Data Protection and Privacy

Anyone can setup a new business, a subsidiary or a branch office in Germany – there are no special requirements for foreign nationals! Especially,

·      no specific nationality or place of residence,

·      no minimum investment, or

·      no minimum percentage of German shareholding

is required.Only for the mandatory registration with the local trade office(Gewerberaufsichtsamt), a local representative is required.

Also, if you want to set up a business in Germany, you should carefully consider what legal structure to choose and how to design such structure to best meet your needs. On a very basic level, you first have to decide, whether to set up

• A Subsidiary, i.e. a new legal entity, or
• A Branch Office

Subsidiary

A subsidiary (or subsidiary company or daughter company) is a company (legal entity) predominantly owned or controlled by another company (so-called parent company or holding company), and with its own executive leadership. They can have different legal forms, which have different advantages and disadvantages:

Branch Office (Zweigniederlassung)

Instead of setting up a subsidiary,foreign companies with its headquarters and registered business activities in the U.S., can participate in the German market through a branch office (Zweigniederlassung).  In contrast to an LLC, a Branch Office, is not an independent legal entity, but a part of the U.S. company. Therefore, the head company in the U.S. is fully liable for any claims made against the branch office!

In Germany, there are different types of branch offices,that differ in their degree of independence from the head office company:

Commercial Agent (Handelsverterter)

If a U.S. company does not want to conduct business activities in Germany itself, it might consider to task by acommercial agent (Handelsverterter) with its representation.

Setting up a subsidiary or a branch office in Germany

Setting up a subsidiary or a branch office is straight forward, but can be time-consuming. You find more on this here:

• Setting up a limited liability company
• Setting up a branch office

Start-Up Financing

more soon …

Setting up and incorporating a limited liability company (GmbH) is straight forward, but can be time-consuming:

Setting up a Branch Office

As Branch Office is not a legal entity on its own, distinct from the head office in the U.S., and no formation is required. Only a registration of the branch office with the commercial register (only autonomous branch offices, via a German notary public) and with the trade office (Gewerbeamt) is required.

Some notes on some very German institutions

German notaries public

Notaries are lawyers who are sworn to impartiality and are entrusted with certain public functions. Depending on where in Germany the notary is appointed, he or she practices either as a"single profession notary" or as a "lawyer-notary". The number of notaries is limited, which was intended to ensure independence and impartiality. In practice, however, this often results in long waits for an appointment.

Notarization is required, for example, for the incorporation of companies and applications for registration in the Commercial Register. Notary fees are set by law and depend on the value of the transaction. Notary fees for the incorporation of a limited liability company (LLC) depend on the value of the transaction, which is determined by the share capital and other factors.

Commercial register / Handelsregister

The commercial register is a public record maintained by local courts. Its purpose is to ensure legal certainty in commercial transactions by fully and reliably documenting the factual and legal circumstances that are of particular interest to the general public, such ascertain information on any given company. Legal transactions made in good faith and relying on the accuracy of entries and notices in the commercial register,are to a limited extent protected.

In the U.S., there is no such thing as a commercial register. In many U.S. states, the exact details of companies are not recorded at all. However, there are three documents that, in combination, give comparable information on a company: Certificate of Good Standing (a.k.a. Certificate of Existence, Certificate of Compliance or Certificate of Status), Certificate of Incumbency, and the stock ledger or list of shareholders. The Certificate of Good Standing officially confirms that a company is active and registered. The Certificate of Incumbency and the list of shareholder, both issued by a company itself, contains detailed information about the company and on the acquisition and transfer of shares in the company.Comparable to Germany, in the U.K., Companies House is a government body, that stores information on all limited companies and limited liability partnerships registered in the UK.

Trade Office / Gewerbeamt

The Trade Office is a local authority with which anyone wishing to engage in business in Germany must register. For this purpose, a business is any long-term, self-employed activity with the intention of making a profit, with the exception of independent professions (e.g. lawyers, doctors, architects, pharmacists, etc.) and activities in agriculture and forestry. After the professional suitability and legal requirements have been checked, the business is registered in the Trade Register by the Trade Office.

Chamber of Commerce and Industry (CCI) / Industrie-und Handelskammer (IHK)

Chambers of Commerce and Industry are regionally organized, cross-industry bodies for the self-representation of the economic and political interests of entrepreneurs and commercial enterprises. Membership in the local Chamber of Industry and Commerce (IHK) is compulsory for all companies that have their registered office or a permanent branch in the municipality and are subject to trade tax. In other words, any business that is subject to business tax is automatically a member of its local IHK (and must pay a small membership fee). There's no need to fill out an application form, and it's not possible to resign from the CCI. Craftsmen are not members of the CCI, but belong to the similar Chamber of Crafts.

To ensure the protection of your Intellectual Property, it is advisable to register your IP rights in a timely manner in all markets where you intend to conduct business. Please note that your U.S. filings and registrations of trademarks, design rights, patents, and other IP rights do not automatically grant you protection in Germany or any other EU country! Therefore, registering your IP rights in Germany and the EU as soon as possible is highly recommended to safeguard your intellectual property from potential exploitation or damage by others. Furthermore, it is advisable to secure relevant domains, especially .de-domains, at an early stage, and develop a strategy top protect P-sights such as copyrights and trade secrets, which cannot be registered.

