Out-Law Guide | 18 Jan 2019 | 4:57 pm | 4 min. read
This guide was last updated in January 2019.
The Act implemented the EU's Trade Mark Directive of 2015 into German law. Other EU countries, including the UK and Ireland, also applied changes to their national trade mark laws to account for the EU reforms.
Under the Trademark Law Modernisation Act there is more scope to register innovative signs expressed in different types of format as a trade mark. The registration of sound marks, multimedia marks, holograms and other types of trade marks in suitable electronic formats is possible.
The ability to register these types of marks was made possible because the previous requirement that trade marks must be capable of being represented graphically was removed under the EU reforms.
Signs can now be registered as trade marks so long as their origin is unambiguous and are clearly identifiable.
Classic types of trade marks, however, still need to be graphically represented.
What was previously known as cancellation proceedings is referred to as revocation or invalidity proceedings under the Act.
However, changes to rules impacting relative grounds of refusal mean that businesses wishing to challenge the registration or validity of trade marks in these proceedings on the basis of having existing prior rights in the mark will only be able to do so from 1 May 2020 onwards.
The Act introduced new absolute grounds for refusal of a trade mark. In addition to those already raised in the previous cancellation proceeding, new grounds for absolute refusal of a trade mark include where the mark is protected as a geographical indication, or designation of origin.
These provisions apply in particular to food and drink companies, as there are hundreds of existing items, including wines and spirits, protected under national or EU legislation or conventions.
These absolute grounds for refusal should be taken into account in the application procedure.
Upon request, it will now be possible to list details of trade mark licences on the German trade mark register.
Registration, modification and deletion of licensee information, type of licence and any restrictions is subject to a fee.
It is possible for the owner of an exclusive trade mark licence to bring an action for trade mark infringement before the courts by themselves if the owner of the trade mark has not brought an action of their own against an alleged infringer within a reasonable period of time after being formally requested to do so.
The registration of a non-binding declaration of readiness to licence or sell the trademark is free of charge.
Another modification concerns the calculation of the 10-year term of protection. The term of protection of trade marks registered on a date after 14 January 2019 expires exactly 10 years after the filing date and not, as before, 10 years after the end of the month in which the trade mark was filed. For trade marks registered prior to 14 January 2019, the expiry date remains at the end of the respective month.
The application for renewal must be filed within a period of six months before the end of the term of protection or within a grace period of six months after the end of the term of protection. Accordingly, the renewal fees and, if applicable, the class fees for the following term of protection are due six months before the end of the term of protection. If the renewal fee and class fees, if any, are not paid until expiry of the term of protection, an additional fee must be paid within the six-month extension period in addition to the renewal fee.
Under the Act, it is not possible to make a change in the classification of goods and services after the filing date at the time of the renewal of the trade mark, even if such a request is filed by the trade mark owner.
It is as yet unclear how businesses wishing to reclassify their marks should proceed. It is hoped the German Patent and Trademark Office will clarify the process.
Protected geographical indications and designations of origin are not only new absolute grounds for refusal introduced under the Act, they can also be claimed in opposition proceedings. In addition, the holder of several earlier rights will be able to claim them in a single opposition.
These changes have been accompanied by an increase in the opposition fee to €250, with a further €50 due for each additional trade mark on which the opposition is based.
Another procedural change concerns the introduction of the so-called 'cooling-off' period. In order to facilitate an amicable settlement, a period of at least two months will be granted upon joint request of the parties to the proceedings. It can be extended upon joint request.
The period relevant to demonstrate genuine use of a trade mark which is used to oppose a trade mark application has also been updated. It now starts with the filing or claimed priority date of the opposed trade mark and stretches back five years. It is therefore no longer a moving date dependent on the length of the proceedings.
Trade mark owners challenged over their use of those marks are now required to prove their use and cannot rely on prima facie evidence. Written witness testimonies can be submitted for this purpose.
Proof of use must be provided over a five-year period, beginning from the filing date or priority date for the mark.
The grace period for use begins on the day on which no further opposition can be filed against the registration of a trade mark. This is either the day after the expiry of the opposition period or the date on which the decision which ended the opposition proceedings or the withdrawal of the last opposition becomes final.
We recommend auditing your existing trade mark portfolio to ascertain whether it still provides the appropriate protection in light of the introduction of the Trademark Law Modernisation Act. Businesses may find they have more flexibility on what marks they can register.
Dr Alexander Bayer is a Munich-based expert in trade mark law at Pinsent Masons, the law firm behind Out-Law.com.