Update on the "Geek Nerd" warning

As most of you probably remember, we were end of November for the use of the term "geek nerd". After we weren't prepared to pay anything or stop using "Geek Nerd", the warning letter issued it to us. actually succeededto obtain a temporary injunction from the court prohibiting us from using it. Since then, 160 of our nerd shirts have been offline on eBay, because it's better to obey court orders... Of course, we have since taken some steps to defend ourselves! In addition to setting up a mailing list just for those affected and networking all those who have been warned (there are at least 30 of them!), we are of course taking legal action against Trade Buzzer. However, the whole thing is quite complicated, so here is an attempt at a somewhat longer explanation:

In comments to the blog articles linked above, the suggestion often came up that one should file an application for cancellation or an opposition against the trademark with the trademark office, since the opposition period had not yet expired. However, this is not really promising: the opposition period only applies to rights based on your own earlier trademarks, so it is less relevant in this case. If you believe that a trademark should generally not have been registered, you can always file a cancellation request, there are no time limits. In this case, however, the "Geek Nerd" trademark is probably quite registrable. That may sound crazy at first, but it is the legal situation. The trademark "Kinder" for chocolate, for example, which has been registered for many years, is comparable. There are other ways to take action against the prohibition of normal German words, but more on that in a moment. Another, probably more promising way to cancel a trademark would be to file an application for cancellation due to bad faith. You would then have to prove that the main aim of the Trade Buzzer warning party was to hinder other companies. However, this requires hard evidence in court. It may seem so clear at first what is being played out here, but it is not always quite so simple in court or at the trademark office. We do not believe that proof is impossible, but more on that later. The problem with a cancellation request is that it can take 6-12 months to process it and by then Trade Buzzer and their lawyer Lutz Schröder will probably have already enforced most of the claims. So we have to proceed differently.

As already mentioned above, a temporary injunction has been obtained against us. There are two ways to take action against this: Firstly, you can appeal against the decision. The court will then schedule a relatively short hearing in which the defendant - i.e. us - can present its arguments (in our case for the first time!). In addition, you can request that the plaintiff be given a deadline for filing the lawsuit in the main proceedings. An interim injunction is initially only a provisional decision and must be confirmed in the main proceedings. As the plaintiff has to advance the court costs in the event of a lawsuit, we have now requested Trade Buzzer to file a lawsuit as a first step. So far, no such complaint has been received, but Trade Buzzer only has about 3 weeks to do so. If they miss the deadline, all their claims will lapse. The detail that the plaintiff has to advance the court costs is interesting because even if we win, we will only get our costs reimbursed by Trade Buzzer if the company still exists and does not go bankrupt before then.

Of course, we have also submitted a detailed and well-founded objection to the injunction. This is very important because we want to avoid having to pay any lawyer's or court fees and you can't defend yourself forever once the injunction has been issued. However, there is a real risk that we will never see the money we have paid again, so we don't want to have to pay anything in the first place. Our justification for the objection is based on two pillars:

1. the use of "Geek Nerd" as part of the article name was not trademark-related, i.e. not intended to identify the manufacturer of the article, but as a description of the article's target audience. Such use is in fact okay. There is even a ruling on this in connection with "children's chocolate", i.e. it is OK to call chocolate for children "children"! Of course, the judge has to understand what geeks and nerds are. To this end, we have collected affidavits from a whole series of other retailers who have received warnings, in which the retailers explain to the judge exactly what a geek and a nerd are and that these words have been used for a long time.

2. in our opinion, the trademark application was filed in bad faith, i.e. only to hinder other companies. As evidence, we have prepared a calculation of Trade Buzzer UG's profits, which we believe shows that the potential profits from selling T-shirts on eBay cannot possibly cover the potential court and legal fees of warning over 30 companies. In addition, we have again collected affidavits from other warned companies to prove to the judge that the terms "Geek Nerd" were used by many German T-shirt sellers long before Trade Buzzer registered the trademark. If the judge follows this line of argument, we could even try to take action against the managing director of Trade Buzzer personally. This would then mean that he would also be liable if his company went bankrupt, but you would have to put forward really good arguments for this.

There is already a date for the hearing. This will take place on

17.2.2014 at 11 a.m. in room III/3810 of the Berlin Regional Court (Littenstr. 12-17, 10179 Berlin)

will take place. It is open to the public and it certainly won't hurt if as many supporters of our cause as possible are present. We are happy about every visitor! If we win the case, there will be the first decision against Trade Buzzer and hopefully the other warnings will also collapse. It remains to be seen whether an application to cancel the trademarks will then still be necessary, because if Trade Buzzer does not survive the whole thing, it will be possible to have ownership of the trademark transferred to it as part of an enforcement action and we would of course then lock it deep in the poison cabinet!

So much for the explanation of our approach. We think we have a good chance, because a judge should actually understand what is going on here if we are allowed to explain it to him. Incidentally, we are represented by Norman Dauskardt from the ab&d lawyers from Berlin. So: Which of you will be at the hearing?