No trademark infringement with Trusted Shops – here's how it works!
Trademark law in e-commerce – a topic that concerns many sellers and often causes headaches. Even small mistakes in product descriptions, logos, or marketing can lead to costly warning letters.
That’s why in this episode we give you helpful tips to avoid costly pitfalls in day-to-day selling on eBay and legally protect your business. Our podcast hosts Isabell and Vincent got support from our partner Trusted Shops for this: Lazar Slavov, Senior Legal Consultant at Trusted Shops and lawyer at Föhlisch Rechtsanwälte. He knows exactly what you need to pay attention to in order to keep selling safely and successfully on eBay.
Enjoy listening!
**Important links**
- More information from Trusted Shops about protecting your eBay shops
- More information about Warning Letter Protection Basic and Datenschutz 360 from Trusted Shops
- Product overview from Trusted Shops
- Föhlisch Rechtsanwälte for e-commerce law
- The German Patent and Trade Mark Office (DPMA)
- Trademark search at the DPMA
- Trademark search at EUIPO
- eBay Community
- eBay for Business on Facebook
- eBay for Business on Instagram
- More info about the eBay podcast “Alles top. Gerne wieder!” and our podcast hosts
**Mentioned podcast episodes**
** Chapter markers **
- 00:00:00 to 00:01:59: Intro
- 00:01:59 to 00:03:48: What do Trusted Shops products help sellers with, and how do they work with eBay?
- 00:03:48 to 00:06:49 What is trademark law and what types are there?
- 00:06:49 to 00:09:30 Why is trademark law relevant for sellers on eBay?
- 00:09:30 to 00:10:33: Who can send me a warning letter?
- 00:10:33 to 00:15:06: What should I do if I’ve received a warning letter?
- 00:15:06 to 00:29:34 What are the classic pitfalls in trademark law and how can I sell branded products without getting a warning letter?
- 00:29:34 to 00:30:47: Outro
Vincent: Trademark law: A tricky topic for sellers in e-commerce. One wrong move, and it can get pretty expensive. Nobody wants to find a trademark warning letter in their inbox, but it doesn’t have to come to that. In this episode, we’ll show you what you need to pay attention to in online selling, in product descriptions, when using brand logos, but also in marketing, so you can avoid costly mistakes and stay on the safe side.
Lazar: Important to know: A warning letter, which many people may not yet fully know, does not necessarily have to be in writing. So there is actually no specific form for a warning letter. It can be issued by email and, in theory, even verbally. And unfortunately, it has the same effect. You always have to be careful because it can get expensive.
Vincent: Welcome to another episode of "Alles top. Gerne wieder!" - the eBay podcast about commerce and e-commerce. I’m Vincent Rek, your host for today’s episode, and next to me is my dear co-host, Isabell Buttewegge. As you already heard in the intro, today we’re dealing with a topic that’s hugely relevant to you: trademark law. How can you avoid trademark infringements? And what do you need to do to properly protect your online shop otherwise?
Isabell: Yes, that’s exactly what we’ll be clarifying today, and for that we invited an expert: Lazar Slavov. Lazar is Senior Legal Consultant at our partner Trusted Shops and specializes in trademark law. And he’s also a lawyer at Trusted Shops’ partner law firm: Föhlisch Rechtsanwälte. Föhlisch Rechtsanwälte offer tailored legal solutions and legal advice in e-commerce. Hi and welcome to the studio, Lazar!
Lazar: Yes, thank you very much! I’m really happy to be here and to talk with you about this exciting topic.
Isabell: We’re also very happy you’re here today. And before we dive into the topic, could you explain what exactly you do at Trusted Shops for online sellers?
Lazar: Yes, of course! Trusted Shops is mainly known to most people for its certification services, meaning above all the trust seal that many shops know. But our unit "Legal Services", where I also work, has been offering various legal consulting services related to e-commerce for almost ten years now, to be precise exactly ten years. And this especially includes warning letter protection, because unfortunately the issue of warning letters is still a major nuisance for those affected, which is why warning letter protection is so important. Trusted Shops is eBay’s partner in this area and also in the area of legal certainty in e-commerce, but above all in warning letter protection.
Vincent: Can you tell us a bit more about the service packages "Abmahnschutz Basic" and "Datenschutz 360"? That’s basically where you’re involved with us.
Lazar: Yes, gladly. So the "Basic" package primarily includes legal texts, meaning sellers can obtain the texts they need free of charge: terms and conditions, privacy policy, and so on. It also includes various services in the area of data protection. That means various things that are important under the General Data Protection Regulation and where sellers need to be covered so that no authorities come knocking and potentially cause problems.
Isabell: That’s also the package that sellers get from us with a shop subscription, right?
Lazar: That’s correct. So everyone on eBay who sells on eBay benefits from this package at no additional cost and still has these services, and above all the warning letter protection service, and is then a bit better protected, or significantly better protected, when it comes to annoying warning letters.
Vincent: As always, we’ll of course link more information about that in the show notes. Lazar: Very briefly, what is trademark law, actually?
Lazar: Yes, so a trademark protects product identifiers for goods and services for the purpose of distinction. That’s basically the technical side. But a trademark is of course much more than just a means of distinction. Many talk about a communication symbol with its own personality, one that conveys not only information but also feelings. And from a legal perspective, one would say that a trademark is linked to an exclusive right. That means the right to prohibit third parties from using similar or identical signs for similar or identical products in business. Now, creating a trademark requires a certain filing process. This filing process is a bit of bureaucracy, but it’s important, and before filing, a prospective trademark owner should ask themselves a few questions. For example: What are my products, actually? Where exactly do I want to position myself? What does my "corporate identity" look like? So what should my company’s brand look like exactly? And also very important: Where do I want to position myself? Which market? Is it only Germany? Is it the EU? Or potentially also a third country outside the EU? All of these are questions that are important before filing for a trademark, and of course, last but not least, the process takes around two to three months until the trademark is actually registered and thus enjoys protection. Although protection begins as soon as the application is filed.
Isabell: You just said that a trademark is basically a means of communication for personality, which I think is a very beautiful expression. What different types are there?