To ensure the protection of your intellectual property, it is advisable to register your IP-rights in a timely manner in all markets in which you intend to do business. Please note that your U.S. applications and registrations of trademarks, designs, patents and other IP-rights do not automatically grant you protection in Germany or any other EU country! Therefore, it is highly recommended that you register your IP-rights in Germany and the EU as soon as possible to protect your intellectual property from potential exploitation or infringement by others. It is also advisable to secure relevant domains, especially .de-domains, early and to develop a strategy to protect IP-rights such as copyrights and trade secrets, which cannot be registered.

Trademarks & Domains

Trademarks typically identify a company's goods and services, as well as the company itself. They are an important part of a company's intellectual property, just like patents,designs, copyrights, and trade secrets. Strong, registered trademarks are highly valuable assets that protect your company's brand identity, corporate identity, and good-will!

Any sign that is capable of distinguishing the goods and/or services of one company from those of another can be protected as a trademark. For example, words, letters, numbers, images,colors, holograms, multimedia signs and sounds can be protected as trademarks.The most common forms in which trademarks are applied for are words (word marks) or images (figurative marks), and combinations thereof (word/figurative marks). More special forms of trademarks include three-dimensional marks(e.g.the distinctive shape of a car) and color marks (e.g. like"Sparkassen-Rot" or "Telekom-Magenta"). Companies that offer neutral certifications, such as testing institutes, can obtain trademark protection for their quality seals or test marks (so-called certification marks).

Upon registration, the trademark owner acquires the exclusive right to use the trademark for the protected good sand services and to trade in the trademark. Trademarks may be sold and transferred by their owners at any time. The owner of a trademark may also grant another person the right to use the trademark (trademark license).

A trademark can be renewed indefinitely, and thus have an eternal life. However, the trademark will be canceled if the renewal fee is not paid after each ten-year period.

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Trademarks – National, European or even international?

The good news first: Registering and protecting your trademarks throughout all 27 EU member states can be achieved with just one application and registration at the European Union Intellectual Property Office (EUIPO), whereas registering a national trademark at the German Trademark authority DPMA (Deutsches Patent- und Markenamt) only provides protection in the Federal Republic of Germany.

Registering a Trademark

Trademark protection arises from the registration of a trademark application in the register of the DPMA (national German Trademark) or the EUIPO (EU-Trademark / EUTM), which is a straightforward process.

However, in order to ensure a timely registration, the trademark should be examined in advance for grounds for refusal, such as lack of distinctiveness or use of descriptive terms that must remain freely available for general use.

Most importantly, in order to avoid infringement of older national, EU and international trademarks, trade names,business names, etc. of third parties, a thorough collision search for potentially conflicting older trademarks must be carried out prior to filing the application, and a risk assessment based thereon must be performed. Failure to do so can result in time-consuming and very costly opposition proceedings and carries a high risk of receiving costly cease and desist letters. In the worst case scenario, all the investment made in the specific trademark and the development of your brand to date will be at risk.

To file a trademark application, it is necessary to determine the classes of goods and services and to prepare a detailed, precise list of the goods and services for which the trademark will be used. This includes all goods and services that you already offer or plan to offer directly in Germany and the EU, as well as those goods and services, that will likely be offered within the next 5 years (period of the so-called grace period for use). In order to ensure a quick processing of a trademark application, the use of non-specific, imprecise terms for goods and services must be avoided.

According to the principle of priority, the filing date (not the date of publication or registration of t the trademark) marks the so-called priority date: Any later filing of an identical or similar trademark for identical or similar goods and services, most likely constitutes a trademark infringement.

Compulsory use and protection of trademarks

After your trademark is registered,to maintain the long-term protection of your trademark, you have to consider the following

• You must use your mark in commerce for all the goods and services claimed in order to maintain your rights in the trademark (so-called compulsory use)
• You must use the trademark in the territory of the EU, however, it is sufficient to use it in a substantial part of the EU to obtain the EU trademark. It may be sufficient to use it only in Germany or in German-speaking countries.

If the trademark is not used for the goods and services or territory for which it was registered for an uninterrupted period of more than five years since its filing (sp-called grace period), the trademark may be cancelled in whole or in part at the request of a third party and cannot be enforced, if the use of the trademark is disputed in opposition proceedings or court proceedings.

Also, to obtain your trademark, you must enforce and defend it against illegal uses by third parties. During the 3-month opposition period of a new trademark application, you can file an opposition against newly registered trademarks with the EUIPO. Based on an EUTM, you can file an opposition against newly registered EUTMs as well as national trademarks of all EU member states. If there is a likelihood of confusion between your trademark and the newly registered trademark, the registration of the later trademark will be cancelled (possibly partially). This assessment takes into account not only the similarity of the signs, but also the similarity of the conflicting goods or services and the degree of distinctiveness of the opposing mark.

Often, opposition proceedings can be resolved amicably by agreement between the parties (cooling-off). For example, the owner of the later mark may limit the list of goods and services or agree to use the mark only for certain products or in a certain form.

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Securing domains

Always remember to register the .de domain(s) and other EU domain(s) for your trademark in time! The general rule in domain law is "first come, first served", so you should hurry up and secure domains relevant to you, especially all relevant .de-domains! It is recommended that you conduct a trademark search before selecting and using a particular domain, as the use of a domain may infringe the trademarks of third parties.

If your desired domain has already been registered by a third party who is not willing to release the domain or is only willing to release it against a (disproportionately high) payment (e.g. in the case of so-called "domain grabbing"), you may be able to force the release of a domain held by a third party based on a registered trade mark or a right to a certain name (personal name, company name).

