Second part of the Trade Mark Law Modernisation Act enters into force on 1 May – DPMA President: provisions will increase legal certainty
Press release of 29 April 2020
Munich. As from 1 May, law amendments will strengthen the rights of trade mark proprietors: now, experts of the German Patent and Trade Mark Office (DPMA) can also decide in invalidity proceedings, which previously had to be dealt with exclusively by the ordinary courts. In addition, revocation proceedings can be conducted fully at the DPMA. “The new provisions will make revocation and invalidity proceedings more efficient, faster and less expensive for trade mark owners. This strengthens their rights and increases legal certainty,” said DPMA President Cornelia Rudloff-Schäffer.
Invalidity and revocation proceedings now possible at the DPMA
There is a new provision for applications for a declaration of invalidity and cancellation of a registered trade mark on the basis of a conflicting earlier right: if a right holder intended to initiate such invalidity proceedings against a later trade mark – because he believed that his earlier rights had been infringed – his only option up to now was to go to the ordinary courts. As from 1 May 2020, holders of the earlier rights referred to in sections 9 to 13 of the Trade Mark Act may also have invalidity proceedings conducted directly at the DPMA. The application may also be based on several earlier rights (section 51 (1) of the Trade Mark Act). However, a declaration of invalidity on the basis of conflicting earlier rights is excluded in certain cases – for example, if the holder of the earlier rights has acquiesced in the use of the later trade mark or if he has not put to use his own trade mark (section 51 (2) and (4), sentence 1 no. 1 of the Trade Mark Act). If the proprietor of the challenged trade mark objects to the application for a declaration of invalidity within a period of two months, invalidity proceedings will be conducted. If he does not object to the application, his trade mark will be declared invalid and cancelled.
As from 1 May revocation proceedings, too, can be conducted fully at the DPMA. Upon request, registered trade marks will be revoked and cancelled if they have not been put to use within a period of five years, if they have become of such a nature as to deceive the public or if the proprietor no longer fulfils the requirements of section 7 of the Trade Mark Act. There are further grounds for revocation for collective marks and certification marks.
Previously, persons filing an application had to further pursue revocation proceedings before the ordinary courts if the trade mark owner objected to the application for revocation and cancellation of his trade mark. In future, such proceedings can be concluded fully at the DPMA. Again, proceedings will only be conducted if the owner of the challenged trade mark objects to the application for a declaration of invalidity within two months. An additional prerequisite for conducting the proceedings is that the person filing the application pays the fee for pursuing the application further within a certain time limit. If the proprietor of the challenged trade mark does not object to the application for a declaration of invalidity, his trade mark will be revoked and cancelled.
Both invalidity and revocation proceedings can still be initiated at the ordinary courts so that the person filing the application has a choice. However, an action is inadmissible if an application on the same subject matter has already been filed with the DPMA. Conversely, an application filed with the DPMA is inadmissible if an action on the same subject matter is pending before a court. In comparison to court proceedings, proceedings at the DPMA may be less expensive for the person filing the application because the fees charged are lower. Furthermore, there is only one institution involved in the proceedings, which makes it easier to apply the law consistently and may contribute to greater legal certainty. Moreover, it is not compulsory for parties to the proceedings to appoint a lawyer to represent them before the DPMA if they have a domicile, a principal place of business or an establishment in Germany.
The law amendments are based on the European Trade Mark Directive, which has been in force since 2016 and has to be conclusively implemented by 1 May 2020. The other provisions provided for by the Directive have already been implemented by the Trade Mark Law Modernisation Act, which came into force on 14 January 2019.
Further information on the changes applicable as of May 2020 and on the fees charged in each case, we will describe in 2 parts of the publication on the Intectica website.