Trade and Service Marks
– Trade Mark Law of October 25, 1994, last amended on August 10, 2021.
– Trade Mark Regulations of May 11, 2004, last amended on August 10, 2021.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since February 13, 1966.
– Convention Establishing the World Intellectual Property Organization (WIPO), since September 19, 1970.
– Madrid Agreement Concerning the International Registration of Marks, StockholmAct.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
– Nice Agreement Concerning the International Classification of Goods and Services.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods.
– European Union Trade Mark Regulation.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Trademark Law Treaty, since October 16, 2004.
– Singapore Treaty on the Law of Trademarks, since September 20, 2013.
Applicant: any physical person or legal entity. Since January 1, 1995, it is no longer a requirement to be a business enterprise to be able to acquire a trademark right.
Foreigners and nationals not living in the country: applicants, either foreigners or Germans, having no residence or business establishment in Germany, must appoint a representative living in this country and being admitted by the German Patent and Trademark Office.
Types of trademarks: industrial and commercial trademarks, service marks, combined trade and service marks, collective marks (for legally admitted associations only). Marks can be words, designs, three-dimensional marks, sound marks and other types of marks that can be graphically represented.
Novelty: a trademark need not be new but must be distinctive.
Protectable trademarks: words (inclusive personal names), designs and pictures, letters, numbers, sound marks, odor marks, three-dimensional marks (inclusive the shape of the goods or their packaging) or other representations (inclusive colors and color combinations) suitable to distinguish goods and services of a trade or service mark owner from the goods and services of other trade or service mark owners.
Exceptions to protection: (1) marks which cannot be graphically represented; (2) marks which are incapable of distinguishing the respective goods or services; (3) marks containing only indications concerning type, nature, quantity, purpose, price or value, place of origin, time of production of the goods or the provision of the services; (4) marks consisting only of indications describing the goods and services; (5) marks which are liable of causing deception; (6) marks containing representations liable to give offense; (7) marks containing armorial bearings, flags and other emblems of any state, any international organization or of a locality, an association of communities or an association of other communal entities within the country; (8) examination and certification marks which are officially excluded from trademark protection; (9) marks which are not allowed in view of other legal regulations.
Convention priority: may be derived from any application in a Convention country; priority term is six months.
Classification: international, harmonized classification system HDB.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (as for “patents“);
2. If the trademark is a word, only the indication of this word; if the trademark is a design mark or any other graphical reproduction, 2 prints thereof (the application can be filed with only one representation of the mark, further prints can be filed later on) or in specific electronic format;
4. If priority is to be claimed; declaration of priority indicating the country and the date of the priority (to be filed within a term of two months after the application date) and indication of the file number and copy of the priority application (no later than two months after receipt of a request from the Patent and Trademark Office).
Electronic filing: is available.
Electronic signatures: qualified electronic signatures are accepted.
Examination Procedure, Granting
Examination: all applications are subjected to an examination as to formalities and absolute exceptions to protection.
Amendment of application: the applicant can correct errors in the application, but it is not possible to extend the scope of the specification of goods and services or to change the mark itself.
Registration: after being accepted by the Examiner, the trademark applied for will be registered.
Publication: trademark applications can be searched online; the registration of the trademark is published in the Trade Mark Journal (Markenblatt).
Urgent examination: upon request of the applicant and payment of an official fee, the Patent and Trademark Office carries out an urgent examination as a result of which the mark will be registered and published rapidly in case of acceptance.
Opposition: can be filed against the mark within three months from the publication of the registration by any owner of an older registered trademark or trademark application, by any owner of a non-registered trademark (trademark established by use), any owner of a business designation (including work titles), or owner of a notorious trademark. The time limit for filing an opposition cannot be extended (reinstatement is not allowed). The opposition is to be based on identical or similar marks, goods or services. Goods and services can in some cases be regarded as confusingly similar between each other. If the older mark, on which the opposition is based, was registered more than five years ago and the applicant disputes use of this mark, the opponent has the onus of proving use of the older mark within the last five years before the publication of the registration. If the grace period of five years of non-use ends after the publication date of the registration, the opponent has to prove that he has used the older mark within five years before the decision on the opposition. Use of the older mark by a third party with permission of the opponent is considered to be equal to use by the opponent himself. In deciding whether the marks are confusingly similar, the Patent and Trademark Office only takes into account the goods or services for which the opponent has shown that use has taken place.
