertising)
Copyright infringements are particularly frequent on the internet, for example on so-called “file-sharing platforms” where works of various kinds are offered for illegal download.
If a copyright infringement has occurred, a lawyer can be instructed by the author to protect his or her interests. Civil proceedings can be instituted for this purpose. If there is a public interest in taking action against the copyright infringement, the public prosecutor’s office can also take action.
The civil law measures that can be initiated by a lawyer or by the injured party himself include the claim for
- Injunction and removal,
- damages,
- recall, surrender and destruction,
- information and
- Presentation and inspection.
In order to avoid greater expense, a warning is often considered a suitable measure in practice. The basic idea is to avoid a legal dispute.
In the warning notice, the claim for injunctive relief and removal is justified vis-à-vis the wrongdoer, with the request to refrain from the harmful action. In addition, a claim for damages can be asserted.
Copyright warning – what to do?
In addition to asserting one’s own claims, a lawyer also becomes active when one is confronted with a warning letter or even a cease-and-desist action.
The lawyer’s office examines the accusations, especially with regard to the demands made. It is advisable not to sign a cease-and-desist declaration hastily, but to wait for a lawyer’s assessment first.
If a lawyer contacts the aggrieved party, it is not impossible that the demands will be downgraded. In this case, the cease-and-desist declaration will be adjusted.
If one ignores a warning and does not react to the accusations, one exposes oneself to the risk of a subsequent lawsuit; if necessary, an injunction is also possible. In addition to claims for damages and lawyer’s fees, additional court costs may be incurred in this case if one is defeated at the hearing.
Copyright in Europe
The aim of the European Union is to harmonise copyright across national borders. To achieve this, the legislators of the respective countries must transpose EU requirements in the form of directives into national law within a certain period of time.
Since the beginning of the 1990s in particular, there have been a number of harmonisation directives relating to copyright and related rights. Although a separate “Copyright EU” does not exist, in practice this is largely represented by the harmonisation in the individual countries.
On the subject of copyright reform EU, there was news only recently. The law has been reformed to the effect that large online corporations such as Google or Facebook can be held liable for infringements of copyright. The distribution of copyrighted works often takes place on online platforms, and this does not always happen legally.
In practice, this may lead in future to the large platforms using so-called “upload filters” to automatically detect illegal content and prevent its distribution. Critics see this as “censorship” of the free internet.
The reform also leads to a Europe-wide introduction of the so-called ancillary copyright. In essence, this is about a search engine like Google having to pay for content (written by third parties) if it is included on its own platform.
Until now, this was not the case, and Google argued that in return it would deliver (commercially exploitable) traffic, i.e. a large number of users, to affected publishers if they clicked on the excerpts and were then redirected to the authors’ websites.
The EU member states had until April 2021 to implement the EU decision in their respective national laws.
Copyright in the digital age
Nowadays, everyone spends a lot of time a day with their smartphone and on the internet. Digital photos are taken, videos are sent, music is listened to, copied and shared, and possibly even distributed via social networks. This poses challenges for copyright law and brings it into conflict with other rights.
For example, with the Art Copyright Act (KUG), which states that permission is necessary when photos of people are published. This is not the case for public events such as concerts or demonstrations, if the person appears only incidentally in the picture or if it is a person from contemporary history.
Or with the general right of personality enshrined in the Basic Law, which grants the right to one’s own image, which states that everyone may decide for themselves whether, when and how images of them are disseminated or published.
Copyright Lawyer – Services of the Herfurtner Law Firm
Copyright is the basis for successful business in many areas of the economy. Without exploitation rights, authors would not be able to profitably exploit the creative works they have created.
Legal advice can be sought by anyone who, as an author, wishes to exploit the work they have created themselves or who has discovered an infringement of copyright.
Even if you have been confronted with a warning resulting from an infringement of copyright, you can contact our lawyers.
We advise our clients on the drafting of contracts, also and in particular in the area of licensing. In addition, we become active in the enforcement and defence of claims arising from copyright infringements.
