On 14 January 2019, the Trade Mark Law Modernisation Act entered into force in Germany, implementing the EU Trade Mark Directive and further harmonizing European trade mark law.
We have summarized the most important changes to German trade mark law for you as follows:
New types of trade marks
Previously, a trade mark had to be capable of being represented graphically. With the reform, it is sufficient if the trade mark can be clearly and precisely determined. This allows now the filing of applications for sound marks, multimedia marks, holograms and other types of trade marks.
Changes regarding licenses
Now, licenses can be recorded in the register upon request and payment of a fee. Based on the new law, an exclusive licensee has the right to file a law suit against a trade mark infringer if the owner of the licensed trade mark does not file a law suit within a reasonable period of time after being asked by the exclusive licensee. With the reform, the trade mark register becomes a kind of market place, because a non-binding declaration of the trade mark applicant's or owner's willingness to sell or license the trade mark can be recorded in the register. This is similar to the patent register.
Term of protection and renewal of trade marks
So far, the term of protection of a trade mark ended ten years after the month in which the trade mark was applied for. These rules remain in force regarding trade marks already registered before 14 January 2019 so that there is no need for immediate action.
However, the term of protection for those trade marks registered on or after 14 January 2019 will end exactly ten years after the filing date. This will have consequences as of 2029. The application for renewal of a trade mark must be filed and the renewal fee must be paid within a six-month period before the end of the term of protection. The renewal fee can also be paid within an additional period of six months after expiry, but this comes with payment of surcharges.
Trade mark use and grace period for use
With the reform, the practice of German courts becomes law where use of a registered trade mark is also such a use which differs from the registration as long as the difference does not change the distinctive character of the trade mark. Under the reform, the five-year grace period for use will now start on the date after the expiry of the period of opposition against the trade mark. If an opposition has been filed against the trade mark, the grace period for use will start on the date on which the final decision on the opposition is made or the opposition is withdrawn.
Previously, an opposition could only be filed on the basis of one opposing sign. As a consequence, it was common to file several oppositions. After the reform, things are much easier: the owner of several earlier rights can combine them in one opposition filing. And in order to facilitate settlement negotiations between the parties of opposition proceedings, a period of at least two months will be granted upon their joint request to enable the parties to reach a settlement (cooling-off).
Revocation / invalidity proceedings before the German Patent and Trade Mark Office
Starting from May 2020, it will be possible to request a declaration of the German Patent and Trade Mark Office on the revocation of a trade mark due to non-use or to claim invalidity of a trade mark due to absolute grounds of refusal or earlier rights. The Office will also be in charge of the material aspects of these proceedings. However, it will still be possible to file a law suit with the competent courts.
Counterfeits under Customs surveillance
Customs supervision will improve due to the fact that the owner of a trade mark or a commercial designation can prohibit the entry of those goods into Germany that are under Customs surveillance. For such prohibition, it is required that the trade mark or the commercial designation on the goods in transit are identical with or in their main characteristics indistinguishable from the trade mark or commercial designation of the owner.
National certification mark
Since 1 October 2017, a European Union certification mark can be registered with the European Union Intellectual Property Office (EUIPO). Now, the Trade Mark Law Modernisation Act introduces the certification mark to German trade mark law. By way of this certification mark, the owner certifies in respect of goods or services at least one of the following characteristics: material, mode of manufacture of goods or of performance of services, quality, accuracy or other characteristics except the geographical origin.
If you have questions or considerations on how the changes of the law will impact your trade mark portfolio or your trade mark strategy, we are pleased to be of service to you.
In the annual edition "The Legal 500 Deutschland 2019" the international research agency The Legal 500 mentioned Prüfer & Partner among Germany's leading law firms for the protection of industrial property rights in the field of patent law: application and prosecution, as extremely commendable.
Prüfer & Partner ranks among the "most recommendable patent law firms in Germany", convinces with "excellent service" and is thus one of the most renowned patent law firms in Germany.
Prüfer & Partner is very pleased about this award and would like to thank all its clients, foreign colleagues and employees for the trust they have placed in its firm and for the good cooperation.
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