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German Trade Mark Modernization Act implementing the EU Trade Marks Directive: The highlights

The amendment of the German Trade Mark Act by way of the Trade Mark Modernization Act (MaMoG) entered into force on 14 January 2019, implementing a range of obligatory and optional provisions of the EU Trade Mark Directive 2015/2436 into German law. In addition to some changes of rather editorial nature, the MaMog also introduces a number of genuine reforms for the German national trade mark system. Let’s take a look at the most relevant changes to the legal practice.

Requirements for protection

Under the MaMoG, register marks no longer have to be capable of being represented graphically. It is sufficient if they can be determined clearly and precisely (sec. 8 para. 1 of the German Trade Mark Act [Markengesetz – MarkenG]. This change means that in particular the registration of modern types of trade marks such as sound marks, multimedia marks, holograms and other types of trade marks in suitable electronic formats is made easier. In the future, new absolute grounds for refusal, including protected geographical indications, geographical designations of origin and traditional terms for wines and specialities, as well as protected plant variety denominations, will have to be considered (sec. 8 para. 2 nos. 9–12 MarkenG).

Comments by third parties during the application procedure

Third parties not involved in the application procedure can in future submit written observations during the application procedure to show why registration of the trade mark in question ought to be denied ex officio (sec. 37 para. 6 MarkenG).

Introduction of the certification mark

With the certification mark, the MaMoG introduces a new category of trade mark whose key function is to guarantee the material, mode of manufacture, quality, accuracy or other characteristics of goods or performance of services, and to distinguish these from other goods and services, for which such a guarantee does not exist (sec. 106a para. 1 MarkenG). Thus, in the future, seals of quality or test marks from neutral certification companies in Germany can, subject to certain requirements, obtain protection under trade mark law tailored to their specific requirements.

Calculating the grace period for non-use/term of protection

The grace period for non-use – the beginning and end of which will in future be indicated in the register – will in future no longer be calculated from the point in time at which the earlier trade mark was registered, but rather from the point in time at which opposition to the earlier trade mark is no longer possible or – where an opposition has been filed – from the point in time at which the opposition proceedings have been terminated (sec. 25 para. 2, sec. 26 para. 5 MarkenG). Also, the term of protection of a trade mark will, according to the MaMoG end ten years from the day of registration and no longer ten years from the final day of the registration month (sec. 47 para. 1 MarkenG).

Opposition proceedings

Unlike under current practice, the proprietor of several earlier rights will in future be able to assert these rights by way of a single opposition (sec. 42 para. 2 MarkenG). Going forward, protected geographical indications and protected designations of origin will also be recognised as new grounds for opposition (sec. 42 para. 2 no. 5 MarkenG). In addition, the non-use defence in opposition proceedings will only require the opposing party to demonstrate use for the five years prior to the application or priority date of the application, but no longer to demonstrate use also for all further five year periods up until a decision in the proceedings is taken (sec. 43 para. 1 MarkenG). From now on, the parties can apply for a cooling-off period (sec. 42 para. 3 MarkenG) and the cost structure will change slightly (EUR 250 for one opposing sign, EUR 50 for any further opposing sign).

Right to prohibit goods subject to customs supervision

The new sec. 14a MarkenG offers better protection to trade mark proprietors in cases of counterfeiting, allowing them to ascertain rights against goods in transit too, subject to certain requirements.

Entry of licences/willingness to license and sell in the register

Licences – as well as declarations by the trade mark proprietor that they are is willing to license or sell – can now be entered in the publicly accessible trade mark register (secs. 30 para. 6, sec. 42c para. 1 MarkenG).

Conclusion

In addition to a number of desirable clarifications, the MaMog in particular further harmonises German trade mark law with European Union trade mark legislation, thus simplifying application of the law. Another key part of the MaMoG will be introduced on 1 May 2020, when the newly structured system for revocation and cancellation proceedings will enter into force. Under the new system, cancellation proceedings based on earlier rights and revocation proceedings may – alongside the courts (which currently still have exclusive competence) – also be brought before the German Patent and Trade Mark Office [Deutsches Patent- und Markenamt – DPMA]. This will give new strategic options in revocation actions and cancellation proceedings based on prior rights.


First published in iPunkt, our German language IP newsletter.

For  more information on the implementation of the EU Trade Marks Directive in Germany and other key jurisdictions, please access our January 2019 webinar recording here