Lazar: Yes, that’s a good question. In fact, a trademark can be any conceivable sign. Think of letters, words, images, 3D designs, and much more. There are also, for example, sound marks, and even scent marks. For example, one could consider the well-known film production company...
Vincent: "Metro-Goldwyn-Mayer," you mean?
Lazar: "Metro-Goldwyn-Mayer," exactly! They’re known for trying to register a sound mark, specifically the roar of a lion. So the roar of a lion was supposed to be protected as a trademark. It didn’t work at the time. But today you can very well imagine that it would actually work. And there was, for example, as a trademark, the scent of freshly cut grass. That actually worked as a trademark. So many things can be a trademark, but there is a certain limit that matters. And that limit is the distinctiveness function of the trademark. That means not everything can be a trademark. Think of "Apple," for example. You can use "Apple" as a term, but you can’t register it as a trademark in the area of fruit and vegetables. That wouldn’t work. As we know very well today, though, "Apple" works perfectly well in hardware and software and has become quite established, as some would say. So the distinctiveness function is the most important thing in a trademark. Or the trademark "Fork" could also not stand for tableware, but it could very well stand for a podcast entertainment service.
Isabell: And why is trademark law such a relevant topic for sellers on eBay in particular?
Lazar: Yes, third-party trademarks are used very often. They’re used in connection with original products, of course, but also as part of advertising. Now, specifically on eBay, there’s one issue that keeps coming up, namely the sale of replacement and accessory parts from third-party manufacturers in connection with well-known brands. And with this topic, caution is actually required, because it may happen that the distinction from the original manufacturer doesn’t quite work out, and in the end a warning letter is issued. In that respect, this topic is very relevant, especially on eBay.
Isabell: Then let’s assume I’ve just used a third-party brand in my eBay shop without permission. So let’s say I’m starting, or want to start, selling accessories for "Dyson," since you just brought up that example. What’s the worst that could happen to me?
Lazar: Yes, first of all you actually have to ask yourself: Could it be that trademark use may still be allowed even without consent? That is certainly conceivable. But let’s say we have problematic trademark use, then a warning letter can be issued very quickly.
Isabell: By the brand then?
Lazar: By... exactly, by the trademark owner, especially when it comes to trademark law. And that means a cease-and-desist declaration is demanded, and this should be submitted under certain obligations. In addition, payment claims are also asserted. This often involves reimbursement of legal fees, but also claims for damages. And for that, questions like these matter: “Okay, how long did I actually use this third-party brand in my shop?” or “What profits, what revenue did I generate from it?” Those are the kinds of questions that come up in a very unpleasant warning letter.
Isabell: Can you explain again what exactly the difference is between a warning letter and a claim for damages?
Lazar: Well, damages are basically one of many claims that can be asserted through a warning letter. So you have to imagine that the warning letter itself is, in principle, even meant to help the warned party. It should be a tool to avoid any court proceedings. The warning letter itself contains various claims. That can be the claim for injunctive relief, meaning this cease-and-desist declaration. But it can also be a payment claim, such as damages or reimbursement of legal costs. That often happens with a warning letter. Important to know: a warning letter, which many people may not yet fully know, does not necessarily have to be in writing; there is actually no specific form for a warning letter. It can be issued by email and, in theory, even verbally. And unfortunately, it has the same effect. You always have to be careful because it can get expensive.
Vincent: If we now take the sellers’ perspective: you already said that all of this can happen informally. But who could actually send me such a warning letter?
Lazar: Yes, that’s a good question. And it depends a bit on which area of law we’re talking about. So think of trademark law, which is what we’re dealing with here. Then it is mainly the trademark owners, meaning the rights holders or also holders of licensing rights, exclusive licensing rights. That can also be the case in competition law, where it may involve various information obligations or a false legal notice, and so on; then it is mainly competitors and certain trade associations that also issue warning letters. In addition, there are certain organizations, called "qualified entities," such as the consumer advice center. So these are actors who could actually issue warning letters to sellers in individual cases.
Isabell: Yes, for anyone who wants to go deeper, we had an episode a while ago with an internal expert on the topic of warning letters. It was very good, and we’d add it to the show notes again if someone wants to learn more.
Vincent: Then let’s talk about the serious case. I’ve actually received a warning letter. What happens now?
Lazar: Yes, so what you absolutely must not do, and should not do, is simply submit the discussed cease-and-desist declaration as is. That means without checking it. Because these cease-and-desist agreements, that’s how one should start. And they last a long time. There is no fixed duration, and they are very broadly worded. So you must not do that. You also must not simply ignore the deadlines in a warning letter. Those are serious deadlines. Ideally, you should definitely get advice in advance to see what defense options exist in the individual case. That’s important because if we think about trademark law now, it immediately raises certain questions for us, for those of us dealing with it, that are important for a defense. For example: Is the warning party actually the rights holder? Or is someone issuing the warning who may not even have trademark rights at all? Is the attacked mark actually being used? That’s an important question, because in trademark law there is a so-called grace period, or use grace period. That means a trademark does not necessarily have to be used within five years of registration in order for the trademark to be established. That’s the basic idea. But once those five years are over, the trademark has to be used. And if it isn’t, then the trademark owner may, among other things, not be able to take action against third parties based on that trademark. So that also needs to be checked. Of course, you should also look at the substance, at which trademark is involved: is there a risk of confusion with the sign being warned against or not? Does the warning party’s trademark actually have distinctiveness or not? So, questions upon questions. And in that respect, I can only say that for those affected, an initial consultation is definitely worthwhile in order to keep the possible consequences of a warning letter as low as possible or perhaps avoid them altogether.
Isabell: How exactly do you support in such cases at Trusted Shops?