DENIC, the central registry for all domains under the country code .de, can help in such cases by placing a DISPUTE entry on the domain. A domain with a DISPUTE entry can still be used by its holder, but it cannot be transferred to anyone else, and the holder of the DISPUTE entry automatically becomes the new domain holder when the domain is released. In order for DENIC to place a DISPUTE entry on a domain, the claimant must provide DENIC with evidence that he or she might have a better right to the domain and must also take steps to enforce his or her rights against the domain holder.

Trademarks at a glance

Our Trademark-Services

With our services in the areas of trademark law and intellectual property law, we support you in registering your trademarks quickly and effectively:

1. Examination of the distinctiveness and protectability of your trademarks and signs
2. Comprehensive collision research and risk assessment
3. Creation of individual lists of goods and services for your trademarks and signs
4. Registration, administration and comprehensive monitoring of national trademarks and signs at the German Patent and Trademark Office DPMA, of European EU trademarks at the EU Intellectual Property Office EUIPO, and of international IR trademarks
5. Responding to requests for authorization and oppositions; negotiating and drafting delimitation agreements and NDAs/confidentiality agreements, as well as license agreements
6. Securing and claiming domains, and filing of dispute entries with DENIC

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Registered Designs

Today, modern design plays a significant role in the purchase decision and thus the commercial success of a product. With few functional differences between different consumer product sand shorter product life cycles, a product's appearance is often the only distinguishing of a product is often the only distinguishing feature perceived by the consumer.

What can be registered as a design?

The two- or three-dimensional appearance of the whole or a part of any industrial or handicraft product or item can be registered as a design, such as clothing, furniture, vehicles,fabrics, decorative objects, or graphic symbols, and including packaging,get-up, graphic symbols and typographic typefaces, as well as parts intended to be assembled into a complex product or the sole of a sports shoe or the cap of a writing instrument. Relevant product features are lines, contours, colors, shapes, textures, patterns, and materials.

A design must be individual and new at the time of filing, i.e.

• The overall impression of the design must be  different from that of any existing design.
• No design which is identical to the design  applied for or which differs only in detail from the design applied for has been published, exhibited or otherwise put on the market before the design application

What protection is provided by a registered design?

If you are the owner of a registered design, you have the exclusive right to use the design (monopoly right to prevent any use by others). That means

• You can take action against any design that produces the same overall impression on the informed user as your registered design. The degree of freedom of the designer in developing a design is taken into account when assessing the scope of protection.
• No one may use your registered design without your consent. In particular, no third party may make, offer, put on the market, import, export, use or possess the design. It does not matter whether the infringer had knowledge of the registered design or not.

Protection is obtained when the design is entered in the design register maintained by the EUIPO (Europe-wide Community Design) or the DPMA (for the territory of Germany only) for up to 25years from the filing date.

Design protection in additional countries can be obtained through an international design registration with the World Intellectual Property Organization (WIPO) under the Hague system (various acts) with several states, including Switzerland, Turkey and the EU, but not the U.S., the U.K. and Japan. Protection is not automatically granted in the member states you designate in your application.

How to register a design?

Any individual or company can apply for a registered design. The application (online or in writing) must include

• Up to ten color or black and white photographic or any other graphic representation(s), such as a line drawing(s), of the design, which must be suitable for publication. These illustration(s) must clearly and completely disclose the subject matter for which design protection is sought, and
• A list of the products which the design is applied to.

The graphic representation of the design is essential because it determines the scope and subject matter of protection: Protection is limited to the visible features of the design as depicted, i.e. only those features that are clearly visible in the depiction are protected! It is therefore in your own interest to ensure that the features of the design that you consider worthy of protection are clearly visible in the illustrations. The illustration may be accompanied by an explanatory description of max. 100 words.

When you file a design application,you can request a deferment of publication of your design. This can be useful if you want to see if the product is accepted in the market or if you want to keep the design secret for the time being.

‍Patents

Commercially successful technical inventions are often copied or imitated, from everyday objects to sophisticated high-tech products. Patents can be used to protect your technical inventions(products or processes) from unwanted copying and exploitation by third parties.

However, patent protection for products or processes is a very complex process, and not easy to obtain. This is why we work with highly qualified specialist patent attorneys in this area.For patent matters, namely the registration and management of international patent portfolios, we work closely with the specialized patent law firm Müller Verweyen Patentanwälte Partnerschaft mbB in Hamburg, They offer the following services:

• Analysis, application, registration and defense of German, European and international patents
• Searches for and advice on competitor IP rights; IP situation analyses; infringement opinions
• Conducting opposition, cancellation and nullity proceedings
• Handling employee inventions for companies
• Drafting and advising on license, usage and know-how agreements

Copyright

Copyright, sometimes called author's right in continental Europe, is a legal concept used to describe the rights that creators have over their literary or other artistic or creative works (as opposed to technical inventions, which are mostly protected by patents).

Copyright-protected Works

Copyright law protects only "the expression of an idea, but not the idea itself" (so-calledidea-expression dichotomy). If sufficiently creative, protected works in the literary, artistic fields and also in the scientific and technical field include

• literary works, such as written works, speeches and computer programs;
• musical works, pantomimic works, including works of dance;
• artistic works, including works of architecture and of applied art and drafts of such works;
• photographic works, including works produced by processes similar to photography;
• cinematographic works, including works produced by processes similar to cinematography;
• illustrations of a scientific or technical nature, such as drawings, plans, maps, sketches, tables and three-dimensional representations.

