Change in German Trademark Law

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December 2018: With the approval of the Bundesrat (Federal Council) on 23 November 2018, the legislative procedure for the so-called “Markenrechtsmodernisierungsgesetz” (Trademark Law Modernisation Act) was completed. EU Directive 2015/2436 of 16 December 2015 on the harmonisation of the laws of the Member States relating to trademarks will thus be transposed into German law. The law will enter into force on 14 January 2019. The objectives of the EU Directive include, among others, modernising the registration procedure, harmonising national trademark protection systems and improving access to trademark protection.

The above gives rise to the following changes:

1. New trademark forms

In order to be registrable, trademarks must no longer be capable of being represented graphically, but it is sufficient that the subject-matter of trademark protection is clearly and unambiguously identifiable. Thus, it is also possible to file applications for types of trademarks which cannot be represented graphically, such as holograms, multimedia trademarks or non-musical sound trademarks. There is no strict categorization, so there are no limits to the variety of forms.

Certification mark

A new trademark category is introduced with the "Certification mark". Unlike the usual trademark ("individual trademark"), the Certification mark does not serve to distinguish the marked goods or services with regard to their commercial origin, but has a certification function: The owner of the trademark certifies certain characteristics of the goods or services marked with the Certification mark, for example the material, the method of production, the quality or other characteristics. This certifying character must already be indicated in the representation of the trademark. In addition, a regulation on the use of the Certification mark must be filed with the German Patent and Trademark Office, clearly defining the certified characteristics and indicating the testing and surveillance measures. It is important that the trademark owner himself may not market any goods or services under this trademark. It is therefore a category for quality seals or neutral certification companies which provide third parties with a corresponding Certification mark, provided that the labelled products fulfil the characteristics laid down in the regu-lations.

2. New absolute grounds for refusal

With the coming into effect of the new law, protected geographical indications, protected designations of origin, protected traditional terms for wine, protected plant variety denominations and guaranteed traditional specialities will count among the grounds for refusal of trademark registration.

3. Registration of licenses

Licences can be recorded in the register, giving everyone access to information on the licensee, the type of licence and any restrictions. Recordal of licences is subject to a fee. It is also possible to record the willingness to sell or license a trademark in the register free of charge.

4. Changes in the term of protection

The end of the ten-year term is adjusted: Until now, the expiration date was the end of the month in which the trademark was registered ten years earlier. In future, the term of protection will be ten years to the day, i.e. calculated from the day of filing. For trademarks already registered, the term of protection does not change.

5. Reclassification

If in future the classification of goods and services changes after the filing date, the classification of the trademark will no longer be adjusted.

6. Opposition proceedings

Previously, if action was taken against a younger trademark on the basis of several trademark rights, each opposition proceeding had to be initiated separately. In future, a single, unified opposition proceeding on the basis of several earlier rights will be possible.

Protected geographical indications and protected designations of origin are new, additional grounds for opposition.

The opposition fee will be adjusted: Up to now, it has been EUR 120.00 per opposition, in future it will be EUR 250.00 per opposition and EUR 50.00 for each additional property right.

7. Grace period for use

In future, the five-year grace period for use will begin on the day on which oppositions can no longer be filed against the registration of a trade mark. This is the day following the expiry of the opposition period or the day on which the decision terminating the opposition proceedings (or the withdrawal of the last opposition) becomes final. The beginning and end of the grace period for use will in future also be indicated in the register.

8. Cancellation proceedings

Until now, cancellation proceedings on the grounds of earlier rights or non-use of a trademark always had to be conducted before the civil courts. With the Trademark Law Modernisation Act (but only from 1 May 2020), these grounds for refusal can also be asserted in cancellation proceedings before the German Patent and Trademark Office. Proceedings before civil courts, however, remain possible as an alternative.

Should you have any questions, please do not hesitate to turn to your contact at Eisenführ Speiser.