Former Rights of The German Democratic Republic

Whereas most rights of concern should meanwhile have expired, the present section is maintained in view of theoretically possible infringement actions (prescription/statutory limitation is not yet generally applicable).

The reunification of the two parts of Germany had the following effects on industrial property rights:

Applications filed before October 3, 1990

Rights with a filing or registration date prior to October 3, 1990, were temporarily maintained with territorially limited effect for their respective territories and continue to be governed by the law applicable to them before the accession of the German Democratic Republic (GDR) to the Federal Republic of Germany (FRG). This was the case until the extension treaty (see 3. below) became effective on May 1,1992. This means, for example, that a patent granted or trademark registered by the Patent Office of the GDR continued to be valid in the territory of the GDR only, and vice versa for rights administered by the German Patent and Trademark Office. Rights which had been applied for at the Patent Office of the GDR, but which had not been granted or registered, were then processed by the German Patent and Trademark Office. Some exceptions applied to appeals and cancellation and invalidation actions, which were, as of October 3, 1990, governed by the law of the Federal Republic of Germany as far as the procedural law was concerned.

– The same also applied with regard to rights acquired pursuant to an international treaty to which one or both of the two Germany were parties; these rights, if their respective dates were before October 3, 1990, were for the time being maintained for their respective territories.

– The maintaining of territorially separate rights was only an interim measure. On May 1, 1992 the extension act became effective and all rights existing in either part of Germany were extended to the territories of Germany they did not yet cover. The extension act includes special rules concerning issues such as applicable law, substantive and procedural, and especially conflicts of rights.

– Any use begun in the Federal Republic of Germany or in the German Democratic Republic on or after July 1, 1990, the day that the German-German Treaty on the Creation of a Monetary, Economic and Social Union of May 18, 1990, came into force, were not given any right to continue such use as far as such use came into conflict with a right extended pursuant to the extension act of May 1, 1992. This applied also for any application filed in the Federal Republic of Germany or in the German Democratic Republic on or after July 1, 1990.

Applications filed on or after October 3, 1990

As of October 3, 1990, two Patent Offices no longer existed, but only the German Patent Office in Munich, with a branch in Berlin.

– All applications for the granting of industrial property rights filed on or after October 3, 1990, had to be filed at the German Patent and Trademark Office. They then had effect on the whole territory of the unified Germany.

– The same rule applied, as a result of the inclusion of the territory of the GDR in the territorial coverage of all treaties to which the Federal Republic of Germany was a party; also to all applications or registrations with a relevant date on or after October 3, 1990, which had effect in the Federal Republic of Germany pursuant to such a treaty; this applies in particular to the Patent Cooperation Treaty, the Madrid Agreement on the International Registration of Marks and the Hague Agreement on Industrial Designs, but also to the European Patent Convention.

Extension Act of May 1, 1992

On April 23, 1992 the German parliament adopted the act on the extension of industrial property rights (Extension Act). The act became effective on May 1, 1992.

In particular, the act regulates the extension of technical protective rights, such as patents and registered designs, as well as labeling rights, such as trademarks and indications of origin, which existed or were registered in the old Federal Republic of Germany, to the territory of the former GDR and vice versa.

A convergence of rights, which correlate with respect to their territorial scope, could occur due to the extension of industrial protective rights to the respective former national territories. In this context, the so-called “coexistence principle” applies to the technical protective rights. This means, for example, that two parallel patents remain effective and the protected object can be used in the entire territory of Germany. Moreover, the respective holders of entitled parties cannot raise any claims against one another. However, this applies only insofar as the unrestricted use of the protected object in the extended territory is not inequitable for the other party. This regulation is also valid for registered designs. The rights of priority and of continued use largely remain unchanged.

A peculiarity concerning extended economic patents of the former GDR must be noted. These economic patents are valid as patents for which a licensing declaration has been submitted to the German Patent and Trademark Office. However, no separate publication is issued by the German Patent and Trademark Office. This licensing declaration can, however, be revoked under certain conditions by an appropriate declaration. This declaration is published in the Patent Journal.

The so-called “agreement principle” applies to conflicting trademarks. According to this principle, use of the name in question in the respective extended area is generally permitted only with the consent of the other owner of the trademark. Exceptions are again possible if this regulation would lead to inequitable hardship for one of the parties. The “agreement principle” also applies when trademarks conflict with name rights.

A Board of Conciliation is established at the German Patent and Trademark Office to bring about amicable settlements between the parties in case of legal disputes arising from the extension of protective rights. A party can call upon the Board of Conciliation by submitting an application and paying a fee.

The regulation according to Section 8 of the Extension Act is of particular importance for foreign patent holders. According to this section, no claims concerning a patent which was not published in the German language can be lodged from rights extended to the old Federal Republic of Germany. The revision of Section 8, Paragraph 1 of the Trademark Act is of particular importance for trademark holders. Henceforth, trademarks can be transferred or passed to others independently of the business concerned. On the other hand, trademarks belonging to a business are included in the transfer of the company, if no other agreement is reached.