No registration required

In Germany and other EU member states, copyright protection is obtained automatically by simply creating the work; you don't have to go through any formal process. This means that you do not have to register or label your work. However, a sufficiently clear designation as an author gives rise to a presumption that the named person is in fact the creator of the designated work. A copyright notice such as "© 2024 Max Mustermann" or "all rights reserved..." is therefore highly recommended.

Some countries (but not Germany)also have a system that allows voluntary registration of works (similar to the U.S.), in other countries (such as Germany) specialized service providers(often lawyers or notaries), which can be useful to prove your work's existence at a given time.

Rights reserved

The owner of a copyright in a work has the exclusive economic right to authorize or prohibit certain uses with respect to the work or, in some cases, to receive compensation for the use of his or her work (in part through collective management by collecting societies such as, in Germany, GEMA for musical works, VG Wort for literary works, and VGBild-Kunst for photography, etc.). Uses that the holder of the economic rights in a work may prohibit or permit (license) include

• its reproduction in various forms, such as printed publications or sound recordings
• Its public performance, such as in a play or musical work;
• its fixation, for example in the form of compact discs or DVDs;
• its broadcast, such as by radio, cable, or satellite;
• its translation into other languages; and
• its adaptation, such as a novel into a film script.

In all EU countries, copyright protects your intellectual property for 70 years after your death, or 70 years after the death of the last surviving author in the case of a joint work. After that, works are in the public domain and can be freely used by anyone.

Transfer of Rights and Licenses

While in Germany the copyright itself cannot be transferred or licensed to others (it remains with the creator of the work until his or her death), the economic rights in a work can be transferred or licensed to any third party, such as a publishing house. I.e.,the author may grant another person the right to use the work in a certain way or in any ways, one can think of (license, right of use). Such license may be granted as a non-exclusive right or as an exclusive right and it may be limited in terms of place, time or content.

In Germany and other EU member states, copyright gives authors a very strong legal position when transferring or licensing the rights to a work to others, which in theory also gives them a strong bargaining position vis-à-vis all users of their work, including publishers, film producers, TV stations and streaming services, online platforms, etc.

According to the law, when the rights to a work are transferred or licensed, the author is entitled to the

• the author is entitled to the contractually agreed remuneration, and if the agreed remuneration is not equitable, he or she is entitled to the (higher) equitable remuneration
• In the case of a so-called bestseller, the author is entitled to a further equitable (fair) remuneration appropriate to the circumstances (regardless of whether the parties to the agreement foresaw or could have foreseen the bestseller status achieved).

Protection of Design Works

The copyright protection of works of applied art, such as industrial design, product design and communication design, overlaps to some extent with the possible protection of a design right for such products and with trademark-protection. However, copyright protection often is more extensive, and a work of applied art does not have to be registered or marked in any way in order to obtain copyright protection.

Even seemingly simple"everyday" works such as technical texts (e.g., manuals, legal briefs, sketches, etc.) and music (e.g., advertising jingles and ring tones,which can also be registered as trademarks) may enjoy copyright protection, if they are sufficiently creative.

Protection of Software, Multimedia Works and Computer Games

Other types of works also enjoy copyright protection, such as multimedia works and computer games, whose program code is protected as software, but for which the story (plot,characters, etc.), film scenes, individual images, musical elements, etc. may also enjoy copyright protection.

more soon ...

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Copyright at a glance

A Note on Artificial Intelligence

Protection of the output of generative A-.I.-Systems

Only works that have been created by a human being (referred to as the author) in a creative way, are protected by copyright. This means that monkeys that take selfies do not receive copyright protection (you might have heard of that case!).

Also, works generated solely by A.I. are not human creations and are, in principle, not protected by copyright.However, oftentimes the "output" of A.I.-systems is of very high economic value and of great importance to companies. In order to achieve adequate protection, strategies need to be developed that take into account the protection of the output under competition law and the protection of trade secrets.

What about A.I.- ACT?

In the words of the European Commission, the "AI Act is the first-ever legal framework on AI, which addresses the risks of AI and positions Europe to play a leading role globally." It aims to provide AI developers and deployers with clear requirements and obligations regarding specific uses of AI. At the same time,the regulation seeks to reduce administrative and financial burdens for business, in particular small and medium-sized enterprises (SMEs). The A.I. Act ensures that Europeans can trust what A.I. has to offer. While most A.I.systems pose limited to no risk and can contribute to solving many societal challenges, certain A.I. systems create risks that we must address to avoid undesirable outcomes. Although existing legislation provides some protection,it is considered to be insufficient to address the specific challenges A.I.systems may bring.

The A.I. Act has just been passed by the European Parliament and is expected to take effect in May 2024.Businesses that rely on A.I. or use A.I. tools should start learning about the new rules now. Bans on certain prohibited AI practices will not apply until 6months after the law comes into force, in Nov 2024. The rules on generative A.I. models will apply after 12 months, in May 2025, and the obligations forhigh-risk A.I. systems such as medical devices will apply after 3 years, in May2027.

more soon …

Trade secrets

Trade secrets are also protected bylaw, in Germany by the relatively new Trade Secrets Act (Gesetz zum Schutz von Geschäftsgeheimnissen, GeschGehG). Protecting a trade secret can be combined with protecting other types of intellectual property, like a patent, copyright in software etc., or a trademark

What are Trade Secrets?

A Trade Secret is defined as an information(such as a formula, pattern, compilation, program device, method,technique, business strategies and plans, research data, or process), which is

• not generally known or readily accessible ...to persons … that normally deal with this type of information,
• therefore of commercial value, and
• protected by reasonable efforts to maintain its secrecy from others, and
• for which there is a legitimate interest in confidentiality.