Lazar: Exactly, so Trusted Shops offers the option of warning letter protection. And that means for the affected shops that are members of Trusted Shops and have a legal product, a warning letter is reviewed and then forwarded directly to Trusted Shops’ partner law firm, Föhlisch Rechtsanwälte, and defended from there. That means those affected have no legal fees of their own, and everything that is done, all the correspondence with a lawyer, takes place at no additional cost. That is of course a plus, because trademark law in particular involves very high amounts in dispute. And the potential warning letter costs could actually skyrocket, and that’s one thing. The other thing these packages from Trusted Shops offer are various consulting services. For example, there’s a basic legal opinion, which is very important because it’s about securing your own shop. So various things are checked to see whether a certain online presence is actually secure. That means: How are the legal texts integrated? Have they correctly become part of the contract? What about information obligations? What about the design of the checkout process? All the way to the order page, where we then know the button, namely the buy button or order button; how is it labeled? Is it correct, and so on? In other words, all of these questions are checked. And in trademark law, for example, one looks at whether certain notices of rights are used. That means, for example, the "R" in a circle that you know from trademarks. You can’t just place that anywhere, even if it looks pretty good; you have to make sure you’re not using it misleadingly, and that is also...
Isabell: The copyright symbol, right?
Lazar: Also! And in trademark law it’s the "R" in a circle, and also "TM." There is this trademark symbol. Things people know, but if you’re not quite sure, okay, can I actually use this and just slap it on my products? You should get advice on that too. Trusted Shops’ packages do that as well.
Isabell: So that means you help both before a warning letter happens, so you basically advise along the whole process, but also if a warning letter has already happened?
Lazar: Correct, and in fact prevention is the main focus, the emphasis.
Isabell: Before we hear more about the pitfalls in trademark law, we want to know from you out there: Have you ever had problems with trademark law? Tell us about your experiences! If you’re listening to us in the Spotify app, you can interact with us directly through the Q&A function in the app. Just pull the slider up from the bottom of the app and off you go. Alternatively, you’re also welcome to write to us in the eBay Community or on our Facebook page " eBay for Business Deutschland". We’re looking forward to your stories and of course your feedback on our podcast, and naturally also a like or a subscription, wherever you’re listening to us right now.
Vincent: And now let’s talk about classic pitfalls and misconceptions in trademark law. You must have experienced quite a bit during your time at Trusted Shops. What’s the classic trademark law issue?
Lazar: Yes, it often happens that people or shops use certain terms or names without thinking much about whether there might be trademark protection behind them. Because you have to imagine that one question is especially important in trademark law: am I using a term or name purely descriptively, purely decoratively, as they say? And that means unproblematic from a legal perspective. Or am I potentially committing a trademark infringement? And there are classic cases, for example, think of "Tempo" or "Flip Flops." Both are actually protected trademarks, which I wouldn’t have thought at first either, especially not with "Flip Flops," but that is the case. So if you now use the trademark to sell "flip flops," the question arises: can I say "flip flops" now or do I need to use another term? And one really has to say that a trademark can develop over time into a common term, a generic term. If that happens, the trademark potentially loses its trademark protection.
Isabell: And who decides that?
Lazar: Exactly, it’s very important to say that this only happens if the trademark owner first remains passive, meaning takes no measures at all to defend the trademark. That could then, as you mean, who decides? That could be the office, the trademark office, and then potentially also a court if it comes to proceedings. But what’s important is that this can only happen if it is actually proven that the respective trademark owners did nothing about it. And that’s difficult. So most do something. For example, "Tempo" is actually a trademark. You have to be careful when using the word in relation to things like tissues, and the same goes for "Flip Flops." That’s why many shops actually use "toe separators" instead of "flip flops" to avoid potential issues.
Vincent: Is that something that even needs to be checked from a seller’s perspective? So can you figure that out yourself?
Lazar: It’s actually hard to check directly. If you have some uncertainty or have seen that a term may potentially be problematic, it’s also a good idea to get advice. And if a potential warning letter does come, that doesn’t automatically mean it’s justified. So there are actually aspects where it really pays off to check in advance. And, for example, think of the game "Mensch ärgere Dich nicht!"—also a very general term. Of course, in private you can play it without any trouble. But if you sell a game on eBay and name the game that way, we’re back in a problematic area, because that is also a trademark that is protected. But the question is whether there is infringement in every case. What if, for example, I have a game and only refer to "Mensch ärgere Dich nicht!" and only want to say that this game is conceptually very similar to "Mensch ärgere Dich nichF"? Is that also an infringement? These are questions that need to be clarified by someone.
Vincent: What probably many people are thinking now is: How do I actually sell a branded product at all? So if I want to, how can I sell my branded drill without using the brand name, which of course I would like to use?
Lazar: Yes, legitimate, legitimate question. It’s possible! So, it is actually desirable that original products are resold. That’s called exhaustion in trademark law. So once exhaustion occurs, you may continue to distribute an original product. And in that case you can use the word mark, meaning the designation involved, the one you mentioned, for example for the machine. You are allowed to do that in relation to the listing. Caution is required with the logo, because the logo creates a different situation, namely if the logo is used not directly in the listing but somewhere else in the shop, for example in the photo or elsewhere, simply for advertising. That can be problematic again. Otherwise, however, it is allowed to sell original goods, with certain small exceptions. For example, if goods are intended exclusively for the USA for sale and then somehow end up in the EU or Germany through parallel import, for instance. Those are cases where exhaustion has not occurred. And that means, despite original goods, a trademark infringement can exist.
Isabell: But you just said that as a trademark owner I can or should think in advance about whether my trademark is protected only in Germany, only in the EU. That means if I decide to protect my trademark only in Germany and it is then sold somewhere else in the EU anyway, hasn’t the person then committed a trademark infringement?
Lazar: Yes, you mean the case where you basically have your own trademark, and it is also protected in the EU, for example. Then you can, so to speak, take action against third parties from this EU trademark who use the trademark in the EU. The problem arises if you take someone else’s trademark, for example an original product marked with a third-party trademark, but you didn’t know that this product wasn’t intended for sale in the EU at all, but actually exclusively in the USA. It looks different, it’s packaged differently, and so on. You can’t always know that. But if you sell it in the EU, then the affected trademark owner could take action based on that and potentially assert a trademark infringement. And that’s what needs to be avoided.
Vincent: I think that’s also where the term territorial principle comes in.
