Judgment of the LG Hamburg from July 19, 2024 – Az.: 327 O 195/23
If you want to protect your trademark, you shouldn’t wait too long to register it. Otherwise, someone else might beat you to it. It can also happen that two parties register their trademark rights for a product on the same day. The Hamburg Regional Court had to decide in such an unusual case who holds the trademark rights when registered on the same day (Az.: 327 O 195/23).
The principle of “first come, first served” essentially applies in trademark law as well. According to § 6 of the Trademark Act (MarkenG), the one who registers the trademark first can claim trademark protection. The filing date or the priority date is decisive, as explained by the law firm MTR Legal Rechtsanwälte, which advises on IP law and thus also on trademark law. This shows that one should not wait too long to register a trademark.
Registration of a Trademark on the Same Day
It becomes more challenging to decide who can claim trademark protection if the parties registered on the same day. This rare situation was the case before the Hamburg Regional Court. Here, a U.S. newspaper sued a puzzle and games retailer from Germany for alleged trademark infringements.
Both parties had registered trademark rights for a popular online game. The Hamburg-based company registered a word mark with the German Patent and Trademark Office (DPMA). On the same day, the newspaper also registered trademark rights for the game – but not with the DPMA, instead as an EU trademark with the European Union Intellectual Property Office (EUIPO). Since the U.S. company registered the trademark rights not only for Germany but for the entire European Union, it argued that its trademark rights were superior and sued the Hamburg-based company for injunctive relief and damages.
Court Finds No Bad-Faith Registration
The U.S. company argued that the registration with the DPMA was only made to prevent the U.S. publisher from establishing itself in the German market. However, the Hamburg Regional Court did not accept this argument. A so-called bad-faith registration can obstruct trademark rights, but the plaintiff must prove such an allegation. According to the Hamburg Regional Court, the U.S. publisher failed to do so.
Otherwise, the priority principle applies in trademark law. This means that the protection of an already existing trademark takes precedence over a newer one. Since the parties in this case registered their trademarks on the same day and the time of day is not considered, no precedence could be established. Therefore, the Hamburg Regional Court ruled on July 19, 2024, that neither party could make claims against the other. According to § 6 Abs. 4 MarkenG, rights in a trademark registration on the same day are equal and do not constitute claims against each other. However, the judgment of the Hamburg Regional Court is not yet final.
Register Trademark Rights Early
Following the decision of the Hamburg Regional Court, both parties are initially allowed to continue marketing the game. According to media reports, the Hamburg-based company would have liked to distribute the puzzle game in Europe together with the U.S. publisher. However, the latter had no interest in this.
The game’s inventor initially made it available to users for free on his website. The game quickly became very popular. The U.S. publisher became aware of it and bought the rights to the puzzle game from the inventor in 2021 for around 1.2 million USD. The trademark registration with the EUIPO was not made until February 1, 2022.
The case shows that it is important to register trademark rights early. This can be done in different ways, depending on how far the trademark protection should extend. If the trademark rights are only to be protected in Germany, registration with the German Patent and Trademark Office (DPMA) is sufficient. If the protection is to be extended to the EU, registration as a Union trademark with the EUIPO is necessary. For protection beyond the borders of the EU, the trademark can be registered with the World Intellectual Property Organization (WIPO) in Switzerland.
MTR Legal Rechtsanwälte advises on trademark registration and other trademark law issues.
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