The party seeking trade secret protection must have made reasonable efforts under the circumstances to maintain the secrecy of the information. Courts evaluating whether a company has taken reasonable steps to maintain secrecy are likely to consider procedures and policies designed to protect the information from outside access and from wrongful acquisition, misuse, or disclosure by employees.

Protecting Trade Secrets (and IP) – Best Practices

Trade secrets (only) last as long as the commercially valuable information remains confidential and is protected by reasonable measures to keep it secret.

To help keep information confidential, knowledge of trade secrets should be limited to those who have a"need to know". Anyone with access to trade secret information (e.g.,employees, contractors, vendors, and business partners) should be prohibited from disclosing the information to others.

• Employers should enforce this requirement through amendments in the employment contracts accordingly (e.g. employee confidentiality and proprietary rights agreements, employee non-compete agreements)
• Independent contractors and consultants should be required to sign NDAs ( non-disclosure agreements, independent contractor/consultant agreements, etc.).

An NDA is a contract in which the parties agree to maintain the confidentiality of any confidential information disclosed to them. The agreement creates a confidential relationship. The NDAcan be mutual, with both parties exchanging secrets, or it can be a one-way agreement, such as when you disclose confidential information to an employee in order to grow your business or develop a product.

One of the most effective ways to protect your intellectual property is by registering trademarks, designs, patents and any other IP-rights. By obtaining legal protection, you can prevent others from using or imitating your intellectual property without permission.

Import of "original products" and of devices and storage media

When importing trademarked goods or products (often referred to as "original products") or products protected by copyright (e.g. movie DVDs, music recordings), a design right, a patent or any other intellectual property-right into Germany or any other EU member state, the rights of the right holders must be strictly respected. In addition, when importing devices and storage media that can be used to make copies of copyrighted works such as films and videos, musical works, images and photographs, and texts of any kind, copyright levies may have to be paid to the national collecting societies represented in Germany by the ZPÜ.

What is "exhaustion" in the context of trademarks and other IP-rights?

When importing original, trademarked goods or products, that are subject to copyright protection (e.g. movie DVDs, music recordings), a design-right, a patent, or any other IP-right, to Germany or any another member state of EU or European Economic Area (EEA), a distinction must be made according to where these products were acquired: in another member state of the EU or in a so-called third country like the U.S., Canada, Mexico or any South American as well as Asian Country.

In principle, it is up to the trademark owner or rights owner to decide where and how trademarked goods or otherwise protected goods are put on the market in the EU or the EEA. However, under EU law, an IP-right is "exhausted" when trademarked goods, or products protected by any other IP-right are first placed in a particular market like the EU/EEA by the owner of the trademark or IP-right, or with his consent. These products can then be legally re-distributed in that market (e.g. the EU or EEA) by anyone (some restrictions still apply), and the rights owner can no longer prohibit the use of the trademark or other IP-right in these goods – his resale rights are "exhausted". The same applies to copyright and all other intellectual property rights.

This principle of exhaustion plays an important role in trademark infringement by the distribution of original goods. The principle of exhaustion allows there sale of trademarked goods under certain conditions. Advertising with the trademark for these goods is then also permitted. However, if the conditions of exhaustion are not met, even the offering of "original goods" in the EU or EEA can infringe trademark rights and other IP-rights!

Trade secrets are also protected bylaw, in Germany by the relatively new Trade Secrets Act (Gesetz zum Schutz von Geschäftsgeheimnissen, GeschGehG). Protecting a trade secret can be combined with protecting other types of intellectual property, like a patent, copyright in software etc., or a trademark

What does "put on the market" mean?

Underthe principle of exhaustion, the relevant market is the entire territory of theEU and European Economic Area (EEA). This means that if a branded product hasbeen placed on the market in any EU Member State by the trademark owner, orwith his consent, this is considered as a placing on the market in the entireEU and EEA. i.e., exhaustion has then occurred in the entire territory of theEU and EEA.

Theterm "placing on the market" refers to the first sale. If thetrademarked products have been sold for the first time in the EU or the EEA bythe trademark owner or with his consent, these products can be resold byanyone, largely without restrictions.  

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Are there any exemptions? What about luxury goods?

Exhaustion can only occur for physical products, not for services. In addition, exhaustion only applies to those tangible goods (pieces) placed on the market in the EU or EEA by rights-owner, or with his consent.

Exhaustion of the trademark rights does not occur if "legitimate reasons"justify that the owner opposes further marketing of the goods, in particular if the condition of the goods has changed or deteriorated after they have been put on the market, Art. 15 (2) UMV or Art. 24 (2) MarkenG.

Exhaustion of the trademark rights does not occur, if the owner of a trademark opposes there sale of the trademarked products or any other use of the trademark for a"legitimate reason", in particular where the condition of the trademarked goods has been changed or impaired after being put on the market.Such legitimate reasons may include, for example,

• alterations of the trademarked products
• unbundling of the trademarked products,
• and even mere repackaging.

In the case of luxury and prestige goods, such as high-quality, high-priced cosmetics or luxury textiles, German and EU courts as well as the ECJ have repeatedly held that exhaustion does not apply if the goods are presented in an inappropriate environment (e.g., if the luxury goods are presented next to and in the same way as cheap everyday goods) or through distribution channels that are unsuitable for such goods (e.g., online sales on eBay or Amazon Marketplace vs. flagship stores or boutiques).

What about contractual restrictions of resale?

