Trademark Infringement and Unfair Competition Actions
Unauthorized use of the identical sign of a registered trademark, or of a sign so similar as to create a likelihood of confusion, may constitute trademark infringement. However, not every similar use is automatically considered infringement. The use as a trademark, the connection with the goods or services, the target audience, the commercial impression, the context of use, exhaustion of rights, honest use and earlier rights must be examined together.
Trademark infringement claims may arise from the following uses:
- Use of the sign on a product, packaging, label or the presentation of services
- Production, offering for sale or stocking of a product bearing a counterfeit mark
- Import, export or putting into commercial circulation
- Use on business papers, catalogs, signage and advertisements
- Use on a website, domain name or social media account
- E-commerce listings and online marketplace sales
- Search engine advertising, keyword or redirect use
- Confusion between a trademark and a trade name or business name
- Imitation of a trademark, logo or packaging on a non-original product
- Continued use after a license or distributorship has ended
Some uses for which there is no trademark registration, or which fall outside the scope of the registration, may, depending on the concrete conditions, be protected under the provisions on unfair competition, trade name, works, designs or personality rights. A trademark action and an unfair competition action must be brought without confusing their legal grounds and claims.
Legal Claims That May Be Asserted in Trademark Infringement
The claims that may be asserted in an infringement of a trademark right are determined by the scope of the registration, the type of act, the parties’ commercial relationship and the damage. Instead of asserting all claims unconditionally in the same file, the legal and evidentiary basis of each claim must be built separately.
Claims that may be assessed according to the concrete case:
- Determination of the infringement
- Prevention of a probable infringement
- Cessation of ongoing infringing acts
- Elimination of the consequences of the infringement
- A decision on counterfeit products, packaging, labels and means of production
- Pecuniary damage and lost profit
- Non-pecuniary damages
- Redress of the damage to the reputation of the trademark
- Compensation based on a license fee or other calculation methods
- Publication of the decision
- Claims concerning the use of a domain name, trade name or online account
- Litigation costs and attorney’s fees
To calculate damages, the defendant’s sales and profits, the trademark owner’s probable earnings, licensing practices and market data may be examined. Trademark valuation and the calculation of damage arising from infringement are not the same thing; where necessary, we work with financial, sector and trademark valuation experts.
Defense Against an Allegation of Trademark Infringement
Trademark disputes do not consist only of claims asserted on behalf of the rights holder. Defenses of manufacturers, sellers, importers, distributors and service providers who are the subject of a formal notice, platform notification, customs suspension, injunction, lawsuit or criminal complaint are also prepared by examining the registration and actual use together.
Main issues that may be assessed in the defense:
- The signs or the goods and services not being similar
- The use not having the character of use as a trademark
- Honest and descriptive use
- An earlier right or earlier actual use
- The scope of a claim of consent, license, contract or implied permission
- Exhaustion of rights and the original-product defense
- Invalidation or revocation of the trademark registration
- Non-use of the claimant’s trademark and proof of use
- Exceeding the scope of goods and services of the registration
- A claim of loss of rights through acquiescence
- Prima facie proof and proportionality in an interim injunction
- Objections on damage, fault and causation
- Intent, act and personal responsibility in criminal liability
So that the statements made in civil, criminal, customs and platform proceedings do not contradict one another, the defense should be coordinated with a single-file strategy.
A later-dated trademark registration alone does not provide a defense against an earlier right. An action for a declaration of non-infringement is examined according to the conditions of a person against whom an infringement action has not yet been filed. The effect of counterclaims and of the route of invalidation or revocation on the pending action is assessed separately. In compensation arising from unfair competition or trademark claims, mediation as a condition precedent to litigation is checked separately.
Enforcement of a final or enforceable decision and collection of the receivable are also planned separately in terms of enforcement and insolvency law.
Basis: 1, 5