In two important decisions, the European Court of Justice (ECJ) and the Federal Supreme Court (BGH) implicitly clarified that national German designs and trademarks can have considerable advantages over the Community design and the Union trademark valid throughout Europe. In the case of Union trademarks, it is in the nature of the matter that due to their Europe-wide validity, the likelihood of an opposition to registration is considerably higher than only in the case of a national German trademark, since there are many more interest groups in Europe that conflict with each other with regard to a trademark.
In the Nintendo/BigBen decision (Case C-24/16 and C-25/16), the ECJ made it clear that the national law applicable to the infringement of Union protection rights is determined by the place which, in the context of an overall assessment, is to be regarded as the actual place of the original infringement. In other words, a German court may be competent for acts of infringement within the framework of a supply chain to Germany, but the applicable law will depend on the (foreign) place of the original act of infringement. Therefore, under certain circumstances, German law may not apply here. If different parent companies and subsidiaries in different states are involved in the infringing act, the outcome of the proceedings is completely unclear and unforeseeable due to the different foreign law to be applied.
With regard to Community trade marks, the BGH found in its decision Parfummarken (I ZR 164/16) that the place of jurisdiction in tort is determined exclusively by the place of the original infringing act. Especially for a supply chain targeting Germany, this means that the international jurisdiction of German courts may not be given. Legal action must be taken at the place of the actual original infringing act, which can be difficult to determine in complicated supply chains. Although trademark infringing products may be imported into Germany, legal action must be brought against them somewhere abroad under unknown foreign law, which means that the advantages of a manageable duration of proceedings and calculable procedural costs available in Germany no longer apply.
All these disadvantages do not apply to national trademarks. The principle that German courts can rule on acts of infringement under German law still applies here. As a result, national rights are significantly more attractive in this respect than rights that apply throughout Europe.