Lazar: Correct, yes! So that is basically the basis of the trademark. A trademark is, in itself, protected only where the application was filed. So for example, a German trademark is protected only in Germany. That’s a good point, or a good reminder, because of course it can happen that in Austria, for example, exactly the same trademark is registered that you have in Germany, but you haven’t secured an EU trademark. And then it may well be that Austrian sellers not only grab the trademark but also file it as a trademark. That’s the keyword territorial principle.
Vincent: You briefly mentioned at the beginning that there are also special cases for accessories and spare parts. What does that look like if I also want to sell accessories or spare parts for my branded drill?
Lazar: That’s a classic case, actually, especially on third-party platforms like eBay. It’s often done, and people say that this is basically permitted, because the downstream market must be protected. That means I’m actually allowed to sell accessories from original brands, but from third-party manufacturers. But here’s where it gets tricky: the use of that third-party trademark must then be necessary, and it must correspond to accepted commercial practice, as they say in trademark law. In other words, translated, it’s best to use only the word mark and not the logo. That’s really the first rule. Then you’re closer to what’s necessary. And you also have to differentiate. How do you do that? First of all with additions like, for example, "suitable for" or "compatible with." So I’m selling accessories for some original product and say they’re suitable for brand X or compatible with brand Y. The key issue is how I ensure that outside third parties, the customers, don’t get the idea that I’m somehow affiliated, commercially affiliated, with the original manufacturer. That has to be avoided. So what do you do? You should not only name the actual manufacturer, the third-party manufacturer behind it, but highlight it as much as possible, somehow make it stand out, so it becomes clear that this is a third-party product. It’s not an original product, and we as sellers have no connection, no business relationship, with the original brand. That’s how you create a distinction and, ideally in individual cases, also avoid warning letters, which we have unfortunately seen a lot of in this area.
Vincent: So, in summary, you could also say that this is significantly stricter than when selling original products, because this, let’s say, we always call it "brand affiliation" not...
Lazar: Yes, that’s correct, and the background is probably that with accessory parts that don’t come from the original product, not from the original manufacturer, strictly speaking it’s not an "original product" in the sense of the term; it is already a product that is suitable for use with an original product. And that’s why, as you say, it is somewhat stricter there, even though one should still try to remember that trademark law does have a statutory exception, namely the exception that this market must be protected, and if everything fits, it is also permitted.
Vincent: Then let’s move on to marketing. What if I want to do marketing for my shop now? For example, I want to show that certain branded products are widely available from me, or maybe that rare branded products are available from me. What do I need to pay attention to here?
Lazar: Yes, exactly that is, keyword, for example, you would simply display various logos in the footer of the shop because you know, I sell original goods, that should actually not be a problem. But it can indeed become a problem, because the European Court of Justice once determined that a trademark has various functions, and one of these functions is the so-called advertising function. That means it can very well be that if I place the logo of a certain company, a well-known company, very prominently somewhere in the footer, this could potentially exploit the so-called reputation or distinctiveness of that sign, or that I benefit from this advertising effect. If that line is crossed, one can potentially speak of a trademark infringement, even if we have to say that there are no fake products. It is often original goods. But the advertising function can still be infringed. So caution is also advised there, especially when logos are used. In general, I would recommend getting advice in advance if it’s not clear whether consent exists or not, to see whether this could be problematic at all. Maybe in the individual case it isn’t problematic. But, as one has to say all too often, it depends a bit on how the design looks and what exactly is being presented.
Isabell: That’s always our legal colleagues’ favorite answer: "It depends."
Lazar: Unfortunately, yes.
Isabell: Okay, I’d like to try to summarize everything we discussed, which was a lot of input: You said I can’t just sell any product however I want, and especially with original products caution is required. If in doubt, always clarify in advance to what extent I may already have committed a trademark infringement. Be sure to declare spare parts as such, and ideally don’t use logos of brands with which I have no relationship. Can you summarize again what small online sellers can do if they don’t have a legal department available? How can they actively protect themselves against trademark infringements?
Lazar: Yes, for example through a Trusted Shops product, that would be one option, because that includes exactly this warning letter protection option and, as you said, a lot also happens beforehand, especially in the prevention area, so that hopefully it never even comes to a warning letter in the first place. But apart from that, it is especially important to look at: Okay, am I using third-party trademarks in my shop, on my presence? If yes, which is very often the case: how am I doing it? Is it just that I sell original products and therefore need the trademark? Or am I also using it as part of advertising in various ways? If I do that, then I enter an area where, depending on the situation, I need to check in advance whether this could be an issue in my case. If yes, what can I do about it? And that’s also where it really pays off to get advice in advance. And you should also talk to the supplier, because quite often, as we discussed, there’s the issue of the distribution channel and potentially no exhaustion, and therefore infringement. The supply chain is important, and you should check with the supplier whether you can establish: Is it a supplier listed by the original manufacturer? Where exactly does the goods come from? What does the chain look like? Can it be proven that my original product actually comes from the EU and is intended for the EU? Or is it really goods intended exclusively for, say, Canada and not for the EU? Those are the kinds of questions that matter.
Isabell: Okay, and I think these are also questions that a layperson can’t just check on their own. So it’s probably really worth bringing in a legal expert before selling online, ideally to go through everything from A to Z, from the supply route to the product and all the way to: "What exactly should I write about it?"
Lazar: Experience shows that. Experience shows that in many cases it is actually more practical and saves a lot of potential effort, and nerves above all for those affected, if it is relatively clear in advance: okay, I’m allowed to do this and that, but not that, better not, and then I potentially save myself high legal fees, possible claims for damages, and so on. In most cases that can actually be avoided.
Isabell: Is there any way I can find out for myself whether a term I use is trademark-protected?
Lazar: Yes, there is. You can actually look up the so-called trademark registers fairly freely. That means specific terms can be checked through the DPMA register. In Germany, for example, that’s the German Patent and Trade Mark Office, and it’s freely accessible. And via a link, you can do a so-called identity search there. So if I want to establish my own trademark, it definitely makes sense to at least check in advance: are there others who may already have thought of taking and filing exactly this sign? There are even similarity searches, which go a step further and are not done by yourself but by specialized companies. The idea is to discover whether there are already similar signs that could be problematic and from which attacks could arise.
Isabell: But that would again mean external help from me, basically?
