Today, on January 14, 2019, the deadline for transposing the European Union Trademark Directive EU 2015/2436 expires. During the course of this, the German legislator has passed the new German Trademark Law Act, which comes into force today. The reform aims at strengthening the rights of trademark owners and harmonizes rules in the European Union.
The new German Trademark Law Act brings the following important changes into force:
1. Elimination of the graphical representation
Trademarks no longer require to be graphically depicted, but must be clearly and unambiguously identifiable by the competent authority and the general public, therefore allowing for application of trademarks such as sound marks or multimedia marks to be registered in suitable electronic formats such as mp3 or mp4. Since the WIPO continues to require a two-dimensional graphical representation, an international extension of such trademarks is not yet possible.
2. Introduction of the certification trademark
A new mark category is introduced, namely the certification trademark, which does not focus on the function of origin but the function of certification. The guaranteeing character of such trademarks must be based on the sign’s representation, and the trademark must be suitable to distinguish goods and services from those for which there is no such warranty.
To what extent this new type of trademark will in fact be of practical relevance remains to be seen, since the trademark owner is required to provide information on the product characteristics to be guaranteed, as well as on the inspection and surveillance measures in a compulsory trademark statute.
3. Extension of the absolute grounds for refusal
Additional absolute grounds for refusal are being introduced. Designations of origin and geographical indications, traditional names for wines, designations for traditional specialties and plant variety protection designations as well as essential elements thereof have now been excluded from registration. This will be examined by the German Patent and Trademark Office (GPTO).
4. Changes to the protection end date for renewals
The calculation of the ten-year grant of protection will change. The term of protection of a registered trademark begins with the filing date and now ends (exactly) ten years thereafter. It thus eliminates the due date rule for the month end date of the filing month. For already registered trademarks, the protection continues to expire at the end of the respective month.
The renewal fee should be submitted within a period of six months prior to the end of the term of protection.
5. Possibility to register licenses
Starting today, it is now possible to enter licenses into the register, indicating the licensee, the type of license and any restrictions. Registration is subject to a fee. The holder of an exclusive license can now bring legal action provided that the trademark owner do not file a complaint within a reasonable time limit after being requested to do so. In addition, it is possible to register a non-binding declaration about the willingness of the trademark owner to license or sell the trademark.
This new regulation regarding the right of the exclusive licensee to bring matters before the court is significant and takes account of the fact that the exclusive licensee is entitled to a full economic utilisation.
6. Changes to the Opposition Proceedings
As of today, the trademark owner can base an opposition on several trademarks and/or signs combined in one opposition proceeding. The fees for filing an opposition now amounts to EUR 250, – (formerly EUR 120, -) for one opposition trademark, and further EUR 50,- for each additional opposition trademark are due. Furthermore, the geographical indication and the designation of origin are also being introduced as additional opposition signs.
Moreover, the possibility of a ‘cooling-off’ period is introduced, which is granted upon joint request of both parties for a period of at least two months. This is intended to facilitate external negotiations and is to be welcome, since negotiations can now be carried out according to a uniform system.
Another welcomed change is the simplification of the plea of non-use. Now, use must be proven only for a time which already begins five years prior to the filing date or priority date of the contested trademark. Instead of the formerly requested prima facie evidence, now objective evidence of use must be provided, which can also be provided with an affirmation in lieu of an oath.
Going forward, the grace period of non-use starts on the day on which an opposition against the trademark can no longer be filed, i.e. upon expiry of the opposition period or from the day on which a respective opposition decision takes effect.
7. The new procedure before the GPTO for the cancellation of registered trademarks
Another far-reaching change is that the grounds for revocation or relative grounds for invalidity, which previously had to be claimed by means of a lawsuit, can now be claimed with the GPTO by means of an official procedure.
This bundles all cancellation procedures within the competency of the GPTO. The new designations for these procedures are revocation proceedings and invalidity proceedings. The actual implementation will only take place in May 2020.
However, the Civil Courts will continue to have jurisdiction in addition to the official GPTO procedure, therefore giving the applicant / claimant the right to choose the forum in this regard. The official procedure before the Office is a more cost-effective variant. However, the course of these proceedings is still unknown.
8. Introduction of a system for goods in customs inspection
The aim of this regulation is to improve the rights of the trademark owner and to effectively counter the growing product piracy. The trademark proprietor may now also take action against infringing goods where the goods, including their packaging, originated from third countries. Previously, this was only possible if it could be shown that the goods are destined to be sold in the EU. This regulation is very helpful, as it also covers legal actions against the transit of infringing goods in Germany.
The Patent Attorneys and Attorneys at Law of Müller Schupfner & Partner have closely monitored and were partially personally involved in the development of the European Union Directive in Brussels, on which the new German Trademark Law Act is based and are therefore optimally prepared for today’s entry into force of the new trademark law. We will be glad to answer your questions and concerns concerning your industrial property and intellectual property rights at any time.