By January 14, 2019, EU members states are obliged to implement the EU Directive to harmonize the laws of the member states relating to trademarks. The German government has now introduced the draft bill for amending the current German trademarks act.
The amendments are aimed at strengthening the coexistence of the EUTM and national trademarks, fostering cooperation between the German PTO and the EUIPO, streamlining and modernizing procedures and supporting ant-piracy efforts.
The most salient points are the following:
No requirement of graphic representation
The requirement of graphic representation for German trademark registrations will be abolished. However, it will still be a prerequisite that a trademark be distinguishable "clearly and unambiguously" by the relevant authorities and the public.
This amendment opens the way for new trademark forms, such as audio marks, and it will be able to accommodate new technical means of representing them - for example the olfactory marks which are already discussed as EUTMs.
While trademarks up to now had the function of distinguishing the origin of products and services, the amendment will introduce certification marks which identify certain properties of products or services. The new certification marks cannot be registered by any entity who provides the subject goods or services. This provision is rather aimed at independent entities who award seals and certifications to others.
Registration of licenses
The current law allows only for the registration of rights in rem and other liens. Also, licensees cannot defend the licensed rights against infringement without the registered owner's explicit consent. Under the new trademark law, licensees have the opportunity to register their license and to defend the licensed rights themselves, if the trademark owner has not brought any action within a reasonable period of time after a formal request by the licensee.
Administrative procedures for cancellation requests
Current law provides that cancellation requests based on absolute grounds (descriptiveness, etc.) are exclusively processed at the German PTO. Cancellation based on non-use can be requested at the German PTO but will be closed after a simple denial by the owner. Recourse would be in court. Cancellation on relative grounds (older rights) can only be filed in court.
The amendments to the current law will establish administrative proceedings for all three types of cancellations alike. They are set to enter into force on May 1, 2020 in order to give the German PTO time to prepare. The current proceedings will remain in place as well. Given the comparatively high cost of court proceedings it is likely that most cancellations will be requested through the new channel soon after its introduction.
The current law does not allow seizure of goods in transit, even
if they clearly infringe trademarks rights, unless it is proven
that the goods are destined to be placed on the market in the
The amendment will reverse the burden of proof by allowing trademark owners to seize counterfeit goods which are in transit. Only if the declarant of the goods shows that the trademark owner cannot bar the goods from distribution in the country of destination will they be released.
The draft bill has been presented for discussion in diverse committees of the Bundestag. It may well be altered to some extent. However, any changes by the committees are limited by the minimum requirements of the EU Directive.
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