Germany: Trademarks I

Last Updated: 31 March 1998

I. Introduction to German Trademark Law

On January 1, 1995 the new Trademark Act (Markengesetz - "MarkenG") came into force which reformed the trademark law in Germany as a whole. The MarkenG now not only regulates the protection of trademarks but also of trade designations (Section 5 MarkenG). Trade designations are company symbols (i.e. signs used in the course of business as the name, company name or special designation of an undertaking) and titles of works (i.e. names or special designations of printed publications, cinematographic works, acoustical works, plays, or other comparable works). Trade designations enjoy (almost) the same rights as trademarks. Finally, the MarkenG also regulates the protection for appellations of geographical origin (Sections 126 et seq. MarkenG).

II. Prerequisites for the Protection of trademarks

1. Form of Trademarks

Section 3 para. 1 MarkenG enumerates signs which can be protected as trademarks. The enumeration is not final and states words, designs letters, numerals, acoustical signs, three-dimensional configurations as well as other get-ups as signs that may be protected. However, signs may only be protected if they are capable of distinguishing the goods or services of one undertaking from those of another undertaking. Therefore, signs consisting only of a shape which results from the nature of the goods themselves, which is necessary to obtain a technical result, or which gives substantial value to the product are explicitly excluded from protection (Section 3 para. 2 MarkenG).

2. Requirements for Protection of Registered Trademarks

The requirements for registration of a trademark are regulated in Section 8 MarkenG. First, as a formal prerequisite it is provided that only those signs may be registered as trademarks that can be represented graphically (Section 8 para. 1 MarkenG). How this can be established, for instance in cases of acoustical or three-dimensional signs, is stated in the implementing regulation (Markenverordnung).

The decisive provision with regard to registration is Section 8 para. 2 No. 1 MarkenG which provides that trademarks which are devoid of any distinctive character with respect to goods or services may not be registered. Thus, even a slight degree of distinctive character would be sufficient to overcome the bar to protection constituted by the lack of distinctive character. Important to note is also that a trademark may not be registered if there exits a necessity of keeping this trademark free for use by others ("Freihaltebedürfnis"), Section 8 para. 2 No. 2 MarkenG. Such a necessity of keeping a trademark free for use is given if in a specific case the sign has an entirely descriptive nature. Generic terms are also excluded from protection as registered trademarks (Section 8 para. 2 No. 3 MarkenG) as well as deceptive indications (Section 8 para. 2 No. 4 MarkenG). The remaining regulations in Section 8 para. 2 MarkenG relate to circumstances which are in practice not as important.

The bars to registration of a trademark provided for in Section 8 para 2 Nos. 1, 2 and 3 MarkenG may be overcome if, prior to its registration, the trademark has already acquired a secondary meaning in the trade circles concerned.

II. Acquisition of Trademark Rights

Section 4 MarkenG distinguishes three forms of trademarks which are different in their nature. Trademark protection accrues from a registration with the Trademark Register, from the use of a sign in the course of trade (provided that the sign has acquired prominence as a trade mark in the trade circles concerned) or from the fact that a trademark is well-known within the meaning of Article 6bis of the Paris Convention. Thus, trademark rights do not only originate from a registration but may also be created if the respective sign has gained secondary meaning.

Owners of registered trademarks and trademark applications may be natural persons, legal entities and partnerships as long as they have been vested with the ability to acquire rights and to assume obligations (Section 7 MarkenG). With respect to so called collective trademarks which are registered or applied for registration, only associations having legal capacity and legal persons under public law can become trademark owners (Section 98 MarkenG). Collective trademarks are protectable signs which are capable of distinguishing the goods or services of the members of the owner of the collective trademark from those of other undertakings (Section 97 para. 1 MarkenG).

Trademarks may be transferred, and this assignment of the rights of registered trademarks may be entered into the Trademark Register (Section 27 MarkenG). Trademark rights can also be pledged or become subject to measures of enforcement as well as included in bankruptcy proceedings (Section 29 MarkenG). The owner of a trademark may also license trademark rights to third parties, may it be exclusively or non-exclusively (Section 30 MarkenG).

III. Procedure of Application for Registration

1. Application for Registration of a Trademark

The registration procedure with the Trademark Register at the German Patent Office is regulated in Sections 32 to 41 MarkenG. The application to be filed with the Trademark Register must comprise the information about the applicant, a reproduction of the trademark and a list of goods or services for which registration is applied for. The Trademark Register has created a special form in which the necessary statements for application can be inserted. Together with filing of the application, the applicant has to pay the application fee which already includes the registration in three classes of goods. The applicant may also apply for expedited examination which triggers an additional fee.

The date on which the application is received by the Patent Office, the application date, usually comprises the priority date. However, an applicant may also claim a foreign priority or a priority due to exibition at a trade fair. Following the application, the Trademark Office examines whether an absolute bar exists to protection according to Sections 3, 8 or 10 MarkenG. If the Trademark Office raises objections against the application the applicant receives an opportunity to cure deficiencies. It is also possible for him to devide the application by declaring that, for the goods and services referred to in the declaration of dividion, the application has to be dealt with as a divisional application. If the examination shows that the application meets the requirements for application the trademark will be entered into the Trademark Register (Section 41 MarkenG). The registration is then published in the Trademark Gazette.

2. Opposition Proceedings

The owner of a trademark with priority may raise opposition to the registration of the trademark within a period of three months following the date of publication of the registration of the trademark (Section 42 MarkenG). The opposition may be based on registered trademarks (or trademarks applied for registration) if the goods or services for which the trademark has been registered are identical or similar to the goods or services for which the prior trademark was applied for or registered (Section 9 para. 1 No. 1 and 2 MarkenG).

The owner of the trademark having a later time rank may defend himself with the plea of insufficient use of the trademark of the opponent (Section 43 para. 1 MarkenG). If lack of use is argued with respect to a trademark which has been registered for at least five years the opponent has to substantiate by prima facie evidence that the registered trademark with priority had been used within the last five years prior to the publication of the registration of the trademark against which the opposition is directed.

3. Cancellation Proceedings

Irrespective of opposition proceedings, a trademark registration may be cancelled by different means and for different reasons. Cancellation of a registered trademark can be effected by a waiver of the owner of the trademark (Section 48 MarkenG), because of non-use within a continuos period of five years (Section 49 MarkenG), because of absolute bars to protection stipulated in Sections 3, 7, and 8 MarkenG (Section 50 MarkenG) or because of the existance of earlier rights within the meaning of Sections 9 to 13 MarkenG (Section 51 MarkenG). A registered trademark is also due for cancellation if the trademark has become the generic name for the goods or services or if the trademark is to mislead a public (Section 49 MarkenG).

The application for such cancellations may be filed with the Patent Office (Sections 53, 54 MarkenG).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.