Media law in the online sector: definition & importance for Industrial property protection
Media law in the online sector – what is important to bear in mind? Any legal theory that regulates publications and relations between media actors can be summarised as media law. Consequently, media law in the online sphere includes public law, criminal law and civil law.
It mainly concerns the media, including print media, television and cinema. The aim of media law regulation is, on the one hand, to safeguard freedom of thought and expression.
On the other hand, effective protection of intellectual property must be achieved. Of importance in media law are:
- The Copyright Act,
- the Art Copyright Act,
- the Telecommunications Act,
- the Telemedia Act,
- the Publishing Act,
- the Patent Act
- and the Trademark Act.
The sub-areas of media law in the online sector
In the following section we explain which sub-areas of media law are relevant in the online sector.
Data protection law is of great importance
The processing of personal data is regulated by data protection law. As many people as possible are to be protected from the unauthorised use of data.
The consent of the data subject is required for any further data processing beyond the minimum necessary. Data protection is becoming increasingly important in view of the widespread use of data and data processing technologies.
Publishing law in the context of Industrial property protection
Literary and acoustic works are protected by publishing law. Under the Publishing Act, there are certain rules for this. As long as the parties have not made any deviating (licensing) agreements, the Publishing Act applies.
Personal rights are a valuable asset
Media law in the online sphere: The right to one’s own distinctive identity can be protected in many ways under media law, including personality rights. Jurisprudence has created individual personality rights to protect various aspects of the development of personality.
The right to one’s own image, the right to one’s own knowledge and the right to be forgotten are examples of these rights.
Bear in mind that the right of personality is in direct conflict with press law.
Media law in the online sector is undergoing change
As the media landscape changes due to digital technology, so does media law, which is closely related to internet law.
Multimedia law has a high status in Industrial property protection
When it comes to digital content, so-called multimedia law is relevant. Copyright law plays a major role here. As a result, copyright infringements on the Internet are much more difficult to detect and prosecute.
Media law in the online area: Millions of copyrights are infringed every day in social networks. It should not be forgotten that while the big platforms profit handsomely from user-generated material, creators often go away empty-handed.
In response to this problem, the European Union has adopted a new Copyright Directive for the Digital Single Market. The aim is to distribute the platforms’ revenues back to the authors.
Upload filters endanger independence
Although the proposed copyright reform is well-intentioned, it has sparked some controversy on the internet. Internet users fear so-called upload filters that could make it more difficult to post user-generated material and undermine the independence of the internet.
Nevertheless, Germany still has two years to transpose the EU regulation into German law. It remains to be seen how European multimedia law will develop.
Rights of use and exploitation
In particular, moral rights and rights of use and exploitation are essential for the author. The former are non-transferable and stipulate that the author alone decides whether or not his or her work is to be made available to the public.
It is also regulated that the author has a right to recognition of authorship and decides whether or not his name is to be mentioned in connection with his work.
The exploitation and use rights, in turn, protect the author from others using his or her work for their own purposes without consent. The exploitation and use rights are transferable for the author, usually in return for appropriate remuneration on the part of the user.
These so-called licence agreements form the starting point for the economic exploitation of copyright and other IP rights, such as patent and utility model rights.
Copyright infringements can have both criminal and civil law consequences. Anyone who, as an author, is affected by the fact that his or her own work is being used without the granting of exploitation or use rights can contact a lawyer.
The measures to be taken range from a warning to the issuing of a cease-and-desist declaration, a removal of the copyright infringement to the assertion of claims for damages.
Advertising law – industrial property protection
Advertising law is essentially a component of competition law. It provides the framework within which companies may operate in order to influence consumers’ purchasing decisions by means of advertising measures.
When formulating their messages, advertising companies must be very careful about what they say. For example, it is prohibited to make misleading statements. This includes statements about the quality or origin of a product.
There are also strict limits on pricing. For example, so-called “moon prices”, bait-and-switch offers, special offers that are not sufficiently marked or misleading with regard to the stock of goods are prohibited.
In addition, there is a law on the advertising of medicinal products (Heilmittelwerbegesetz, HWG), which refers specifically to the pharmaceutical industry and pharmacies. Prohibitions are also regulated in advertising law, such as in relation to advertising for tobacco products on radio, television and in print.
