Trademark law

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The trademark law is an area of law that deals with the intellectual property law of characteristics (eg. As registered trademarks and logos is concerned).


Like utility models , patents or competition rights, trademarks belong to the intangible assets that, like property , are subject to absolute legal protection. This commercial legal protection for intangible property includes the exclusive right of use of the right holder to sole use ( exclusive right ), from which results the prohibition against third parties not to be allowed to use these rights without the consent of the right holder. If there is a risk of repetition, the right holder has an injunction against the infringer, which he can enforce through an injunction .

Legal bases

The most important legal basis is the Trademark Act (MarkenG). The legal term "label" is to be understood here as brands , business names and geographical indications of origin , this is also evident from the final list in Section 1 (1) of the Trademark Act. According to the central protective provision of Section 3 (1) of the Trademark Act, all signs , in particular words including personal names , images , letters , numbers , gestures , audio symbols , three-dimensional designs including the shape of a product or its packaging or other presentations including colors and color combinations , are under legal protection that are suitable for distinguishing the goods or services of one company from those of other companies.

Legal protection begins according to § 4 MarkenG with the entry in the trademark register . According to Section 7 of the Trademark Act, rightholders can be natural persons , legal entities or partnerships . The right to cease and desist against infringers results from Section 14 (5) of the Trademark Act. Is a trademark in the trademark register in accordance with § 33 registered Trademark Act, it must by the trademark owner with the symbol "®" (of English Registered Trademark , "registered trademark") are indicated next to the mark. The term of protection of a registered trademark ends after ten years ( Section 47 (1) of the Trademark Act); it can be extended several times by ten years.

In addition, regulations from the German Civil Code (BGB) and Commercial Code (HGB) are important in order to enforce property rights.

The fundamental difference to patent and copyright law is that trademark law as an expression of trademark law does not primarily protect the creditable achievement, i.e. not an invention or a work . The label right protects the ability to assign a label. From this, the particularly great relevance of trademark law for commercial transactions can be drawn, since here the protection against unauthorized use for aspects such as advertising effectiveness, reputation exercise and qualitative allocation options are of existential importance.

Important criteria of trademark law

Distinguishing function

The protection of the owner of a trademark right is central to trademark law. Trademark rights are property rights. The owner of a trademark protected label is granted a legal position comparable to property ownership, which allows him to exclude third parties from using the same label. The distinguishing function of a label is preserved in that it is forbidden for a third party in business dealings to use a symbol that is sufficiently similar or even identical to a protected label. This was decided as a fundamental decision by the Federal Constitutional Court in its “Schloßberg” judgment. It says:

"Taking into account the principles developed by the Federal Constitutional Court on copyright law, the trademark can be viewed as property guaranteed by Art. 14 GG."

Violation of the identity protection of the “Railway Color” label in the same product category

Identity protection

In order to be able to exercise this differentiating function in practice, the legislature grants the owner of a label the right to monopolize a specific label for a specific area of ​​the goods and service classes for its competitive exercise. This means that the owner of a protected mark is the only one allowed to use this mark in business dealings to advertise a certain product or service class. This ensures that the identity of a product, which for the consumer is inextricably linked to the brand, i.e. the characteristic of a product, is exploited for a similar or identical brand of a similar or the same product category. The offense of identity violation is fulfilled if a sign identical to the protected trademark is used for goods or services that are identical to those goods or services for which the trademark is protected.

Protection against confusion

There is a risk of confusion if the target audience could give the impression that the goods or services in question come from the same company or, if applicable, from economically related companies. Protection against the risk of confusion is the central area of ​​application of the protective mechanisms within trademark law. In practice, the aim is to use certain criteria to determine whether there is a risk for the consumer of a label being confused with a similar label.

Naming rights

In contrast to the following trademark rights, the protection of the name also applies outside of business transactions and is not regulated in the Trademark Act, but in § 12 BGB. According to this, the name is the linguistic identifier of a person to distinguish it from others. The civil name of a natural person is protected, especially the surname in isolation. In addition, pseudonyms , artist names , nicknames , coats of arms and club emblems also enjoy protection, as long as they allow the person concerned to be individualized. Further naming rights result from § 13 Abs. 2 Nr. 1 MarkenG, according to which the names of legal persons and associations of persons are also protected.

The trademark protection of the name right thus protects the name from the use of characters that can be confused. In this respect, the provisions of the Trademark Act are lex specialis before the protection from § 12 BGB. Whether the legal assessment of the unauthorized use of a name is based on the provisions of the German Civil Code or the Trademark Act depends largely on whether the name is made by an unauthorized user in business or in the private sector.

Name denial

The first relevant encroachment on naming rights is name denial according to § 12 BGB (1st case). The prerequisite is that the right of the name bearer to use his name is disputed. Basically: Denying a name is an illegal act. The relevance of name denial in terms of trademark law can be illustrated using an abstract example:


X registers the name "Z" as a brand. After successful registration, X tries to claim injunctive relief against the actual bearer of the name Z regarding the use of the name, which is now protected by X as a registered trademark. The legal consequence of the success of an injunction by X would be that the bearer of the name Z becomes the unauthorized user of his own name because of the X's trademark registration. Such a consequence would be unacceptable. In the event of an emergency, the right to a name enables a weighing of interests and thus offers suitable protection for private individuals, but above all for commercial transactions.

Name presumption

Name presumption within the meaning of § 12 BGB (2nd case) is understood to mean the case in which an unauthorized person uses the name of an authorized person, as a result of which there is a confusion of attribution, on the basis of which the legitimate interests of the authorized name bearer are violated.


X uses the coat of arms of his place of residence Y-Stadt on the restaurant blog he runs. The use of the coat of arms causes confusion as to the fact that the traffic believes it is an official website operated by the Y-City.