Contractual restrictions imposed by the trademark owner on the buyer/reseller do not prevent the exhaustion of IP rights when the trademarked goods are put on the market by the trademark owner or with his consent, i.e. exhaustion occurs whether or not the trademark owner consents to the resale in the EU or EEA by the EU-based buyer.

For example, if the surplus goods are sold to a French distributor under a contractual prohibition to resell the goods in any EU country, this is irrelevant for the purposes of exhaustion. This may constitute a breach of contract by the French distributor, but the goods may be lawfully acquired (and again resold) by any other person in the EU.

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What about INCOTERMS?

Whether goods have been placed on the market (EU or EEA) and the resale rights of the trademark owner have been exhausted depends on whether the actual and legal power of disposal over the goods has been intentionally transferred to the purchaser/reseller, thereby realizing the value of the trademark.

If a trademark owner wants to avoid exhaustion of trademark rights, it is crucial to ensure that the legal power of disposal over the goods does not pass to the buyer within the EU/EEA. This does not mean that the trademark owner has to ship the goods to the buyer himself, but he must retain the power of disposal over the goods as long as the goods are within the EU/EEA.

Whether or not this is the case is mostly a matter of the details of the supply contract, in particular the INCOTERMS clause in use. For example, if goods are shipped to a purchaser in the EU/EEA under an "ex works" INCOTERMS-clause, the legal power of disposal over the goods is passed to the purchaser as soon as the goods are handed over to the carrier at the seller's place of business. Exhaustion then occurs and the trademark owner loses his rights to the goods

However, the handing over of trademarked products by the trademark owner to a carrier in the EU/EEA under INCOTERMS-clause CIP (Carriage and Insurance Paid) in the EU or EEA does not lead to exhaustion of the trademark rights, as according to the INCOTERMS CIP-clause the seller retains the legal power of disposal after handing over the goods to the carrier  Thus the goods have not yet been placed on the market in the EU/EEA at the time of delivery to the carrier.

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What are Copyright Levies and who is ZPÜ?

Please see here.

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First help in case of an infringement or an unauthorized use of Intellectual Property by you!

The Legal 500 and Best Lawyers (together with Germany's leading business daily Handelsblatt) have repeatedly recommended us for Copyright Disputes, Intellectual Property and Media/Entertainment.

 "LeadingLaw Firm" for Copyright Disputes
(The Legal 500, 2022, 2023, 2024)

"BestLawyers" for Intellectual Property
(Best Lawyers/Handelsblatt – Deutschlands Beste Anwälte 2021/22, 2022/23)

"TopService Provider"
(Proven Expert 2022, 2023, 2024)

If you sell devices and storage media such as personal computers (PCs) and notebooks, tablets, mobile phones, as well as memory cards and USB sticks that are suitable for making "home copies" of copyrighted works such as videos, music, photos and texts in Germany – whether as a device manufacturer, importer or simply as a distributor/vendor – you will sooner or later be contacted by the Central Organization for Private Copying Rights (Zentralstelle für private Überspielungsrechte, ZPÜ) and asked to provide specific information on the number of such devices and storage media sold in Germany and to pay a so-called Copyright Levy

What are Copyright Levies?

Under German copyright law, copyright owners (the authors of copyrighted works of all kinds, such as videos, music, photos and all kind of texts) are entitled to payment of an "equitable remuneration" by manufacturers, importers and other distributors of devices and storage media that can and are used to make "home copies" (legal reproductions) of copyrighted works. This remuneration is called the copyright levy or private copying levy. Copyright levies are a compensation for legal private copies ("home copies") which are made using devices and storage media such as PCs, notebooks, tablets and mobile phones.

(Something similar exists in the U.S., but unlike in Germany and other EU member states, it is of no practical relevance. In the U.S., AARC, a subsidiary of the RIAA Recording Industry Association of America, administered music royalties collected under the United States Audio Home Recording Act AHRA of 1992 until 2021. This fund compensated artists, writers, publishers and sound recording copyright owners for lost sales due to home copying. Originally based on blank CDs and CD recorders, the royalties were later adjusted to reflect newer technology. Today, U.S.-based manufacturers of home recording equipment and sound recordings (tapes, discs, etc.) pay into the fund, which is now administered by SoundExchange.

Who collects the Copyright Levies? Who is ZPÜ?

In Germany, for most devices and storage media copyright levies are collected by the Central Organization for Private Copying Rights (ZPÜ), an association of nine German collecting societies including GEMA (for musical works), VG Wort (for all text) and VG Bild-Kunst (mostly photography and other still images). The main purpose of the ZPÜ is to enforce authors' rights to remuneration, information and notification for private "home copies" of audio and audiovisual works against manufacturers, importers and vendors of devices and storage media.

For reprographic devices such as scanners, printers, photocopiers/Xerox machines, and fax machines, which are used to make copies of still works such as texts, photographs and other images, copyright levies are collected directly by the collecting societies VG Wort and VG Bild-Kunst,

Who has to pay Copyright Levies? What are my obligations?

Copyright levies are jointly owed by manufacturers, importers and distributors of devices and storage media are typically used for private copying. This means that anyone who sells or otherwise distributes such devices in Germany must report to the ZPÜ and pay copyright levies! The same is true for almost all other EU member states.

Manufacturer is rather narrowly defined as that legal entity, which actually assembles the devices or storage media. Importer, on the other hand, is anybody, who imports the devices or storage media into Germany or arranges for them to be imported into Germany. Companies which only order the production, put their trademark on the equipment and organize its distribution, but otherwise have the devices manufactured by a contract manufacturer, are therefore considered not to be manufacturers, but importers. To give you a concrete example, Apple is not the manufacturer, but the importer of iPhones put on the market in the EU, while Foxconn or any other of Apple's contract manufacturers in China is the manufacturer.

