Since a few days rumors about a wave of warning letters alleging infringement of the trademark “Webinar” have been circulating on the net. If you are also using the term „webinar“, how concernd should you be?
The term “webinar” is actually protected as a trademark. The oldest „Webinar“ trademark in Germany was registered in 2003 for, among other things, “organisation and holding of seminars; organisation and holding of conferences”. Does that mean everybody using the term “webinar” in connection with the organisation of an online seminar is committing a trademark infringement?
We think, not necessarily. Because even if the use of a registered trademark for the protected products without the consent of the trademark owner will generally constitute a trademark infringement, this is not necessarily the case.
Use as a trademark
The first requirement for a trademark infringement is that the alleged infringer uses the sign in question as a trademark. Consumers must believe that the sign is intended to indicate that this service originates from a specific company. Even though this may not have been the case in 2003, we believe that, at least today, consumers do not understand “webinar” to be a reference to a specific provider, but only the very general term used for an online seminar.
Genuine use
A further requirement would be that the owner of the trademark must be able to prove that he or a licensee has used the trademark within the last 5 years. At first sight, there seems to be no such evidence.
Validity of the trademark
In addition, the trade mark should be legally valid. There are doubts about this, because the trademark has probably become the commonly used term for online seminars. Not surprisingly, a request for cancellation of this trademark was filed with the German Patent and Trademark Office on 3 July 2020. It remains to be seen how this request will be decided and what will happen to other trademarks containing the element “webinar”.
Abuse of rights
Finally, there would be the argument of abuse of rights if the term “webinar” has been used throughout the country for years without any objection being raised by the respective trademark owner, but now all of a sudden a lot of warning letters were sent.
Conclusion
If you do indeed receive a warning letter, there are probably some arguments against the same being enforceable in court.
This article only reflects our opinion and does not replace legal advice in individual cases!