Lazar: Unfortunately, yes.
Vincent: Yes, we’ll of course also link the DPMA in the show notes. We always end our podcast episodes with the final question: Lazar, what was the last thing you bought?
Lazar: Actually, it was a small toy, I think, for a boy we visited for his birthday. And that, what exactly was it? It was some little game, but not "Mensch ärgere Dich nicht," mind you; it was a game, I don’t even remember which one anymore, but yes, and it was well received, definitely, and inexpensive and without any trademark issues.
Vincent: Yes, that’s great!
Isabell: You probably pay extra attention to that when buying, too.
Lazar: Yes, you’re a bit pre-damaged, you have to see it that way.
Vincent: Yes, thank you very much, Lazar. That was incredibly informative. And I think our sellers got a very comprehensive picture of what trademark law is and why it’s so relevant in online selling and why you shouldn’t get into trouble here. And for anyone who needs more information, our show notes will contain all the essential information and links we discussed today. And anyone else who needs help should get in touch with Lazar.
Lazar: Feel free to get in touch!
Vincent: Lazar, thank you very much for being here.
Lazar: Many thanks to you too!
Isabell: Thanks as well!
Lazar: Important to know: A warning letter, which many people may not yet fully know, does not necessarily have to be in writing. So there is actually no specific form for a warning letter. It can be issued by email and, in theory, even verbally. And unfortunately, it has the same effect. You always have to be careful because it can get expensive.
Vincent: Welcome to another episode of "Alles top. Gerne wieder!" - the eBay podcast about commerce and e-commerce. I’m Vincent Rek, your host for today’s episode, and next to me is my dear co-host, Isabell Buttewegge. As you already heard in the intro, today we’re dealing with a topic that’s hugely relevant to you: trademark law. How can you avoid trademark infringements? And what do you need to do to properly protect your online shop otherwise?
Isabell: Yes, that’s exactly what we’ll be clarifying today, and for that we invited an expert: Lazar Slavov. Lazar is Senior Legal Consultant at our partner Trusted Shops and specializes in trademark law. And he’s also a lawyer at Trusted Shops’ partner law firm: Föhlisch Rechtsanwälte. Föhlisch Rechtsanwälte offer tailored legal solutions and legal advice in e-commerce. Hi and welcome to the studio, Lazar!
Lazar: Yes, thank you very much! I’m really happy to be here and to talk with you about this exciting topic.
Isabell: We’re also very happy you’re here today. And before we dive into the topic, could you explain what exactly you do at Trusted Shops for online sellers?
Lazar: Yes, of course! Trusted Shops is mainly known to most people for its certification services, meaning above all the trust seal that many shops know. But our unit "Legal Services", where I also work, has been offering various legal consulting services related to e-commerce for almost ten years now, to be precise exactly ten years. And this especially includes warning letter protection, because unfortunately the issue of warning letters is still a major nuisance for those affected, which is why warning letter protection is so important. Trusted Shops is eBay’s partner in this area and also in the area of legal certainty in e-commerce, but above all in warning letter protection.
Vincent: Can you tell us a bit more about the service packages "Abmahnschutz Basic" and "Datenschutz 360"? That’s basically where you’re involved with us.
Lazar: Yes, gladly. So the "Basic" package primarily includes legal texts, meaning sellers can obtain the texts they need free of charge: terms and conditions, privacy policy, and so on. It also includes various services in the area of data protection. That means various things that are important under the General Data Protection Regulation and where sellers need to be covered so that no authorities come knocking and potentially cause problems.
Isabell: That’s also the package that sellers get from us with a shop subscription, right?
Lazar: That’s correct. So everyone on eBay who sells on eBay benefits from this package at no additional cost and still has these services, and above all the warning letter protection service, and is then a bit better protected, or significantly better protected, when it comes to annoying warning letters.
Vincent: As always, we’ll of course link more information about that in the show notes. Lazar: Very briefly, what is trademark law, actually?
Lazar: Yes, so a trademark protects product identifiers for goods and services for the purpose of distinction. That’s basically the technical side. But a trademark is of course much more than just a means of distinction. Many talk about a communication symbol with its own personality, one that conveys not only information but also feelings. And from a legal perspective, one would say that a trademark is linked to an exclusive right. That means the right to prohibit third parties from using similar or identical signs for similar or identical products in business. Now, creating a trademark requires a certain filing process. This filing process is a bit of bureaucracy, but it’s important, and before filing, a prospective trademark owner should ask themselves a few questions. For example: What are my products, actually? Where exactly do I want to position myself? What does my "corporate identity" look like? So what should my company’s brand look like exactly? And also very important: Where do I want to position myself? Which market? Is it only Germany? Is it the EU? Or potentially also a third country outside the EU? All of these are questions that are important before filing for a trademark, and of course, last but not least, the process takes around two to three months until the trademark is actually registered and thus enjoys protection. Although protection begins as soon as the application is filed.
Isabell: You just said that a trademark is basically a means of communication for personality, which I think is a very beautiful expression. What different types are there?
Lazar: Yes, that’s a good question. In fact, a trademark can be any conceivable sign. Think of letters, words, images, 3D designs, and much more. There are also, for example, sound marks, and even scent marks. For example, one could consider the well-known film production company...
Vincent: "Metro-Goldwyn-Mayer," you mean?
Lazar: "Metro-Goldwyn-Mayer," exactly! They’re known for trying to register a sound mark, specifically the roar of a lion. So the roar of a lion was supposed to be protected as a trademark. It didn’t work at the time. But today you can very well imagine that it would actually work. And there was, for example, as a trademark, the scent of freshly cut grass. That actually worked as a trademark. So many things can be a trademark, but there is a certain limit that matters. And that limit is the distinctiveness function of the trademark. That means not everything can be a trademark. Think of "Apple," for example. You can use "Apple" as a term, but you can’t register it as a trademark in the area of fruit and vegetables. That wouldn’t work. As we know very well today, though, "Apple" works perfectly well in hardware and software and has become quite established, as some would say. So the distinctiveness function is the most important thing in a trademark. Or the trademark "Fork" could also not stand for tableware, but it could very well stand for a podcast entertainment service.
