Changes regarding the German Trademark Act as of 14 January 2019

On EU-level, the revised EU Trade Mark Directive 2015/2436 of 16 December 2015 (EUTMD) and the new EU Trade Mark Regulation (EUTMR) entered into force at the beginning of 2016. After comprehensive preparatory work done by the Federal Ministry of Justice and Consumer Protection combined with expert support by the German Patent and Trade Mark Office (GPTO), the Trade Mark Law Modernisation Act (Markenrechtsmodernisierungsgesetz), and thus the amendment of the Trade Mark Act to implement the EUTMD, entered into force on 14 January 2019 with the goal to harmonize a significant number of optional provisions of the EUTMD into German law.

We would like to provide an overview of the most significant changes.

1. Term of protection and due date of renewals

The term of protection for German trademarks registered on or after 14 January 2019 will expire ten years after the filing date. For German trademarks which have been registered before 14 January 2019, the expiry of the term of protection remains ten years after the end of the month in which the trademark was applied for. The GPTO intends to inform trademark owners (or their local German representatives) eight (8) months prior to the expiry of the term of protection.

Due to a change in the Patent Costs Act (Patentkostengesetz), the due date for the payment of renewals has changed. However, this change is not applicable to registered German trademarks whose term of protection currently expires on or after 1 February 2020. In those cases, the expiry of the term of protection and the due date for the payment of the renewals are identical. For all other German trademarks, the expiry of the term of protection and the due date of payment of the renewal fee will differ: in these cases, the renewal fee becomes due six months prior to the expiry of the term of protection. It can be paid without surcharge until the expiration date and with surcharge within an additional period of six months after the end of the term of protection.

2. Amendments in the opposition proceedings

According to the previous version of the German Trademark Act, filing an opposition was possible on the basis of one opposing mark, only. If an owner of several prior rights intended to base his opposition on a multitude of different trademarks, he had to file a single opposition for each opposition mark and pay the full opposition fee for each formal opposition. As of 14 January 2019, the holder of several earlier rights is able to assert several or all of prior rights by lodging one single opposition. Also, the opposition fee is brought into line with this new system and the increased effort involved: the official fee for lodging an opposition against a trademark based on one prior trademark is now EUR 250,00, for each additional opposition mark it is EUR 50,00 (previously: EUR 120,00 official fee per opposition).

At the same time, the opposition options will be expanded: For example, protected geographical indications and protected designations of origin will constitute new, additional grounds for opposition.

Furthermore, the new German Trademark Act provides kind of a “cooling-off”-period. In order to facilitate negotiations between the parties to the proceedings, a period of at least two months will be granted at their joint request to reach an amicable settlement. This period can be extended by a joint request by both parties. Please note that the German “cooling-off” will likely be handled a bit more liberal than at the EUIPO.

Further important changes were made with respect to the time period for which proof of use of a trademark on which an opposition had been based had to be furnished upon request of the owner of the opposed trademark. Previously, there were two time periods which were relevant in this respect: five years before the date of publication of the registration of the challenged trademark on the one hand and, on the other hand, the so-called “moving period of use” which was five years preceding the decision on the opposition. This second time period – the “moving period of use” – has now been deleted. The first period has been changed and, as a consequence, the only time period which is now relevant is five years before the filing date or the priority date of the challenged trademark.

In addition, proof of use is required instead of making a plausible case, but this can also be provided by means of an affirmation in lieu of an oath, which has so far also been the main means of making a plausible case.

In addition, the grace period for use now commences on the date when no further opposition can be filed against the registration of a German trademark. This is either the day after expiry of the opposition period or the date on which the decision which concluded the opposition proceedings becomes final or the withdrawal of the (last) opposition. According to the previous German Trademark Act, the grace period of use began upon publication of the registration or – if an opposition was filed against the registration – at the date when the opposition proceedings were concluded. The beginning and the end of the grace period for use will now be recorded and published in the register of the GPTO.

3. Abolition of re-classification

If the division into classes of goods and services is altered after the filing date, the classification will not be adjusted upon renewal of a trademark, neither ex officio nor upon request of the trademark owner. This will lead to certain insecurities in the everyday work of trademark practitioners, in particular when conducting trademark availability searches. It could happen that goods or services filed years ago fall into one class which due to changes in the Nice Classification will in the future fall into another class. Discrepancies and non-findings of marks may happen.

4. New absolute grounds for refusal

Protected geographical indications and protected designations of origin, in particular for foodstuffs, wines and spirits protected under national or European legislation or agreements, are now also to be considered as absolute grounds for refusal during the German application procedure or invalidity proceedings. The same applies to protected traditional terms for wine, traditional specialities guaranteed with regard to foodstuffs and protected variety denominations.

5. National certification mark

A new trademark category has been implemented into the national German trademark system: the certification mark. The certification mark focuses on the function of the mark to guarantee specific features of the protected goods/services. Hence, the function of the trademark as an indication of origin fades into the background.

A certification mark must be designated as such when the application is filed. It must be capable of distinguishing goods or services which are certified by the trademark owner in respect of material, mode of manufacture, quality, accuracy or other characteristics of goods or performance of services, from goods and services which are not certified accordingly. The certifying character of the mark must result from the representation of the sign. The trademark owner must provide information – in particular on the guaranteed characteristics of the goods, the conditions of use and the testing and monitoring measures – in the mandatory regulations governing use of the trade mark.

6. Determinability of trademark

Whereas trademarks in the register previously had to be “capable of being represented graphically”, it now suffices if they can be clearly and precisely “determined”. This change in representation aims to meet the market needs for modern and “new” trademark types and also takes into account the technical possibilities of representing a trademark in electronic registers. Accordingly, for example, sound marks, multimedia marks, holograms and other types of trademarks in suitable electronic formats may also be registered as trademarks, provided there are no absolute grounds for refusal.

7. Changes in the cancellation proceedings

Since 14 January 2019, cancellation proceedings have been renamed to "revocation proceedings" or "invalidity proceedings". Expectedly from 1 May 2020 onwards, it will be possible to claim relative grounds for refusal (earlier rights) in official invalidity proceedings in addition to absolute grounds for refusal (the latter has always been possible). However, there will still be the possibility to call an ordinary civil court and file a cancellation action against a younger trademark based on prior rights. It will most likely be a tactical question whether to go to the GPTO or a civil court. Note: We have specialized IP courts in Germany with at least three (3) judges on the bench.

8. Licenses

Licences can now be entered in the GPTO Register upon request. The entry includes information on the licensee, the type of licence and restrictions, if any. The registration, amendment and cancellation of a licence in the register is subject to an official fee amounting to EUR 50,00. The holder of an exclusive licence himself may also bring an action before the ordinary courts for trademark infringement if the proprietor of the trademark himself does not file an action within a reasonable period of time after being formally requested to do so. In addition, upon request, trade mark applicants and proprietors may have an entry included in the register about a non-binding declaration of their willingness to license or sell/transfer their trademark. The entry is free of charge and this willingness may be withdrawn at any time.

For more information, please note that we have conducted a webinar (in German) on the changes. In case of interest and in order to access the webinar, please contact us via email at: info@lexdellmeier.com.