Illicit word mark registered on "VirtualDub" in Germany

[LigH]

Avery Lee reported on his homepage:

I have just gotten word that someone has registered "VirtualDub" as a "word mark" in Germany as of June 6, 2006 and is now sending out notices to people in that country demanding money for so much as mentioning the program and linking to the SourceForge download from their website. I, Avery Lee, have nothing to do with this and am vigorously opposed to any such registration. This is an attempt at fraud. Both the first public release of the program and the website registration far predate the word mark's registration, and I have not authorized anyone to be a software distributor or representative on my behalf with regard to VirtualDub.

The big problem here is that (a) I am not a lawyer, (b) I have no presence whatsoever in Germany, and (c) I do not speak German. I am a citizen and resident of the United States of America and speak English. If anyone could provide help or experience with combating this problem, I would very much appreciate it. I intend to look into this and try to do what I can to stop it.

One of the members of the german doom9/Gleitz board who has an own forum - Lucike FZ - already received such a letter and is about to start first contra reactions (like returning a striked-through agreement). We are discussing this issue there in this thread (http://forum.gleitz.info/showthread.php?t=30783).

BTW: How would you call "earning money by frauding a trademark protection" in english - "admonishment", "dissuasion", or simply "reminder"?

[adam]

I took a look through Germany's Trademark act and here's my understanding of his options. Germany's formal trademark opposition process is not available unless you are the owner of a superior competing mark. The time frame to protest registration, for a person with interest but without a mark, is during the initial inspection, before the mark is approved. So, neither of these free processes are available.

There are methods to invoke reviews of already approved marks within the Patent Office though. You can do it through Sec. 51, Nullity due to earlier rights. As best as I can tell, this procedure is free. I see two applicable arguments. Under section 12 he may have a superior right through use in trade. It would have to be determined that VirtualDub has been used in trade enough in Germany such that it has acquired secondary meaning, in other words that people recognize the name and associate it with the product. I have no idea whether VirtualDub is this well known in Germany.

Probably the better argument is under section 13(2) 3 which establishes superior rights in the form of an existing copyright. I need to now go look up Germany's copyright law before I can comment more, but he may have certain copyright protection in the source code which will extend to the name of the software itself. (copyrights don't protect the software name but if this guy is trying to use the trademark in connection with the actual VirtualDub software, then the copyright will prevent this kind of use.)

There is another argument that can be raised via a different procedure under Sec. 54 which deals with absolute grounds for refusal. This process is not free and I don't think I can determine the cost since I don't speak German. But the Patent office will waive some or all of the fees, or make the other party pay it, under certain circumances which may apply here. Your argument here would be under Sec. 50 (1) 4 which prohibits you from registering marks in bad faith.

If its any consolation, you have two years to file these objections.

Anyone can file these requests to the Patent Office and I believe the forms are available online at the German Patent Office's website. Everything is in German, so you'll have to get someone to help you fill them out.

These appear to be the most direct ways to challenge the registration itself. There are more involved and costly methods such as filing for your own trademark in Germany and triggering an opposition between the two, or filing a civil lawsuit in the Patent Office or even on grounds that he is violating your copyright. Neither of these are very appealing options.

Please take this information with a grain of salt. I have no experience with German law but I practice trademark law in the US and many of Germany's provisions and procedures appear similar.

Here is all of Germany's Trademark Act in English:
http://www.ip-firm.de/markeng_e.pdf#search=%22german%20trademark%20act%22

@LighH: Exploiting another's trademark or superior right to a tradename is referred to as simply unfair competition. Representing that you are the creator/owner of a product when you are not is referred to as, "passing off." As in, he's passing off Avery Lee's software as his own. Sounds kinda informal but that's the actual legal term for it.

[LigH]

Representing that you are the creator/owner of a product when you are not is referred to as, "passing off." As in, he's passing off Avery Lee's software as his own. Sounds kinda informal but that's the actual legal term for it.
That's not the case here...

Mr. Kliemen registered a trade mark for a product he did not even present to the public so far; and he used a name of an already existing and very famous, but not protected application.

I highly doubt that his product (if it exists at all) would ever get as popular as the original one. In an interview (with the "heise" publishing house IIRC), he claimed his product not only being able to edit videos, but also convert them to any other format... somehow I already fear that it will just be another libavcodec GUI, if at all! Therefore, why would anyone want to pay for it, except for the case that similar freeware is not yet known to them? ;)

[adam]

If he actually has a unique product to distribute, and begins distribution before the expiration of 5 years (this is German law) than he is possibly in the right. Avery Lee's only argument would be that he has already gained priority to the name in Germany due to Virtualdub's existing goodwill there. This is entirely a fact question and one that would be difficult and costly to prove in a trial. Virtualdub can be distributed on the internet for many years and become widely known in the online community, which I believe is the case, and yet the German Trademark office and/or Trademark Court may still not deem that it has priority to the name in any particular region of Germany. This is a risk that you always take if you don't register your tradename somewhere. (once registered in one country you can use that as priority data in most others.)

[LigH]

A similar issue happened to the "Apachefriends", the creators of XAMPP (a pre-built and rather complete Apache/MySQL/PHP/Perl environment, ready-to-install). They could solve it, according to their board with severe financial support.

[GodofaGap]

update:

http://www.virtualdub.org/blog/pivot/entry.php?id=125

It seems the author is taking legal action against this.