Isabell: And why is trademark law such a relevant topic for sellers on eBay in particular?
Lazar: Yes, third-party trademarks are used very often. They’re used in connection with original products, of course, but also as part of advertising. Now, specifically on eBay, there’s one issue that keeps coming up, namely the sale of replacement and accessory parts from third-party manufacturers in connection with well-known brands. And with this topic, caution is actually required, because it may happen that the distinction from the original manufacturer doesn’t quite work out, and in the end a warning letter is issued. In that respect, this topic is very relevant, especially on eBay.
Isabell: Then let’s assume I’ve just used a third-party brand in my eBay shop without permission. So let’s say I’m starting, or want to start, selling accessories for "Dyson," since you just brought up that example. What’s the worst that could happen to me?
Lazar: Yes, first of all you actually have to ask yourself: Could it be that trademark use may still be allowed even without consent? That is certainly conceivable. But let’s say we have problematic trademark use, then a warning letter can be issued very quickly.
Isabell: By the brand then?
Lazar: By... exactly, by the trademark owner, especially when it comes to trademark law. And that means a cease-and-desist declaration is demanded, and this should be submitted under certain obligations. In addition, payment claims are also asserted. This often involves reimbursement of legal fees, but also claims for damages. And for that, questions like these matter: “Okay, how long did I actually use this third-party brand in my shop?” or “What profits, what revenue did I generate from it?” Those are the kinds of questions that come up in a very unpleasant warning letter.
Isabell: Can you explain again what exactly the difference is between a warning letter and a claim for damages?
Lazar: Well, damages are basically one of many claims that can be asserted through a warning letter. So you have to imagine that the warning letter itself is, in principle, even meant to help the warned party. It should be a tool to avoid any court proceedings. The warning letter itself contains various claims. That can be the claim for injunctive relief, meaning this cease-and-desist declaration. But it can also be a payment claim, such as damages or reimbursement of legal costs. That often happens with a warning letter. Important to know: a warning letter, which many people may not yet fully know, does not necessarily have to be in writing; there is actually no specific form for a warning letter. It can be issued by email and, in theory, even verbally. And unfortunately, it has the same effect. You always have to be careful because it can get expensive.
Vincent: If we now take the sellers’ perspective: you already said that all of this can happen informally. But who could actually send me such a warning letter?
Lazar: Yes, that’s a good question. And it depends a bit on which area of law we’re talking about. So think of trademark law, which is what we’re dealing with here. Then it is mainly the trademark owners, meaning the rights holders or also holders of licensing rights, exclusive licensing rights. That can also be the case in competition law, where it may involve various information obligations or a false legal notice, and so on; then it is mainly competitors and certain trade associations that also issue warning letters. In addition, there are certain organizations, called "qualified entities," such as the consumer advice center. So these are actors who could actually issue warning letters to sellers in individual cases.
Isabell: Yes, for anyone who wants to go deeper, we had an episode a while ago with an internal expert on the topic of warning letters. It was very good, and we’d add it to the show notes again if someone wants to learn more.
Vincent: Then let’s talk about the serious case. I’ve actually received a warning letter. What happens now?
Lazar: Yes, so what you absolutely must not do, and should not do, is simply submit the discussed cease-and-desist declaration as is. That means without checking it. Because these cease-and-desist agreements, that’s how one should start. And they last a long time. There is no fixed duration, and they are very broadly worded. So you must not do that. You also must not simply ignore the deadlines in a warning letter. Those are serious deadlines. Ideally, you should definitely get advice in advance to see what defense options exist in the individual case. That’s important because if we think about trademark law now, it immediately raises certain questions for us, for those of us dealing with it, that are important for a defense. For example: Is the warning party actually the rights holder? Or is someone issuing the warning who may not even have trademark rights at all? Is the attacked mark actually being used? That’s an important question, because in trademark law there is a so-called grace period, or use grace period. That means a trademark does not necessarily have to be used within five years of registration in order for the trademark to be established. That’s the basic idea. But once those five years are over, the trademark has to be used. And if it isn’t, then the trademark owner may, among other things, not be able to take action against third parties based on that trademark. So that also needs to be checked. Of course, you should also look at the substance, at which trademark is involved: is there a risk of confusion with the sign being warned against or not? Does the warning party’s trademark actually have distinctiveness or not? So, questions upon questions. And in that respect, I can only say that for those affected, an initial consultation is definitely worthwhile in order to keep the possible consequences of a warning letter as low as possible or perhaps avoid them altogether.
Isabell: How exactly do you support in such cases at Trusted Shops?
Lazar: Exactly, so Trusted Shops offers the option of warning letter protection. And that means for the affected shops that are members of Trusted Shops and have a legal product, a warning letter is reviewed and then forwarded directly to Trusted Shops’ partner law firm, Föhlisch Rechtsanwälte, and defended from there. That means those affected have no legal fees of their own, and everything that is done, all the correspondence with a lawyer, takes place at no additional cost. That is of course a plus, because trademark law in particular involves very high amounts in dispute. And the potential warning letter costs could actually skyrocket, and that’s one thing. The other thing these packages from Trusted Shops offer are various consulting services. For example, there’s a basic legal opinion, which is very important because it’s about securing your own shop. So various things are checked to see whether a certain online presence is actually secure. That means: How are the legal texts integrated? Have they correctly become part of the contract? What about information obligations? What about the design of the checkout process? All the way to the order page, where we then know the button, namely the buy button or order button; how is it labeled? Is it correct, and so on? In other words, all of these questions are checked. And in trademark law, for example, one looks at whether certain notices of rights are used. That means, for example, the "R" in a circle that you know from trademarks. You can’t just place that anywhere, even if it looks pretty good; you have to make sure you’re not using it misleadingly, and that is also...
Isabell: The copyright symbol, right?
Lazar: Also! And in trademark law it’s the "R" in a circle, and also "TM." There is this trademark symbol. Things people know, but if you’re not quite sure, okay, can I actually use this and just slap it on my products? You should get advice on that too. Trusted Shops’ packages do that as well.
Isabell: So that means you help both before a warning letter happens, so you basically advise along the whole process, but also if a warning letter has already happened?
