Comment by Roritharr | Hacker News Reader

Comment by Roritharr | Hacker News Reader

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You can check this document from the german trademark registry:

https://www.dpma.de/docs/dpma/veroeffentlichungen/broschuere...

German Quote: "Welche Rolle spielt das Datum der Anmeldung? Wie bereits unter „Markenrecherche“ erwähnt, gilt im Markenrecht der Prioritätsgrundsatz. In der Regel hat die ältere Marke – das heißt die Marke mit dem früheren Anmeldetag – die besseren Chancen, sich im Konfliktfall durchzusetzen"

which roughly translates to:

"What role does the date of registration play? As already mentioned under "Trademark search", the the principle of priority applies in trademark law. As a rule, the earlier trade mark - that is to say the mark with the earlier filing date - will give you the better chances to assert yourself in the event of conflict."

This doesn't sound as clear cut and is worded this softly simply because of Very Old (think 50-100 years) German companies having very legitimate claims of prior use that can't be overlooked, although the german legal system prefers the simpler and cleaner first-to-file ruling.

That means in effect for startups first-to-file is the guideline you should look into. I've paid expensive lawyers to learn this lesson.

Of course an earlier trademark filing is better then a later one.

But what does that have to do with the quesion here?

The question is if an entity that started using a trademark earlier would win in court over an entity that registered the trademark later.

For all I know the answer is yes.

The answer is indeed yes. Just have a look at the relevant law, § 12, § 4 Abs. 2 MarkenG, which is conviently available in some English translation:

> The registration of a trade mark may be cancelled if another person has acquired rights to a trade mark prior to the date that is relevant for the seniority of the registered trade mark within the meaning of section 4 no. 2 or to a commercial designation within the meaning of section 5 and these entitle him to prohibit the use of the registered trade mark in the entire territory of the Federal Republic of Germany.

Where the cited section 4 no. 2 is

> The following shall give rise to trade mark protection: [...] the use of a sign in trade in so far as the sign has acquired public recognition as a trade mark within the affected trade circles

https://www.gesetze-im-internet.de/englisch_markeng/englisch...

This is indeed the law, but how the courts interpret it is irrelevant for most startups, as "public recognition within the affected trade circles" is a very hard to pinpoint term and usually reserved for industry/category leading products such as "Tempo" or "Haribo Goldbären".

You might try to go this route via a court-case, while the chances in our case with prior use and trade show appearance was evident were rated as very bad by our lawyers, but again, this is usually out of scope for the resource options of a startup/small business.

Courts indeed interpret it strictly. They use two criteria:

1. The mark has to be used in a commercial setting

2. The mark has to enjoy a reputation within that sector of the market

3. The mark has to have distinctive character

Problematic is usually the second one. It is interpreted by the Federal Supreme Court that (bearing exceptional circumstances) at least 50% of participants in the market have to recognize the mark. The more generic the mark is, the higher the threshold.

in germany it would've been in favor of clicker heroes. basically clicker heroes has a trademark in two countries. another company registered a trademark in their country and COPIED the game. this is basically extremly problematic. germany takes both copyright and trademark extremly serious and usually you can't register a trademark if it is also internationally recognized.

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