The term "webinar" was registered as a German word mark in 2003 under trademark number 30316043 at the German Patent and Trademark Office (DPMA). The protection is provisionally valid until March 2023 (as of 2020), and the trademark owner can apply for renewal. The question now arises whether announcing a "webinar" could lead to a cease-and-desist letter.
General considerations regarding the word mark "Webinar"
It is astonishing that the trademark register repeatedly registers even descriptive words as trademarks. After 10 years, these trademarks even become legally binding. However, since 2003, no cease-and-desist letters have been issued for the use of the term "webinar."
Should a user nevertheless receive a warning in this regard, it is advisable to refer to the descriptive name of the event (for example, "Webinar on Data Protection Law" ) or simply to use a different term (for example , "Web Seminar" or " Online Seminar") .
Another way would be to ask the trademark owner to prove that the trademark is being used in a way that maintains its legal rights, says lawyer Christian Welkenbach of TCI Rechtsanwälte .
No legally valid use of the trademark "Webinar"
According to experts, the trademark owner has practically not used their trademark in a manner that maintains its legal validity since 2003. However, according to Section 26 of the German Trademark Act, this is necessary after a maximum of five years for a registered trademark to remain eligible for protection. Otherwise, it risks being revoked, although this revocation must be initiated by an interested party.
How exactly is the trademark "Webinar" protected?
The protection covers several classes defined by the trademark and patent office. Protection under class 41 is particularly significant. Accordingly, a webinar...
- the “provision of information on the Internet”
- the "conducting of seminars".
When both elements come together—that is, information is provided online and seminars are then held on that basis—the German Patent and Trademark Office defines it as a "webinar." The online encyclopedia Wikipedia calls this type of event a "web seminar" and points to the interaction that takes place between the presenter and the participants.
What happens when the term "webinar" is used?
The answer is initially simple: So far, nothing has apparently happened. Attorney Dr. Maximilian Greger points this out in a blog post . As Dr. Greger explains, there are several reasons for this. First of all, the word "webinar" only describes something that Section 23 No. 2 of the German Trademark Act expressly permits.
Therefore, only a name for a very specific, singular webinar event would be eligible for protection, just as the word "Apple" is allowed to protect the company of the same name and its products, but is not protected as an English word for all apples in the world.
Secondly, the word "webinar" has become part of everyday vocabulary. This was not the case in 2003 when it was registered with the trademark office. Nevertheless, there are apparently companies that have also successfully trademarked similar words firmly established in common usage. One example is the word "spinning," which the company Mad Dogg Athletics trademarked and against whose use the company does issue cease-and-desist letters.
However, such a thing has apparently never happened with "Webinar" since 2003, at least not to the knowledge of attorney Dr. Greger. It is possible that the trademark owner is not pursuing their rights in this regard, or only inadequately. They have thus tolerated the establishment of the term "Webinar" in common usage and allowed their claim to trademark protection to be diluted, so to speak, through custom. This could even lead to the cancellation of the trademark (Section 49 II No. 1 German Trademark Act).
This decision would have to be made by the German Patent and Trade Mark Office (DPMA). However, the DPMA itself uses the word on its website. It is likely to take the view that "webinar" is not actually a trademark worthy of protection.
Conclusion: “Webinar” can be used safely.
It is clear that the term can be used without any apparent risk. It's worth noting that the emergence of "commonplace brands" is more frequent than it might seem to the layperson. As in the present case, this is because new terms sometimes appear that initially seem exotic and valuable at the same time, prompting someone to trademark them.
However, when terms like "webinar" become part of the general vocabulary, the trademark owner often fails to enforce their protection. They may even let the trademark lapse silently, which would be the case if trademark protection for "webinar" is not renewed after 2023.
Update (3.7.2020)
Dr. Maximilian Greger writes in his blog that he learned of the cancellation of the "Webinar" trademark due to revocation based on Section 49 II No. 1 of the German Trademark Act, i.e., because the trademark has now become a common name. The whole issue could therefore be resolved quickly. https://www.law-blog.de/1969/eingetragene-marke-webinar-droht-abmahnung-bei-verwendung/