Lazar: Correct, and in fact prevention is the main focus, the emphasis.
Isabell: Before we hear more about the pitfalls in trademark law, we want to know from you out there: Have you ever had problems with trademark law? Tell us about your experiences! If you’re listening to us in the Spotify app, you can interact with us directly through the Q&A function in the app. Just pull the slider up from the bottom of the app and off you go. Alternatively, you’re also welcome to write to us in the eBay Community or on our Facebook page " eBay for Business Deutschland". We’re looking forward to your stories and of course your feedback on our podcast, and naturally also a like or a subscription, wherever you’re listening to us right now.
Vincent: And now let’s talk about classic pitfalls and misconceptions in trademark law. You must have experienced quite a bit during your time at Trusted Shops. What’s the classic trademark law issue?
Lazar: Yes, it often happens that people or shops use certain terms or names without thinking much about whether there might be trademark protection behind them. Because you have to imagine that one question is especially important in trademark law: am I using a term or name purely descriptively, purely decoratively, as they say? And that means unproblematic from a legal perspective. Or am I potentially committing a trademark infringement? And there are classic cases, for example, think of "Tempo" or "Flip Flops." Both are actually protected trademarks, which I wouldn’t have thought at first either, especially not with "Flip Flops," but that is the case. So if you now use the trademark to sell "flip flops," the question arises: can I say "flip flops" now or do I need to use another term? And one really has to say that a trademark can develop over time into a common term, a generic term. If that happens, the trademark potentially loses its trademark protection.
Isabell: And who decides that?
Lazar: Exactly, it’s very important to say that this only happens if the trademark owner first remains passive, meaning takes no measures at all to defend the trademark. That could then, as you mean, who decides? That could be the office, the trademark office, and then potentially also a court if it comes to proceedings. But what’s important is that this can only happen if it is actually proven that the respective trademark owners did nothing about it. And that’s difficult. So most do something. For example, "Tempo" is actually a trademark. You have to be careful when using the word in relation to things like tissues, and the same goes for "Flip Flops." That’s why many shops actually use "toe separators" instead of "flip flops" to avoid potential issues.
Vincent: Is that something that even needs to be checked from a seller’s perspective? So can you figure that out yourself?
Lazar: It’s actually hard to check directly. If you have some uncertainty or have seen that a term may potentially be problematic, it’s also a good idea to get advice. And if a potential warning letter does come, that doesn’t automatically mean it’s justified. So there are actually aspects where it really pays off to check in advance. And, for example, think of the game "Mensch ärgere Dich nicht!"—also a very general term. Of course, in private you can play it without any trouble. But if you sell a game on eBay and name the game that way, we’re back in a problematic area, because that is also a trademark that is protected. But the question is whether there is infringement in every case. What if, for example, I have a game and only refer to "Mensch ärgere Dich nicht!" and only want to say that this game is conceptually very similar to "Mensch ärgere Dich nichF"? Is that also an infringement? These are questions that need to be clarified by someone.
Vincent: What probably many people are thinking now is: How do I actually sell a branded product at all? So if I want to, how can I sell my branded drill without using the brand name, which of course I would like to use?
Lazar: Yes, legitimate, legitimate question. It’s possible! So, it is actually desirable that original products are resold. That’s called exhaustion in trademark law. So once exhaustion occurs, you may continue to distribute an original product. And in that case you can use the word mark, meaning the designation involved, the one you mentioned, for example for the machine. You are allowed to do that in relation to the listing. Caution is required with the logo, because the logo creates a different situation, namely if the logo is used not directly in the listing but somewhere else in the shop, for example in the photo or elsewhere, simply for advertising. That can be problematic again. Otherwise, however, it is allowed to sell original goods, with certain small exceptions. For example, if goods are intended exclusively for the USA for sale and then somehow end up in the EU or Germany through parallel import, for instance. Those are cases where exhaustion has not occurred. And that means, despite original goods, a trademark infringement can exist.
Isabell: But you just said that as a trademark owner I can or should think in advance about whether my trademark is protected only in Germany, only in the EU. That means if I decide to protect my trademark only in Germany and it is then sold somewhere else in the EU anyway, hasn’t the person then committed a trademark infringement?
Lazar: Yes, you mean the case where you basically have your own trademark, and it is also protected in the EU, for example. Then you can, so to speak, take action against third parties from this EU trademark who use the trademark in the EU. The problem arises if you take someone else’s trademark, for example an original product marked with a third-party trademark, but you didn’t know that this product wasn’t intended for sale in the EU at all, but actually exclusively in the USA. It looks different, it’s packaged differently, and so on. You can’t always know that. But if you sell it in the EU, then the affected trademark owner could take action based on that and potentially assert a trademark infringement. And that’s what needs to be avoided.
Vincent: I think that’s also where the term territorial principle comes in.
Lazar: Correct, yes! So that is basically the basis of the trademark. A trademark is, in itself, protected only where the application was filed. So for example, a German trademark is protected only in Germany. That’s a good point, or a good reminder, because of course it can happen that in Austria, for example, exactly the same trademark is registered that you have in Germany, but you haven’t secured an EU trademark. And then it may well be that Austrian sellers not only grab the trademark but also file it as a trademark. That’s the keyword territorial principle.
Vincent: You briefly mentioned at the beginning that there are also special cases for accessories and spare parts. What does that look like if I also want to sell accessories or spare parts for my branded drill?
Lazar: That’s a classic case, actually, especially on third-party platforms like eBay. It’s often done, and people say that this is basically permitted, because the downstream market must be protected. That means I’m actually allowed to sell accessories from original brands, but from third-party manufacturers. But here’s where it gets tricky: the use of that third-party trademark must then be necessary, and it must correspond to accepted commercial practice, as they say in trademark law. In other words, translated, it’s best to use only the word mark and not the logo. That’s really the first rule. Then you’re closer to what’s necessary. And you also have to differentiate. How do you do that? First of all with additions like, for example, "suitable for" or "compatible with." So I’m selling accessories for some original product and say they’re suitable for brand X or compatible with brand Y. The key issue is how I ensure that outside third parties, the customers, don’t get the idea that I’m somehow affiliated, commercially affiliated, with the original manufacturer. That has to be avoided. So what do you do? You should not only name the actual manufacturer, the third-party manufacturer behind it, but highlight it as much as possible, somehow make it stand out, so it becomes clear that this is a third-party product. It’s not an original product, and we as sellers have no connection, no business relationship, with the original brand. That’s how you create a distinction and, ideally in individual cases, also avoid warning letters, which we have unfortunately seen a lot of in this area.