Please note: In the "Opus"-decision of June 16, 2011 (Case C 462/09) the European Court of Justice 6 decided, that a company, that sells or otherwise distributes devices and storage media from outside a member state of the EU directly to consumers in that member state (e.g. via cross-border online trade), the outside seller is considered to be the importer of these devices and storage media. For example, if you sell devices and storage media from Germany to Austrian consumers, you owe Austrian copyright levies to the Austrian collecting society Austro Mechana.

In addition, manufacturers, importers and vendors of copying devices and storage media are obliged to provide information on the devices and storage media sold or otherwise placed on the market in Germany, or any other country, at the request of the ZPÜ or the collecting societies. Again, the collecting societies may charge a penalty of twice the levy rate if the information is not provided, is provided too late or is incomplete.ther of Apple's contract manufacturers in China is the manufacturer.

When does the obligation to pay the copyright levy arise?

The obligation to pay the copyright levy arises when devices or media are sold or otherwise put on the market in Germany. No copyright levy is due to the ZPÜ in Germany for devices and media that are exported and thus not placed on the market in Germany.

However, devices and storage media, which are exported, may be subject to a royalty in the country to which they are exported / into which they are imported, e.g. in Austria to Austro Mechana, in France to Copie France and in the Netherlands to Stitching de Thuiskopie. This means, for example, that if you sell devices and media from Germany to Austria, a copyright levy might be due in Austria to be paid to the Austrian collecting society Austro Mechana.

Whether you owe Copyright Levies to a European collecting society, must be assessed on a case-by-case basis, as each EU country has different regulations regarding copyright levies. As a result, in different EU member states different devices and storage media are subject to levies, and the levies vary widely in amount. Unfortunately, there is no single European collecting society for copyright levies.

Companies that dispute certain copyright levies and therefore refuse to make payments to the ZPÜ and the collecting societies are required to set up financial reserves (provisions) to cover the ZPÜ's claims ("Rückstellungen") in an amount which, according to a reasonable commercial assessment, is necessary to cover the required settlement amount at a later date.

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Which devices and storage media are affected? What are the tariffs / rates?

Section 54 of the German Copyright Act (UrhG) provides that those types of devices and storage media, that are used alone or in combination with other devices, storage media or accessories to make private copies, are subject to a copyright levy.

In the absence of a so-called Joint Agreement ("Gesamtvertrag") between ZPÜ/the collecting societies and certain trade associations, the collecting societies publish tariffs for those devices and storage media for which they claim copyright levies. Such tariffs are non-binding offers to the importers, manufacturers and distributors concerned and are subject to full judicial review. As these tariffs (as well as the royalty rates set out in the Joint Agreements) are often considered to be (much) too high and unlawful, a judicial review of the tariffs is carried out in almost all cases. This has led to a large number of lengthy legal disputes at the arbitration board of the German Patent and Trade Mark Office (DPMA), the Munich Higher Regional Court and the Federal Court of Justice, some of which are still pending.

If the ZPÜ conducts proceedings against a company, it may require the company to provide security (e.g. a bank guarantee) in accordance with Section 107 of the Collecting Societies Act (VGG) as of 2016. The type and amount of the security is determined by the arbitration board of the German Patent and Trade Mark Office (DPMA) and are subject to judicial review by the Munich Higher Regional Court.

As of today, in Germany ZPÜ has published the following tariffs (selection; esp. older devices of low relevance such as tapes and tape recorders left out):

As indicated in the table, the tariffs in Germany differ for devices and storage media that are sold to consumers and those that are sold to businesses, public authorities and educational institutions such as universities and schools, etc. (so-called business-devices).

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What are Joint Agreements? Should I join a Joint Agreement?

For most devices and storage media, so-called Joint Agreements have been concluded between ZPÜ and several trade associations. The remuneration to be paid to ZPÜ under these Joint Agreements is 20% lower than the tariffs outlined in the table.
A Joint Agreement is a framework contract, negotiated and concluded between ZPÜ and a trade association. A Joint Agreement sets the level of Copyright Levies, defines the products covered by the agreement, and sets out the details of reporting and payment.. Only when a company, that is a member of a trade association, actually enters into a Joint Agreement it profits from the lower remuneration and assumes the contractual obligations of the agreement.

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What about Cloud Services?

In a pilot case successfully handled by Vy - Brix Lange Verweyen Rechtsanwälte on behalf of the defendant cloud service provider, the Munich Higher Regional Court ruled on March 1, 2014 (Case No. 38 Sch 58/22 WG e) that providers of cloud services (including online storage) such as DropBox are not obliged to pay a copyright levy to the ZPÜ and the German collecting societies. Accordingly, copyright levies apply only to devices and storage media, not to the provision of services such as cloud-services.

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What about marketplaces like Amazon Marketplace, eBay or backmarket?

In its judgment of 10 November 2002, file no. I ZR 10/22 - rakuten.de, the German Federal Court of Justice (BGH) ruled that online marketplaces such as rakuten.de are not subject to the obligation to pay the levy on devices and storage media pursuant to Sections 54 et seq. of the German Copyright Act (UrhG) as dealers and importers within the meaning of Section 54b (1) UrhG.

‍However, those sellers (accounts) who offer devices and storage media subject to the levy on such an online marketplace are responsible.