In practice, the cases usually do not occur in such a way that there is a name-related use by the unauthorized person. Rather, it is a constellation in which the use of a name, or, as in the example, the use of a coat of arms, leads to the unauthorized user being assigned to a company, a product or a service through an incorrect understanding of the traffic - in this respect here to the Y-city - with which he actually has no legal contact.

Company law

A company is understood to be the name of a businessman in the sense of the German Commercial Code (HGB) in accordance with Section 17 of the German Commercial Code. In the case of companies, naming rights are therefore also protected in accordance with § 12 BGB.

distinctive work title

Work title

Under titles of works are understood in principle those names that identify a specific product type, such as works such as books ( book title ), movies ( movie title ), music CDs ( music ) and computer programs. In this context, it should be noted that the titles of works are usually designations of works protected by copyright, but trademark protection does not automatically result from the fact that a property right has arisen under the Copyright Act . Rather, the requirements according to Section 5 (3) of the Trademark Act must be met. In this respect, work titles must be distinctive. This must always be answered in the affirmative if the title is suitable to delimit the work from other works and to individualize it sufficiently. If a work title is sufficiently distinctive, it already enjoys trademark protection with the start of use, without further conditions being added. If such a distinctive character is not fulfilled for a work title, the achievement of so-called traffic validity takes place as a mandatory protection requirement. The title of the work must have achieved a high level of awareness within the public involved in order to gain protection.

Company identification

As in the case of work titles, the creation of trademark protection begins either with the start of use of a distinctive company name or, alternatively, with the acquisition of sufficient publicity. The protection according to § 5 MarkenG occurs alongside the property rights of the BGB and HGB to protect the name of a company.

Types of corporate symbols

Corporate identifiers come in the following forms:

  • Name (§ 12 BGB),
  • Company (§ 17 HGB),
  • special business names, especially establishment names,
  • Business badge.
permitted use of the name champagne for products that come from the corresponding region

Geographical indication of origin

According to § 126 MarkenG, this is to be understood as the following: Names of regions , places , landscapes or other designations that are suitable for indicating the origin. As a guarantee function, the geographical indication of origin is intended to educate the public about a certain product quality that is associated with the origin of the raw material. Due to the great importance of geographical indications of origin and the need to create a high level of legal certainty in the European economic area, full harmonization has already been achieved in the area of ​​agricultural products and foodstuffs. Regulation (EU) 1151/2012 on quality regulations for agricultural products and food creates a Europe-wide registration procedure and at the same time regulates the scope of protection.


Also domains may violate trademark rights. The domain name is derived from the second-level domain or, if there is a context, from the second-level domain and the top-level domain . The domain name itself is not a trademark in the sense of trademark law, but can obtain trademark protection if the specific domain is protected by a trademark or a corporate trademark. For example, domains can be registered as a trademark ( § 4 No. 11 MarkenG), protected as a type of the company identifier mentioned ( § 5 Paragraph 2, 3 MarkenG), or as an unregistered trademark - similar to the work title and the company identifier - protection gain through traffic validity.

In domain law, the principle of priority "first come, first served" applies. Domain names are assigned by private bodies, such as the top-level domain “.de” from DENIC . In this respect, the owner of a domain with registration at the private registry only has a relative right from this obligation , but not an absolute right from trademark regulations. Collisions between domains in the event of unauthorized use of names in the second-level domain are of great practical relevance. For example, the use of the domain “” violates the naming rights of the city of Heidelberg.


Trademark rights are territorially bound rights that protect the right holder only in the state for whose territory they were acquired, for example by being entered in a national register of trademarks or by recording use in the respective state. At the international level, the Paris Convention ( Paris Convention) has existed since 1883 , in which essentially uniform rules for patents and trademarks have been agreed, and since 1891 the Madrid Agreement (MMA), which makes agreements on the international registration of national trademarks. According to the “Madrid System”, named after the Madrid Agreement and the Protocol to the Madrid Agreement, internationally registered trademarks (IR trademarks) can be obtained. The responsible World Intellectual Property Organization ( WIPO ) in Geneva grants a bundle of IR trademarks that are equivalent to national trademarks in terms of their scope of protection.


  • Ulrich Hildebrandt: Brands and other characteristics. Carl Heymanns Verlag, Cologne 2015, ISBN 978-3-452-28243-9 .
  • Franz Hacker: Trademark Law. Carl Heymanns Verlag, Cologne 2013, ISBN 978-3-452-27909-5 , pp. 279-291.
  • Paul Ströbele / Franz Hacker: Trademark Law Comment. Carl Heymanns Verlag, Cologne 2015, ISBN 978-3-452-27898-2 .

Web links

Individual evidence

  1. Frederick L. Ekey / Achim Bender / Georg Fuchs-Wissemann (ed.), Trademark Law , Volume 1, 2014, p 21
  2. BVerfG, judgment of May 22, 1979 - Schloßberg, trademark rights are property rights within the meaning of Art 14 GG. P. 202; BVerfGE 51, 193 para. 93 - Projekt Deutschsprachiges Fallrecht (DFR), accessed on January 24, 2016
  3. Otto Palandt / Jürgen Ellenberger, Commentary on the Civil Code , 73rd Edition, 2014, § 12, Rn. 1
  4. ^ BGH judgment March 28, 2002 - Düsseldorfer Stadtwappen, accessed on January 24, 2016
  5. EU Regulation No. 1151/2012 (PDF) - Quality regulation for agricultural products and food (PDF file), accessed on January 30, 2016
  6. DENIC is not obliged to review possible legal violations when registering a domain , accessed on January 30, 2016
  7. ^ LG Mannheim, judgment of March 8, 1996, Neue Juristische Wochenschrift 1996, 2736