 The Act relating to the Protection of Marks and other Signs entered into force on January 1, 1995
, thereby implementing in Germany the EC Directive on Harmonization of
Trademark Laws within the Member States, together with certain other EC
Directives concerning trademarks and related rights. The Act
constitutes a comprehensive revision of the former German Trademark
Law, which dates, with amendments, from 1894. The new Act governs, not
only trademarks, service marks and collective marks, but also trade
designations, company names and geographical indications. The principal
changes effected by the new Act are summarized below.
1) The definition of registrable marks has been expanded to include any
signs that are capable of being represented graphically and that are
capable of distinguishing the goods or services of one undertaking from
those of other undertakings. Under this definition colors and color
combinations, names, letters, numerals, sound marks, three-dimensional
marks, including the shape or packaging of a product and its "get-up,"
should be registrable. In view of this more relaxed definition of
registrability (under the old law, for example, only word and device
marks which could be represented two-dimensionally were registrable),
clients, whose marks have previously encountered insurmountable
inherent registrability objections, are strongly advised to consider
filing new applications for such marks.
2) Rights in a mark under the new Act derive, not only from registration of the mark, but also from the following:
a) use of a mark in the course of trade whereby the mark has acquired
prominence as a trade mark among the trade circles concerned;
b) where a mark is well-known within the meaning of Article 6bis of the Paris Convention.
3) The Act provides for the protection of trade designations, which are defined as:
a) company symbols, namely, signs used in the course of trade as the
name, company name or special designation of a business establishment;
and
b) titles of works, namely, names or special designations of printed
publications, cinematographic or acoustical works, plays or comparable
works.
4) Protection in a mark or trade designation, as described above, gives
the proprietor thereof exclusive rights to use the mark or designation.
These rights include:
a) the right to cancel a subsequent trademark registration on the following bases:
i) that, in the case of prior registered and well-known marks, the
offending trademark is identical or similar to the prior mark either in
respect of identical or similar goods or services or in respect of
dissimilar goods or services where the prior mark has a reputation in
Germany and use of the subsequent mark would take unfair advantage of
or be detrimental to the distinctiveness or reputation of the prior
mark;
ii) that, in the case of prior marks acquired by use and prior trade
designations, such rights would enable the owner to prohibit the use of
the offending mark throughout Germany;
b) the right to prevent the unauthorized use of a conflicting mark,
within 3 years of learning of the infringement, not to exceed 30 years
from the date of infringement, on the following bases:
i) that, in the case of registered or well-known marks or marks
acquired by use, the offending trademark is identical or similar to the
prior mark either in respect of identical or similar goods or services
or in respect of dissimilar goods or services where the prior mark has
a reputation in Germany and use of the subsequent mark would take
unfair advantage of or be detrimental to the distinctiveness or
reputation of the prior mark;
ii) that, in the case of prior trade designations, the conflicting
usage would lead to confusion or would take unfair advantage of, or be
detrimental to, the distinctive character or the reputation of the
trade designation.
However, where the owner of an earlier mark or trade designation has
acquiesced for a continuous period of 5 years in the unauthorized use
or registration of a conflicting mark, the right to seek cancellation
of the registration of the conflicting mark or to take action against
use of the conflicting mark will be lost, unless the registration of
the conflicting mark was obtained in bad faith or the user of the
conflicting mark was acting in bad faith.
In the case of unauthorized use, the proprietor of the mark or trade
designation may not prevent third parties from using their own names or
addresses, from using a mark or designation as an indication of the
characteristics or properties of goods or services, from using a mark
or designation where necessary to indicate the intended purpose of a
product, particularly in the case of spare parts, or from using the
mark or trade designation on goods which have been put on the market
by, or with the consent of, the proprietor in one of the countries of
the EU or the European Economic Area; the latter shall not be
applicable where the proprietor has legitimate reason to oppose further
commercialization of the goods, especially where the condition of the
goods is changed or impaired after they have been put on the market.
5) Other earlier rights which may serve as bases for a cancellation
action against conflicting registrations include rights to a name,
rights of personality, copyrights, plant variety designations,
appellations of geographical origin and "other industrial property
rights."
6) Objections to the registrability of marks that are considered
non-distinctive, descriptive or generic may be overcome by establishing
that the marks have acquired secondary meaning among the relevant trade
circles prior to the date on which a decision is rendered with regard
to the registrability of the mark.
7) Trademarks may be registered by any person, either natural or legal,
provided that they have been vested with the ability to acquire rights
and to assume obligations. There is no longer the need for an
underlying business operation in which the mark is used or to which the
mark is intended to relate.
8) Trademark applications will be examined for inherent registrability,
and, as under the old law, will not be examined for conflicts with
prior rights. Therefore, it is very important for clients to enter
their marks in a Watch Service so that appropriate action may be taken
against conflicting marks on a timely basis.
9) Expedited examination of applications remains available upon payment of an additional fee.
10) Contrary to previous practice under which trademark applications,
which passed the examination stage, were published for opposition and
subsequently registered, under the new Act trademark applications that
complete the examination stage successfully will be registered, and
then published for opposition.
11) The opposition period will remain 3 months from the date of
publication in the Official Gazette. In addition to proprietors of
marks whose agents or representatives have registered such marks
without the proprietors' consent, only owners of prior applications or
registrations for marks, or owners of well-known marks, which are
identical or similar to the published mark in respect of identical or
similar goods or services may oppose the published registration. Owners
of all other earlier rights who wish to take action against the
published registration must wait to institute cancellation proceedings.
12) Applications may be divided as to particular goods and/or services
upon payment of a fee; this could be advantageous if the Patent Office
objects to the registrability of a mark for a part of the goods and/or
services covered by the application. Registrations that are the subject
of an opposition or cancellation action may also be divided if the
opposition or cancellation action is brought against only part of the
registration.
13) The term of a registration will run from the date of filing and
expire 10 years after the end of the month in which the filing date
falls. Registrations will continue to be renewable for further periods
of 10 years.
14) Applications that were filed and accepted for publication prior to
January 1, 1995 will be registered and then published. Applications
that were filed prior to January 1, 1995, but were not yet approved for
publication by that date will be examined under the old law; however,
if the application would not have been registrable under the old law,
the Patent Office will notify the applicant that the application may be
examined under the new law, in which case the date of filing will be
deemed to be January 1, 1995.
15) Rights in trademarks acquired through registration and use, as well
as rights in well-known marks, may be transferred or licensed (on an
exclusive or non-exclusive basis) for some or all of the goods and
services concerned, and may also be subject to execution and may be
pledged as collateral security.
16) Licenses may be granted for the whole or any part of the territory
of Germany and licensees may only institute infringement actions with
the consent of the trademark owner.
17) If a mark is the subject of a license, a lien or a measure of
enforcement, such conditions may now be recorded at the Patent Office.
18) An assignment of a licensed mark or the grant of an additional
license to a third party will not affect the validity of previously
granted licenses.
19) Under the old law, the user requirement was strictly applied and
marks had to be used in the form in which they were registered. Under
the new law, use of the mark in a form which differs from the form in
which it was registered will satisfy the user requirement, provided
such variation does not alter the distinctive character of the
registered mark. Use of the mark applied to goods in Germany but
intended solely for export constitutes use of the mark in Germany.
20) A registration is subject to cancellation if the application was
filed in bad faith or if the mark was barred from registration on
absolute grounds, such as lack of distinctiveness. However, such
registration will only be held invalid if the cancellation action was
instituted ex officio within 2 years or by a third party within 10
years following registration.
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