Appeal: provision is made for appeal to the Federal Patent Court against any decision during the examination and opposition procedure.
Protection (Post-Registration Aspects)
Beginning of protection: date of registration.
Kind of property: registration is constitutive; the registered owner can forbid the use of identical or similar marks for identical or similar goods and/or services and has a claim for damages in the case of intent or negligence. For trademarks, which have acquired a certain fame on the market, the protection will also exist outside of the area of similarity of goods and services, in case of a danger of weakening or a danger of exploitation of the reputation of the mark.
Obligation to use: any registered trademark not used during five consecutive years may be annulled upon request by a third party. A mark is legally valid only if it has really and sufficiently been used in connection with the registered goods and/or services in a form as registered or not diverging essentially from the registered form. The mark has to be affixed to the product or its package or has to be used in close connection with the services. The export of marked goods or services to other countries is regarded as a sufficient use. A mark is also considered as used if it has been used by a third party with permission of the owner of the mark.
Division: any registered trademark or trademark application can be divided by giving a declaration of division to the Patent and Trademark Office for selected goods and/or services. The application priority also extends to the separated part.
Delivery of document: the certificate of registration is issued in paper format.
Duration: the duration starts with the application date and ends ten years after the last day of the month of the application date.
Extension of duration: by renewal at the end of each ten-year period.
Renewal fees – latest term for payment: the renewal fees are due on the last day of each period of protection and can be paid during a term of one year before the due date. If the fees are not paid in due time, they can be paid within two months of the due date without fine and with fine within six months of the due date, then the registration will be cancelled. Final reminders of the Patent and Trademark Office are merely sent as a service for the owner of the trademark.
Restoration: as for “patents“.
Marking: not compulsory, but usual.
Text of marking: “EingetrageneMarke” or “â”.
Modification of the mark: not possible.
Changes of the list of goods and services: limitations are possible.
Assignment: a registered trademark or trademark application may be assigned (also without the business enterprise) to any natural or legal person.
Licenses: exclusive and non-exclusive licenses can be granted for all or also for some of the goods and services.
International trademark registrations (according to Madrid Convention, to the Protocol of Madrid Convention or to the European Union Trade Mark Regulation):the same rights can be derived from the German part of an international registration as from a national German trademark. For example: oppositions can be lodged against it or can be based on it.
Cancellation of trademarks: can be applied for: if the registration should have been refused because of absolute exceptions to protection (cancellation request is only possible during a period of ten years after registration), if identical or similar marks (including other signs like copyrights, rights to names, geographical indication of source, plant varieties or other intellectual property rights) have previously been registered for identical or similar goods or services in favor of the plaintiff (the plaintiff can file the cancellation request only during a period of five years after the owner of the younger mark started the use of the mark and the plaintiff had taken note thereof), if circumstances show that the contents of the trademark do not correspond to the actual conditions and constitute a danger of fraud, if the marks are not allowed in view of other legal regulations, or if the mark has been registered for at least five years but has not been used during the last five years.
Compulsory licenses: none.
Infringement and penalties: as for “patents“.
European Union Trademark (EUTM) Conversion
Filing requirements for the conversion of an EUTM into a national trademark:
1. National representative;
2. Request for conversion of European Union trademark into German trademark, translated into German;
3. National application fees (basic fee and class fee for the fourth class and further, corresponding to national trademark applications), to be paid within three months after receipt of the request for conversion from the German Patent and Trademark Office;
4. Power of attorney (as for “patents“);
5. Denomination of the applicant;
6. Representation of the trademark (if the trademark is a word, only the indication of this word; if the trademark is a design mark or any other graphical reproduction, 4 prints thereof);
7. Indication of goods and/or services for which the trademark is to be protected.
Time limit: translation (into German) of the request for conversion and attached documents, to be filed within two months after receipt of the filing certificate from the German Patent and Trademark Office.