一覧に戻る Amendments to the German Trademark Act

In the German official Gazette of December 14, 2018 the Act on the Modernization of the German Trademark Act (“Markenrechtsmodernisierungsgesetz”) for an amendment of the German Trademark Act has been published. The Act on the Modernization of the German Trademark Act transfers the Directive 2015/2436 of the European Union of December 16, 2015 into national German law. The main purposes of the Act on the Modernization of the German Trademark Act are the implementation of the intended harmonization of the German Trademark Act with the Regulation on the European Union Trademark as well as a modernization of the German Trademark Act. The amendments and changes provided by the German Act on the Modernization of the German Trademark Act can be summarized as follows:

 

1.       Abolishment of the requirement of graphical representation of trademarks    

The Act on the Modernization of the German Trademark Act provides that the requirement of a graphic representation of a trademark is no longer a condition for the application and registration of a German trademark. Rather, it will be sufficient that the public can “clearly and unambiguously” determine the subject matter of protection of the corresponding German trademark application or registration. The background for the abolishment of the requirement of graphical representation is among others to open the register for new forms of trademarks, e.g. for acoustic and smell marks. (Nevertheless, at present also the abolishment of the requirement of graphic representation will not enable applicants to register smell marks, as there is no established system to clearly and unambiguously identify the subject matter of a smell mark for the purpose of a German trademark application.)

2.       Introduction of guarantee or certification marks            

The Act on the Modernization of the German Trademark Act provides the introduction of a guarantee or certification mark (“Gewährleistungsmarke”). Contrary to the existing types of German trademarks with the main purpose to identify the origin of a product or service, the function of a guarantee or certification mark is to secure that the so-marked products or services have certain characteristics guaranteed and supervised by an independent party, namely of the owner of the guarantee or certification trademark. For that reason, the owner of a guarantee or certification trademark can only be a person who is not active or otherwise engaged in the area of the goods and services of the certification or guarantee mark. Furthermore, the filing of a guarantee or certification trademark will require that statutes are provided, clarifying which conditions must be fulfilled for using the guarantee or certification trademark and how these conditions are controlled.               

3.       New absolute grounds for a refusal      

The catalogue of absolute grounds for a refusal is extended by listing geographical indications of origin, traditional designations for wines, designations of traditional specialties or variety denominations as possible absolute grounds for a refusal. However, this extension of the list of absolute grounds is more an adoption of the current practice as the new listed absolute grounds for a refusal had been previously covered by the general provision that a German trademark application might be refused for other absolute grounds in the public interest.

4.       Possibility to take action against use of protected trademark as company name, trade designation etc.

The Act on the Modernization of the German Trademark Act clarifies that use of a protected trademark as company name, trade designation etc. constitutes a trademark infringement, if the company name, trade designation etc. is used for similar goods or services. This amendment adopts and transfers the corresponding European and German case law into codified law.           

5.       Possibility to take action against infringing products in transit

In future a trademark owner will be able to take action against infringing products in transit, however, with the limitation that the corresponding case concerns a clear trademark infringement. Furthermore, if the defendant in corresponding proceedings can prove that the goods concerned are intended to be lawfully put onto the market in a third country, the trademark owner will not be able to enforce his rights against such goods in transit in Germany. Nevertheless, if the declarant of goods in transit does not take any action against a confiscation by the German customs, the corresponding goods in transit will be destroyed.

6.       Administrative proceedings for the declaration of revocation or invalidity of a German trademark      

So far, proceedings for the declaration of revocation or invalidity of a German trademark because of prior rights or because of non-use had to be pursued by the way of a court action with a German civil court. The Act on the Modernization of the German Trademark Act now provides that corresponding proceedings can also be pursued by the way of administrative proceedings with the German Patent and Trademark Office. The existing system to pursue corresponding claims by the way of a court action with a German civil court will be maintained so that a party interested in the cancellation of a German trademark because of prior rights or because of non-use now has the option to choose between administrative proceedings with the German Patent and Trademark Office and a court action with a German civil court.         

7.       Amendment of opposition proceedings             

There will be several amendments with respect to opposition proceedings against a German trademark, in particular the following:

 

a)       An opposition against a German trademark can in future also be based on (protected) geographical indications of origin and designations of origin.

 

b)      In opposition proceedings against a German trademark the objection against the genuine use of the opposition trademark will in future only be possible, if the opposition trademark has been registered for more than five years at the time of the application or priority date of the opposed German trademark. The current possibility to object to the genuine use of the opposition trademark also, if the five years’ grace period expires during the course of the opposition proceedings will no longer be available.

 

c)       It will in future be possible to request a “cooling-off” period to give the parties the possibility to negotiate an amicable settlement. A corresponding request will be possible for at least two months. However, contrary to the corresponding practice in respect of oppositions against European trademark applications, there will be no refund of the official fees if an opposition is settled amicably during a “cooling-off” period.

 

d)      The system with respect to the official fees for an opposition against a German trademark will be changed in the way that the basic official fee will be raised from EUR 120 to EUR 250 (for an opposition on the basis of the first opposition trademark or other first prior right) and that the official fees for an opposition on the basis of each further opposition trademark etc. will be lowered from EUR 120 to EUR 50.            

8.       Registration of licenses              

It will in future be possible to register a license in Germany in respect of a German trademark. In this connection it will in particular be possible to register the type of license and any restrictions.    

9.       Miscellaneous

The current practice of the German Patent and Trademark Office to reclassify goods and services when the corresponding German trademark is renewed, in particular by reclassifying services which had previously been registered in class 42 and now belong to the later established classes 43, 44 and 45 will be abolished.

 

If you have any questions, in particular in connection with the the Act on the Modernization of the German Trademark Act, please do not hesitate to contact Thorsten Koerl (koerl@mueller-bore.de) or other members of the trademark team of Müller-Boré & Partner.

 

 

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