What should I do if the ZPÜ contacts me?

If you sell devices and storage media such as personal computers (PCs) and notebooks, tablets, mobile phones as well as memory cards and USB sticks that are suitable for making "home copies" of copyrighted works such as videos, music, photos and texts in Germany or any other EU country, you should contact us as soon as possible - ideally before you are contacted by ZPÜ!

Together with our experts in company law and company formation and our tax experts, we develop a company structure that significantly reduces your commercial risks when importing devices and storage media into the EU.

You are also welcome to contact us if you have been contacted by the ZPÜ and asked to provide information about the devices and storage media you have placed on the German market!

Based on our experience from hundreds of arbitration proceedings and court cases concerning copyright levies in Germany and other European countries, e.g. concerning the Austrian collecting society Austro Mechana, the French Copie France and the Dutch Stitching der Thuiskopie, we know what information you need to provide in order to avoid disadvantages such as penalties (double royalties), but without giving the ZPÜ and the collecting societies too much information and thus exposing yourself to excessive payment claims by the ZPÜ. In addition, you may violate confidentiality agreements and data protection regulations or disclose business secrets.

Please be sure to observe all deadlines set by the ZPÜ, in particular the deadline for providing information. If you fail to comply with this deadline, the ZPÜ may charge you a severe penalty amounting to twice the remuneration rate for each device or storage medium concerned!

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Do I have to contact the ZPÜ myself?

As a general rule, you should not contact the ZPÜ or any of the other European collecting societies on your own initiative.

Only if you import devices and storage media into the EU as an importer, e.g. in Germany and Austria, are you obliged to notify your imports to the responsible collecting society (e.g. ZPÜ, Austro Mechana) on your own initiative. If you fail to do so, or fail to do so in time, the collecting society can demand a surcharge of double the license fee!

The Legal 500 and Best Lawyers (together with Germany's leading business daily Handelsblatt) have repeatedly recommended us for Copyright Disputes, Intellectual Property and Media/Entertainment.

"Leading Law Firm" for Copyright Disputes
(The Legal 500, 2022, 2023, 2024)

"Best Lawyers" for Intellectual Property
(Best Lawyers/Handelsblatt – Deutschlands Beste Anwälte 2021/22, 2022/23)

"Top Service Provider"
(Proven Expert 2022, 2023, 2024)

When expanding your business into new markets, it is critical to understand the tax and financial compliance regulations of the country you are entering.

Failure to comply with these law scan result in hefty fines, legal complications, and damage to your company's reputation.

Corporate taxes

Subsidiaries and Branch Offices that are considered permanent establishments under the U.S.-Germany Double Taxation Treaty are subject to German corporate income tax (and must file regular tax returns). Dependent Branch Offices (unselbständige Zweigniederlassung) are considered permanent establishments only under certain circumstances and are generally not taxable in Germany. However

·  Subsidiaries, which are separate legal entities regardless of their legal form, and

·  Autonomous Branch Offices (selbständige Zweigniederlassung)

are subject to corporation tax in Germany.

For a Subsidiary or Branch Office that is taxable in Germany, the profits attributable to that permanent establishment in Germany are taxed in Germany according to the German corporate tax rules. In general, income taxation consists of 3 components:

However, these values cannot simply be added together to determine the total actual tax burden. German tax law provides for various accounting options and income adjustment rules, so that the "taxable income" differs from the annual profit reported in acompany's financial statements. In addition, certain deductions can be made,such as trade losses incurred in early years, which are deductible in later years when positive trade income is generated. The average corporate tax rate in Germany is approximately 30% (in Berlin its 30.175%).

Taxation of Dividends

Generally, dividends paid by a German subsidiary to a foreign parent or holding company are subject to capital gains tax:

• Dividends paid by a German subsidiary to its U.S. parent company are subject to a capital gains tax (Kapitalertragsteuer) of 25% + solidarity surcharge 0.01375%, for a total of 26.375%. However, under the double taxation treaty between Germany and the U.S., this capital gains tax may be reduced to 0% if certain conditions are met
• Tax-free transfers of dividends between all EU member states are also possible if certain conditions are met.
• Under certain circumstances, capital gains tax paid in Germany may be credited against foreign tax liabilities.

Please note: All transactions between a subsidiary or branch in Germany and the U.S. parent or another related foreign entity must comply with transfer pricing rules to prevent profit shifting and ensure fair taxation. Transfer pricing refers to the pricing of goods, services, or intellectual property transferred between related entities within a multinational corporation.

Companies can offset the VAT they have received on sales against the VAT they have paid themselves on their purchases. If the VAT paid on purchases is higher than the VAT received on sales, this results in a tax surplus, which is refunded to the company by the tax authorities. However, if the VAT received is higher than the VAT paid, this results in a sales tax liability. The company must pay the difference to the tax authorities. VAT, which is collected, has to be paid to the tax authorities on a monthly, quarterly or annual basis (depending on the company’s level of turnover).

Reporting requirements and financial records

The Legal 500 and Best Lawyers (together with Germany's leading business daily Handelsblatt) have repeatedly recommended us for Copyright Disputes, Intellectual Property and Media/Entertainment.

 "LeadingLaw Firm" for Copyright Disputes
(The Legal 500, 2022, 2023, 2024)

"BestLawyers" for Intellectual Property
(Best Lawyers/Handelsblatt – Deutschlands Beste Anwälte 2021/22, 2022/23)

"TopService Provider"
(Proven Expert 2022, 2023, 2024)