Vincent: So, in summary, you could also say that this is significantly stricter than when selling original products, because this, let’s say, we always call it "brand affiliation" not...
Lazar: Yes, that’s correct, and the background is probably that with accessory parts that don’t come from the original product, not from the original manufacturer, strictly speaking it’s not an "original product" in the sense of the term; it is already a product that is suitable for use with an original product. And that’s why, as you say, it is somewhat stricter there, even though one should still try to remember that trademark law does have a statutory exception, namely the exception that this market must be protected, and if everything fits, it is also permitted.
Vincent: Then let’s move on to marketing. What if I want to do marketing for my shop now? For example, I want to show that certain branded products are widely available from me, or maybe that rare branded products are available from me. What do I need to pay attention to here?
Lazar: Yes, exactly that is, keyword, for example, you would simply display various logos in the footer of the shop because you know, I sell original goods, that should actually not be a problem. But it can indeed become a problem, because the European Court of Justice once determined that a trademark has various functions, and one of these functions is the so-called advertising function. That means it can very well be that if I place the logo of a certain company, a well-known company, very prominently somewhere in the footer, this could potentially exploit the so-called reputation or distinctiveness of that sign, or that I benefit from this advertising effect. If that line is crossed, one can potentially speak of a trademark infringement, even if we have to say that there are no fake products. It is often original goods. But the advertising function can still be infringed. So caution is also advised there, especially when logos are used. In general, I would recommend getting advice in advance if it’s not clear whether consent exists or not, to see whether this could be problematic at all. Maybe in the individual case it isn’t problematic. But, as one has to say all too often, it depends a bit on how the design looks and what exactly is being presented.
Isabell: That’s always our legal colleagues’ favorite answer: "It depends."
Lazar: Unfortunately, yes.
Isabell: Okay, I’d like to try to summarize everything we discussed, which was a lot of input: You said I can’t just sell any product however I want, and especially with original products caution is required. If in doubt, always clarify in advance to what extent I may already have committed a trademark infringement. Be sure to declare spare parts as such, and ideally don’t use logos of brands with which I have no relationship. Can you summarize again what small online sellers can do if they don’t have a legal department available? How can they actively protect themselves against trademark infringements?
Lazar: Yes, for example through a Trusted Shops product, that would be one option, because that includes exactly this warning letter protection option and, as you said, a lot also happens beforehand, especially in the prevention area, so that hopefully it never even comes to a warning letter in the first place. But apart from that, it is especially important to look at: Okay, am I using third-party trademarks in my shop, on my presence? If yes, which is very often the case: how am I doing it? Is it just that I sell original products and therefore need the trademark? Or am I also using it as part of advertising in various ways? If I do that, then I enter an area where, depending on the situation, I need to check in advance whether this could be an issue in my case. If yes, what can I do about it? And that’s also where it really pays off to get advice in advance. And you should also talk to the supplier, because quite often, as we discussed, there’s the issue of the distribution channel and potentially no exhaustion, and therefore infringement. The supply chain is important, and you should check with the supplier whether you can establish: Is it a supplier listed by the original manufacturer? Where exactly does the goods come from? What does the chain look like? Can it be proven that my original product actually comes from the EU and is intended for the EU? Or is it really goods intended exclusively for, say, Canada and not for the EU? Those are the kinds of questions that matter.
Isabell: Okay, and I think these are also questions that a layperson can’t just check on their own. So it’s probably really worth bringing in a legal expert before selling online, ideally to go through everything from A to Z, from the supply route to the product and all the way to: "What exactly should I write about it?"
Lazar: Experience shows that. Experience shows that in many cases it is actually more practical and saves a lot of potential effort, and nerves above all for those affected, if it is relatively clear in advance: okay, I’m allowed to do this and that, but not that, better not, and then I potentially save myself high legal fees, possible claims for damages, and so on. In most cases that can actually be avoided.
Isabell: Is there any way I can find out for myself whether a term I use is trademark-protected?
Lazar: Yes, there is. You can actually look up the so-called trademark registers fairly freely. That means specific terms can be checked through the DPMA register. In Germany, for example, that’s the German Patent and Trade Mark Office, and it’s freely accessible. And via a link, you can do a so-called identity search there. So if I want to establish my own trademark, it definitely makes sense to at least check in advance: are there others who may already have thought of taking and filing exactly this sign? There are even similarity searches, which go a step further and are not done by yourself but by specialized companies. The idea is to discover whether there are already similar signs that could be problematic and from which attacks could arise.
Isabell: But that would again mean external help from me, basically?
Lazar: Unfortunately, yes.
Vincent: Yes, we’ll of course also link the DPMA in the show notes. We always end our podcast episodes with the final question: Lazar, what was the last thing you bought?
Lazar: Actually, it was a small toy, I think, for a boy we visited for his birthday. And that, what exactly was it? It was some little game, but not "Mensch ärgere Dich nicht," mind you; it was a game, I don’t even remember which one anymore, but yes, and it was well received, definitely, and inexpensive and without any trademark issues.
Vincent: Yes, that’s great!
Isabell: You probably pay extra attention to that when buying, too.
Lazar: Yes, you’re a bit pre-damaged, you have to see it that way.
Vincent: Yes, thank you very much, Lazar. That was incredibly informative. And I think our sellers got a very comprehensive picture of what trademark law is and why it’s so relevant in online selling and why you shouldn’t get into trouble here. And for anyone who needs more information, our show notes will contain all the essential information and links we discussed today. And anyone else who needs help should get in touch with Lazar.
Lazar: Feel free to get in touch!
Vincent: Lazar, thank you very much for being here.
Lazar: Many thanks to you too!
Isabell: Thanks as well!
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