Pamela Chestek wrote on 08/28/2009 06:39 PM:
Richard Koerber wrote on 08/28/2009 05:27 PM:
If I would start to write "Fedora®", but would not write a trademark
symbol
for (let's say) "Intel", a visitor could conclude that Fedora is a
registered
trademark, and Intel is not. I am afraid I could then be a target for a
trademark infringement claim from Intel. :) (Remember: German law
applies.)
Do you know for a fact that this is true under German law? If you
could point me to a reference that would be very helpful. I don't
know, although I can ask German colleagues about it. The statement
you use is one that a trademark owner and its licensees would use for
their own protection (defensively), but it seems unusual to me that a
company could make an offensive claim against you for inconsistent
marking. If that's the case under German law though, we're happy to
accommodate it.
Below you will find information from a German lawyer on this topic,
reproduced with permission. I am not identifying the lawyer, to avoid
any suggestion that he or she is offering community members specific
legal advice or representation.
I don't believe any changes are needed to the agreement. We will leave
in the original change, that relieves one from the duty for using the
the symbol for "Fedora" so long as one doesn't use the symbol for any
trademarks at all. But, I hope this provides some comfort in general
that users in Germany shouldn't have to be overly concerned about
liability for using the symbol.
Pam
Dear Pam,
>
> <snip> forwarded your trademark topic to me. Please
> allow me to provide the following quick answer:
>
> 1.
>
> The ® symbol can be used with respect to registered CTMs (which of
> course also enjoy protection in Germany) as well as on registered
> German Trademarks. However, there is no obligation whatsoever to do
> so. A party can freely decide whether or not to use the ® symbol. The
> lack of using it does not mean that there is no registered Trademark
> or that there is no license.
>
> Further, not using the ® symbol will also not jeopardise any cease and
> desist claims or claims for damages. Courts do not hold infringers
> liable to a greater extent if they infringe on a trademark which is
> used in connection with the ® symbol than if they infringe on a mark
> where the symbol is not being used.
>
> 2.
>
> I also see no reason why any inconsistency in using the ® symbol as
> described in your email should have any negative effect. Even if
> somebody out there might believe that your potential licensee has no
> right in using the mark where the ® symbol is not attached, there is
> no legal significance attached to that. Therefore, at least from a
> legal perspective, I do not see why they should not use the ® symbol
> on the trademarks licensed by you and use the footer with respect to
> the others.
>
> 3.
>
> From a practical perspective, I have seen all sorts of solutions. I
> have clients who generally use footers instead of the ® symbol and
> others who are very keen on using the ® symbol. My own view on this is
> that specifically with respect to trademarks that may be rather
> suggestive, it is of advantage to always and consistently use the ®
> symbol for the purpose of showing the public that the mark at issue is
> not a mere product description (such as, for example, a flavor
> descriptor) but a trademark.
>
> I hope this has been helpful. Please let me know if I can do anything
> else for you. You can always call me at my extension +49 <snip>
> I will of course also be happy to discuss this further with you
> by telephone.
>
> Best regards,
>
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