Last year, we referred to the protected trademark of the term webinar in our blog. In the meantime, numerous revocation applications against this trademark registration have been filed. Nevertheless, webinar is still a protected term in Germany, as of 24.56.2021.
Webinar under trademark protection in Germany
Incomprehensible to many, but nevertheless a fact: Webinar is a protected trademark in Germany (Trademark No. 30316043). As always in trade mark protection, protection can only be claimed with a trade mark for the goods and services for which this trade mark was registered. For the trade mark webinar, however, these are, inter alia, explicitly “providing information on the internet; providing platforms on the internet; providing portals on the internet; organising and conducting seminars; organising and conducting conferences” – in short, everything that has been understood by webinar for years.
How can such a word be protected as a trade mark? Trademarks are not allowed to be descriptive and, moreover, there is a need to keep words of the general vocabulary free (§ 8 para. 2 No. 1 MarkenG and § 8 para. 2 No. 2 MarkenG).
It is true that trade marks may not be descriptive – at the time of the trade mark application. However, in the case of the trade mark Webinar, this was a very long time ago; this now common word was applied for and registered as a German trade mark as early as 2003. At first, this was unknown and ultimately uninteresting, but in recent years webinar has naturally become a much-used term. Rightly so, last year there were warnings of possible cease-and-desist letters against providers of a webinar, which we also informed about in our blog. Since then, many cancellation applications have been filed against this trademark, is it still protected at all?
The short answer is: Yes, the webinar trademark is still protected, as of today, 24 June 2021.
However, we are also given a slightly longer answer.
Term of protection of a trademark
In principle, a trade mark is initially protected for a period of 10 years. However, it can ultimately be extended as often as desired pursuant to § 47 Trade Mark Act by paying a further fee to extend the term of protection. The trademark proprietor of the trademark Webinar made use of this option and renewed the trademark Webinar on 1 April 2013 for an additional 10 years. Therefore, trade mark protection for the Webinar trade mark will expire on 31 March 2023 – or it will then be renewed for a further 10 years.
Many applications for revocation of the Webinar trademark
The DPMA register shows numerous requests for revocation of the trade mark. However, this initially only means that applications have been filed to terminate trade mark protection for the term webinar.
For revocation can be applied for against a trade mark under § 49 Trade Mark Law. This states that “if, as a result of the conduct or inactivity of its proprietor in the course of trade, the trade mark has become the common name in the trade for the goods or services in respect of which it is registered”, a trade mark is cancelled.
Likewise, an application for revocation is successful if the trade mark has not been used in a way that preserves its rights within an uninterrupted period of 5 years after the date of registration pursuant to § 26 MarkenG. This means that the trade mark Webinar must have been put to genuine use in Germany for commercial purposes by its proprietor for the goods or services for which it is registered. If he cannot prove this and an interested party files an application for revocation with reference to the use pursuant to § 26 MarkenG, the trademark will be cancelled. The corresponding verification of such evidence is time-consuming.
In this context, we would also like to point out the ruling of the highest European Court (ECJ), according to which an affected party can even claim retroactive trademark infringement for an unused trademark in the five-year period – even after the trade mark has lapsed.
Request for revocation of trademark possible at the DPMA
Also important with regard to revocation of a trade mark is the innovation resulting from the modernisation of the Trade Mark Act. This is because Part 2 of the MaMoG entered into force on 1 May 2020, and this concerns applications for revocation and for the revocation of a trade mark. Since then, applications for revocation of a trade mark and invalidity of a trade mark can be conducted directly before the DMPA (previously, this was only possible in court proceedings); this is much cheaper for the applicants than court proceedings.
This should also explain why there were a large number of applications for revocation of the Webinar trade mark in 2020 of all years.
But so far, none of these applications have been successful; the Webinar trademark is – as of today, 24 June 2021 – still in force. Providers of online seminars or online meetings are therefore still at risk of being warned off for using the term webinar.
Receiving a warning – what now?
But what should you do if you receive a warning?
As long as trade mark protection exists, a warning notice is legal and must always be heeded. If those who have been warned ignore such a warning, there is a risk that they may be ordered to cease and desist and to pay damages. We recommend consulting an experienced lawyer.
Do you need assistance in protection of a trademark?
Our lawyers have many years of expertise in trade mark law as well as in the entire field of intellectual property and are entitled to represent you before any office or court in Germany as well as internationally. We would also be happy to represent you in an application for revocation of a trade mark.
Please contact us if you are interested.