Anyone who is planning an advertising campaign and would like to have the content checked in advance can contact a lawyer.
Binding advice can also be given in the area of digital advertising, for example on platforms such as Instagram or Facebook. A law firm will also take action if competitors are to be warned due to unlawful advertising measures.
Warning letters in Industrial property protection
The term “warning notice” is used in many areas of law (including labour law). However, it takes on a special meaning in the protection of industrial property (regulated in Section 13 UWG).
Its purpose is to settle a dispute about a property right or an alleged anti-competitive act out of court. At the same time, it is connected with the offer to conclude a cease-and-desist agreement for the future.
It is so important because, according to statistical surveys, 90 to 95 % of infringements of competition law are settled out of court by means of cease-and-desist letters. For market participants, this route is therefore particularly interesting and advantageous, as lengthy court proceedings can usually be avoided.
If the infringed party sues or applies for a preliminary injunction without a prior warning, he runs the risk that the opposing party will immediately recognise the injunction claim, which leads to the infringed party having to pay the costs of the proceedings himself, even though he wins the case.
This consequence can only be avoided under very narrow conditions, e.g. if a prior warning is futile from the outset because the opposing party has made it clear that he will take the matter to court (OLG Frankfurt am Main v. 10.07.2014 – 6 W 51/14).
What is a warning notice about?
In a cease-and-desist letter, the rights holder informs the infringer of the infringement of his intellectual property (e.g. trade mark, patent, right of use, licence, etc.) or an unfair competitive act (e.g. misleading/deceptive advertising, incorrect information on a homepage), requests the infringer to remedy the infringement by setting a deadline and to submit a cease-and-desist declaration with a penalty clause and, if the infringer does not comply, threatens to take legal action (e.g. a lawsuit).
What types of warning letters are there?
- justified or partially justified warnings
- unjustified warning
If there is a (partial) infringement of rights, the infringer usually issues a cease-and-desist declaration with a penalty clause, which is regularly attached to the warning as a form.
With this contractual declaration, the defendant undertakes to eliminate the infringement, to refrain from it in the future and to pay the contractual penalty stipulated in the cease-and-desist declaration if the infringement is repeated. In addition, the defendant must also bear the costs of the warning, provided they are correct in amount.
Under certain circumstances, the issuance of a modified cease-and-desist declaration may be considered if the person issuing the cease-and-desist letter has set the amount in dispute unrealistically high.
If there is no infringement or the defendant is of the opinion that there is no infringement, he will not issue the cease-and-desist declaration demanded by him. The person issuing the warning notice will then have to enforce his alleged claim in court by filing a lawsuit or an application for an interim injunction, which can be dangerous for the person issuing the warning notice and the continuation of his business operations, as a judicial clarification can take weeks and months.
Upon receipt of a warning notice that it considers to be unjustified, the warned party can also take preventive action and go on the counter-attack by filing a negative declaratory action with the court to have it determined that the injunctive relief does not exist.
In addition, the person being warned can also react proactively by filing a protective letter with the court. The court must consider the arguments set out therein before deciding whether to issue an injunction.
Since a cease-and-desist declaration with a penalty clause is a separate contract that can severely restrict your rights, you should not submit such a declaration hastily, but have the legality of the cease-and-desist letter checked by a lawyer. The same applies if you intend to issue a warning to a competitor yourself. The Herfurtner law firm is at your disposal for legal advice.
Industrial property protection – legal advice
Industrial property protection ensures that companies enjoy security for their intellectual property. Infringements of the various legal provisions often have sensitive consequences for the rights holders concerned.
The Herfurtner law firm advises clients on all questions of industrial property protection. There are two focal points here. On the one hand, the lawyers check whether planned measures are compatible with applicable law and whether they can be implemented without risk.
On the other hand, they help companies to assert their claims quickly when legal infringements become apparent.
With offices in Munich and Hamburg, the Herfurtner law firm is happy to answer questions on Industrial property protection. Furthermore, we also advise on the topics of labour law and real estate law. Click here to contact us directly.
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