27 July 2020
During these challenging coronavirus times, digital life is at its peak – with people meeting, working and learning digitally from home. Accordingly, more and more online seminars, so called ‘webinars’, are being offered.
The term ‘webinar’ has actually been protected as a national German trade mark with the registration number 30316043 since 2003. The trade mark is registered for services in classes 35, 38 and 41, including mediation of trade and business contacts, presentation of companies, providing information, platforms and portals on the internet, and organisation and implementation of seminars and conferences. In 2019, the rights on the trade mark ‘webinar’ were transferred to a new entity.
Rumours now have it that a wave of warnings based on the German trade mark ‘webinar’ is imminent.
To counter such potential threat, a total of six requests for revocation and invalidity of the trade mark ‘webinar’ have been filed during the last couple of weeks based on non-use of the trade mark by the owner and based on the requirement of availability of the term ‘webinar’, which became a generic term for web-based seminars.
Since no evidence of the use of the trade mark by the owner can be found, and since the term became generic for web-based seminars, the chances for a revocation of the mark ‘webinar’ in the pending revocation and invalidity proceedings are very high. While anyone using the term ‘webinar’ for seminars, conferences, or similar bears the risk of a warning until the decisions in this matter are final, the chances of success of such a warning are very low.
To avoid any risks, an alternative expression, such as ‘online seminar’, can be used.
Since the term is registered as a national German trade mark, the commercial use of ‘webinar’ can only be prohibited in Germany. However, all non-German providers of online seminars should be aware that, as an online service, the offer of an online seminar titled ‘webinar’ can also be directed to, accessed by or even simply noticed by users in Germany. Therefore, non-German providers should also be aware of the current situation.
No wave of warnings as the rumours predicted has happened, yet. However, should you receive a warning letter based on your use of the term ‘webinar’, do not ignore it – it could get expensive! In this case, we highly recommend contacting a trade mark attorney.
This also serves as a reminder that allowing a trade mark to become generic may render it unenforceable. If you are the owner of a trade mark and become aware of its use by a non-authorised party, we also recommend contacting a trade mark attorney to enforce your rights.
Mathys & Squire’s team of trade mark attorneys is experienced and highly qualified, not only in handling the defence against warnings and enforcement of rights, but in all trade mark related matters. Visit our trade marks page for more information.
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